OPPOSITION No B 2 720 814

British American Tobacco (Brands) Inc., 2711 Centerville Road, Suite 300 Wilmington, Delaware 19808, United States of America (opponent), represented by FPS Partnerschaft von Rechtsanwälten mbB, Grosse Theaterstrasse 31, 20354 Hamburg, Germany (professional representative)

a g a i n s t

ISB Technology S.a.r.l, 70 Route de Hollerich, 1740 Luxembourg, Luxembourg (applicant), represented by ISB Technology S.a.r.l, Mark Halstead 6, Boulevard Pierre Dupong 1430 Luxembourg, Luxembourg (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 814 is partially upheld, namely for the following contested goods and services:

Class 9:                Apparatus, instruments and cables for electricity; Devices for treatment using electricity; Diving equipment; Information technology and audiovisual equipment; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 41:        Education, entertainment and sports; Publishing and reporting.

2.        European Union trade mark application No 15 195 225 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 195 225. The opposition is based on German registration No 302 013 013 983, European Union trade mark registration No 10 831 287 in relation to which the opponent invoked Article 8(1)(b) EUTMR and European Union trade mark registration No 6 338, in relation to which the opponent invoked Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German registration No 302 013 013 983.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, as far as included in class 14; Jewellery, precious stones; Horological and chronometric instruments.

Class 16:        Paper, cardboard and goods made from these materials, as far as included in class 16; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; typewriters and office requisites (except furniture); instructional and teachings material (except apparatus); Plastic materials for packaging (as far as included in class 16; Printers’ type; Printing blocks.

Class 18:        Leather and leather imitations and goods made therefrom as far as included in class 18; Animal skins, hides, trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 25:        Clothing, footwear, headgear.

Class 27:        Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28:        Playing cards.

Class 29:        Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; Eggs; Milk and milk products; Edible Oils and fats.

Class 30:        Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages (except beers). 

Class 39:        Transport packaging and storage of goods, travel arrangement. 

Class 41:        Education; Providing of Training; Entertainment; Sporting and cultural activities.

Class 43:        Services for providing food and drink, temporary accommodation.

The contested goods and services are the following:

Class 9:        Apparatus, instruments and cables for electricity; Devices for treatment using electricity; Diving equipment; Information technology and audiovisual equipment; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 35:        Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services.

Class 41:        Education, entertainment and sports; Publishing and reporting.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested apparatus, instruments and cables for electricity; devices for treatment using electricity are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, these goods are identical. 

The contested diving equipment is included in the broad category of the opponent’s nautical apparatus and instruments. These goods are identical. 

The contested information technology and audiovisual equipment overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images. They are, this identical. 

The contested measuring, detecting and monitoring instruments, indicators and controllers overlap with the opponent’s broad category of surveying, measuring, signalling, checking [supervision] apparatus and instruments. These goods are identical.

The contested navigation, guidance, tracking, targeting and map making devices are included in the broad category of the opponent’s scientific, nautical, surveying, signalling, checking [supervision] apparatus and instruments. These goods are identical.

The contested optical devices, enhancers and correctors are included in the opponent’s broad category of optical apparatus and instruments. These goods are identical.

The contested safety, security, protection and signalling devices are included in or overlap with the broad category of the opponent’s surveying, signalling, checking [supervision], life-saving apparatus and instruments. They are, this identical. 

The contested scientific research and laboratory apparatus, educational apparatus and simulators are included in the broad category of the opponent’s scientific and teaching apparatus and instruments.  They are, this identical.

The contested magnets, magnetizers and demagnetizers are similar to the opponent’s stationery as these goods have the same purpose and they can coincide in end user and distribution channels.  

The contested recorded content is similar to the opponent’s printed matter in Class 16 as they have the same purpose and they can coincide in producer and end user. Furthermore they are in competition.

Contested services in Class 35

The contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested business analysis, research and information services; business assistance, management and administrative services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested commercial trading and consumer information services  involves the transfer of goods or services from one person or entity to another, often in exchange for money within a given market. Usually commercial trading involves the range of services (including information services) provided to consumers of a product by the company that produces, markets, or supports the products.

Therefore, the above mentioned contested services are fundamentally different in nature and purpose from all the opponent’s goods and services. Furthermore, their method of use, end user and producer/provider are also different. Consequently, they are dissimilar. 

Contested services in Class 41

The contested education, entertainment are mentioned in both specifications.

Therefore, these services are identical. 

The contested sports are included in or overlap with the broad category of the

opponent’s sporting and cultural activities. These goods are identical. 

The contested publishing and reporting and the opponent’s entertainment; cultural

activities may coincide in the same distribution channels and have complementary

character. Therefore, they are similar to a low degree. 

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to different degrees) are directed at the public at large and at a professional public with a normal degree of attentiveness.

3. The signs

                

	LOKI STRIKE
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of the verbal elements ‘LUCKY’ and ‘STRIKE’, written on two lines in white standard uppercase letters on a red background, inside of a circular shape with black outer and white inner borders.

The contested sign is a word mark composed of two elements ‘LOKI and STRIKE’.

A substantial part of the relevant public will perceive and understand the word ‘LUCKY’ of the earlier mark as an adjective derived from the English basic noun ‘LUCK’ with the meaning of ‘ something that is very desirable, fortunate, successful’ (Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/lucky). Its inherent distinctiveness will be normal in relation to the relevant goods and services.  

The English word ‘STRIKE’ present in both signs has been included in the German language (Duden Online, 08/06/2017, http://www.duden.de/suchen/dudenonline/strike). It refers to ‘the clearing with the first shot, hit’. A part of the public might also associate this term (due to its phonetic similarity) with the German word ‘Streik’ (Duden Online, 08/06/2017, http://www.duden.de/suchen/dudenonline/strike) referring to ‘an action organized by workers in order to try to enforce certain economic, social and work-related requirements’. Its inherent distinctiveness is average for the relevant public in relation to the relevant goods and services.

The first verbal element of the contested sign ‘LOKI’ will not be associated with any clear meaning by the examined relevant public. This element is inherently distinctive in relation to the relevant goods and services.

It’s likely that a part of the relevant public with a good knowledge of English will associate verbal elements ‘LUCKY STRIKE’ of the earlier mark with  the expressions ‘strike lucky’ or ‘strike it lucky’, (Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/strike-lucky), meaning ‘you have some good luck’. As a whole the expression ‘LUCKY STRIKE’ has no meaning in relation to the goods and services at issue and, therefore, it enjoys an average degree of distinctiveness.

It cannot be also excluded that the same part of the relevant public, when encountering the second English verbal element ‘STRIKE’ together with ‘LOKI’ in the contested sign might perceive the latter as a misspelled version of the word ‘LUCKY’ and, therefore, will associate the contested sign as a whole with the meaning referred to above in relation to the earlier mark.

The signs under dispute have no elements that could be considered clearly more dominant (visually eye-catching) than the other elements.

As regards the figurative elements of the earlier mark (colour of the letters, background and outer and inner borders etc.), account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of its composition, the verbal elements are the ones that will be used to refer to it.

Visually, the signs coincide in their second elements ‘STRIKE’ and their first elements display also some similarities since they have the letters ‘L’ and ‘K’ in common and are of approximately the same length. They differ in the letters ‘U’, ‘C, and ‘Y’ of the earlier mark and the letters ‘O’ and ‘I’ of the contested sign. The figurative elements present in the earlier mark create some visual difference between the signs, however, in this respect and as mentioned above, the relevant public is accustomed to such decorative elements accompanying commercial brands and will not pay much attention to them.  Accordingly, these elements will have less impact on the relevant public in comparison to the verbal elements ‘LUCKY STRIKE’. The fact, that the verbal elements in the earlier mark are placed on two lines and in the contested sign on one line will only have a minor impact on the visual perception of the signs by the relevant public.

Therefore, considering all the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the second verbal element present in both signs ‘STRIKE’. Furthermore, for the relevant public their first elements ‘LUCKY’ and ‘LOKI’ will be pronounced very similarly because the letters ‘CK’ of the earlier mark will be pronounced as ‘K’ in the contested sign. The only aural differences arising from the vocals /u/ versus /o/ are placed in the middle of these verbal elements and, therefore, they will not immediately catch the attention of the public. Furthermore, since the signs share a very similar structure and the number of letters in each verbal element their intonation and rhythm will be also very similar.  

Since from the phonetic point of view the verbal elements in both signs are hardly distinguishable from each other, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive the elements contained in the marks according to the meanings provided above. Both signs coincide in the semantic content of the word ‘STRIKE’, which is inherently distinctive. As mentioned above, it cannot be also excluded that a part of the relevant public having good level in English might perceive the word ‘LOKI’ of the contested sign as a misspelled version of the word ‘LUCKY’ and, therefore, will associate the contested sign as a whole with the meaning referred to above in relation to the earlier mark.

Therefore, the marks are conceptually similar to an average degree to the extent as they share the concept of word ‘STRIKE’ and they are conceptually highly similar for the part of the relevant public which will associated them with the same or a highly similar meaning, as a whole.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partly identical, partly similar (including to a low degree) and partly dissimilar.

The signs are visually similar to an average degree, aurally to a high degree and conceptually to an average degree or even high degree for the part of the public that will associate both signs with the same meaning. The differentiating elements present in the signs refer to the letters placed in the middle of their verbal elements on which the public, in general, does not focus its attention. The figurative elements of the earlier mark are not sufficient to distinguish the signs effectively and counteract their clear similarities on account of their verbal elements ‘LUCKY STRIKE’ and ‘LOKI STRIKE’.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). The same principle applies to the professional public which will display a normal level of attention in relation to the relevant goods and services.  

 

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their verbal elements and that, for identical or similar goods and services, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 013 013 983. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar (including those which are similar to a low degree) to the ones covered by the earlier mark.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition in relation to the Article 8(1)(b) EUTMR on the following earlier trade mark:

European Union trade mark registration No 10 831 287 for the word mark ‘LUCKY STRIKE’ registered for the goods in Classes: 5, 9, 10 and 34.

Since this mark covers a narrower scope of goods the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services. 

The examination of the opposition in respect of the contested services found dissimilar will continue in relation to Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, the earlier European Union trade mark registration No 6 338 for a word mark ‘LUCKY STRIKE’ enjoys reputation in the European Union and in particular in Germany, France and Spain.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

LUCKY STRIKE	LOKI STRIKE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs are word marks composed of two words: ‘LUCKY STRIKE’ in the earlier mark and ‘LOKI STRIKE’ in the contested sign.

A part of the relevant public will perceive and understand the word ‘LUCKY’ of the earlier mark as an adjective derived from the English basic noun ‘LUCK’ with the meaning of ‘ something that is very desirable, fortunate, successful’ (Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/lucky). It’s inherent distinctiveness will be normal in relation to the relevant goods and services.  

Likewise, a part of the relevant public with a good level of English will understand the English word ‘STRIKE’ present in both signs as referring, inter alia, to ‘a hit, drive, force’ (Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/strike). This verbal element has no meaning for the examined relevant public in relation to the relevant goods and services and, therefore, its inherent distinctiveness is normal. For the remaining part of the public this word is meaningless and therefore, its distinctiveness is normal.

It’s very likely that the same part of the public that will understand both verbal elements of the earlier mark will associate ‘LUCKY STRIKE’ with  the expressions ‘strike lucky’ or ‘strike it lucky’, meaning ‘you have some good luck’ (Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/strike-lucky). These elements have no meaning in relation to the goods and services at issue and, therefore, they enjoy an average degree of distinctiveness.

It cannot be also excluded that the same part of the relevant public, when encountering the second English verbal element ‘STRIKE’ together with ‘LOKI’ in the contested sign might perceive the latter as a misspelled version of the word ‘LUCKY’ and, therefore, will associate the contested sign as a whole with the meaning referred to above in relation to the earlier mark.

It is also possible that a part of the relevant public will only understand the word ‘LOKI’ of the contested sign, for example in Polish referring to ‘curls’. In this case, this element is inherently distinctive in relation to the goods and services in question. The remaining public will not associate this term with any meaning.

The signs under dispute have no elements that could be considered clearly more dominant (visually eye-catching) than the other elements.

Visually, the signs coincide in their second elements ‘STRIKE’ and their first elements display also some similarities since they have the letters ‘L’ and ‘K’ in common and are of approximately the same length. They differ in the letters ‘U’, ‘C, and ‘Y’ of the earlier mark and the letters ‘O’ and ‘I’ of the contested sign. The differentiating elements present in the signs refer to the letters placed in the middle of their verbal elements on which the public, in general, does not focus its attention.

 

Therefore, considering all the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the second verbal element present in both signs ‘STRIKE’. Furthermore, for the substantial part of the relevant public their first elements ‘LUCKY’ and ‘LOKI’ will be pronounced very similarly. The only aural differences arising from the vocals /u/ versus /o/ are placed in the middle of these verbal elements and, therefore, they will not immediately catch the attention of the public. Furthermore, since the signs share a very similar structure and the number of letters in each verbal element their intonation and rhythm will be also very similar.  

Therefore, considering all the above, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive the elements contained in the marks according to the meanings provided above. Both signs coincide in the semantic content of the word ‘STRIKE’, which is inherently distinctive for the relevant public in relation to the relevant goods and services. For the part of the relevant public that will recognize the terms ‘STRIKE’ and ‘LUCKY’ in the signs at hand their conceptual similarity will be of average degree.  As mentioned above, it cannot be also excluded that a part of the relevant public having a good level in English might perceive the word ‘LOKI’ of the contested sign as a misspelled version of the word ‘LUCKY’ and, therefore, will associate the contested sign as a whole with the meaning referred to above in relation to the earlier mark. For this part of the public the signs are conceptually highly similar.

For the part of the public that will only understand one of the terms present  in the signs, for example ‘LOKI’ of the contested sign or ‘LUCKY’ of the earlier mark one of the signs will not be associated with any meaning and, therefore, the signs are not conceptually similar.

For the part of the public that will not associate the sign at issue with any meaning the conceptual aspect does not influence the assessment of the similarity of the signs.

2. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark No 6 338 has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 09/03/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely

Class 34:        Cigarettes, tobacco, tobacco products, smoker's requisites, lighters and matches.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence submitted by the opponent on 01/11/2016 and on 02/01/2017 consists of the following documents:

• Exhibit 2: A witness statement dated 22/04/2008, of Lisa Brunton-Reed in the quality of trade mark manager of British American Tobacco (Holdings) Limited, member of British American Tobacco p.l.c. group with responsability for advising on the “LUCKY STRIKE” brand owned by British American Tobacco (Brands) Inc. which is also a member of British American Tobacco plc. group (“BAT”). The statement contains in particular: the indication of the first year of sale of “LUCKY STRIKE” cigarettes in countries within the European Union (inter alia, in Finland, France, Germany, Greece, Ireland, Netherlands, Poland, Spain etc.); the approximate worldwide sales figures from 1997 to 2005 of the annual volumes of individual cigarettes sold under the “LUCKY STRIKE” mark; the approximate worldwide spend on advertising and promotional activities from 1997 to 2002 ; the approximate sales figures from 2000 to 2007 annual volumes of cigarettes sold under the “LUCKY STRIKE” mark in different countries of the European Union; the estimated values of sales made from 2000 to 2007 of cigarettes sold under the “LUCKY STRIKE” mark in different countries of the European Union (Exhibit LBR1).

• Extracts from the Interbrand publication “The World’s Greatest Brands” (1996), where “LUCKY STRIKE” is listed as the third most famous tobacco brand in the world (Exhibit LBR1).

• Extracts from the publication “Celebrating our first 100 years 1902- 2002” (undated) from BAT Group (Exhibit LBR2). The earlier trade mark ‘LUCKY STRIKE’ is described as one of the oldest and best selling brands.

• Extracts from the Voges Tobacco Encyclopaedia published by Tobacco Journal International published in 1984 (Exhibit LBR3) which confirms that the earlier mark ‘LUCKY STRIKE’ was first marketed in 1916.
• Copies of historical advertisements used in the United States of America (Exhibit LBR4).

• Images taken from the Official Formula 1 website www.formula1.com showing the trade mark “LUCKY STRIKE” on the BAR racing car in action in the German and Bahrain Grand Prix of 2004 and of the Malaysian GP of 2005 (Exhibit LBR6) and a photograph (undated) of Kevin Schwantz competing for the LUCKY STRIKE team (Exhibit LBR5).

• Promotional material used in the years 1994-2003 in Germany presented to retailers in Germany (Exhibit LBR6).

• Exhibit 3: A witness statement dated 29/04/2008, of Lisa Brunton-Reed showing the market shares that the trade mark ‘LUCKY STRIKE’ holds in the cigarette market in France, Germany and Spain, during the period 2003-2007, where ‘LUCKY STRIKE’ was ranked sixth in French market, third in the German and seventh in the Spanish market.

• Exhibit 4 and 5: Extract of the Article ‘Die Schwarzmarktzeit 1945-148’, in „Lebendige Geschite“ 1939-49 in German and Extract of the Article from ‘Zeit Online’, dated 13/05/1948 „Zigaretten-Währung“, in German; refer to the times 1939-49, in which the cigarettes marketed under the earlier mark ‘LUCKY STRIKE’ became a replacement currency in the market place, where the regular German currency (Reichsmark) did not work properly.

• Exhibit 6: Copy of the decision of the Opposition Division of 11/01/2010 which states that the earlier trade mark ‘LUCKY STRIKE’ No 6338 enjoys the reputation in relation to all the registered goods in Class 34 and rejected the contested trade mark ‘LUCKY STRIKE’ for the goods and services in Classes 9, 28 and 41.

• Exhibits 7-11: Extracts from the website- beck-online.beck.de, dated 1951, 1952, 2000 and 2003, in German; refer to various court decisions and articles mentioning the opponent’s ‘LUCKY STRIKE’ as being the notoriously well-known cigarette brand (opponent’s summary in English).

• Exhibit 12: Decision of the Federal Patent Court of Munich, dated 22/10/2003, in German, concluding that the opponent’s mark ‘LUCKY STRIKE’ obtained an extended scope of protection due to its long use for cigarettes (opponent’s summary in English).

• Exhibit 13: Decision of the Court of Appeal in Cologne, dated 23/07/2004, in German, extracts from the website beck-online.beck.de, dated 2005, in German; confirms that the owner of the mark ‘LUCKY STRIKE’ is the second biggest company offering cigarettes in Germany (opponent’s summary in English).

• Exhibit 14: Decision of the Federal Patent Court, dated 23/07/2008, in German; refers to the famous ‘LUCKY STRIKE’ mark as the famous cigarette brand although the case itself does not deal with the opponent’s mark  (opponent’s summary in English).
• Exhibit 15: The list of the opponent’s registrations regarding the ‘LUCKY STRIKES’ marks.

• Exhibit 16: Extracts from emails exchanged with the applicant dated 28.06.2016 mentioning the limitation regarding the goods in Class 9.

• Exhibit 17: EUTM file information regarding the applicant’s registration ‘ISOFTBET’ No 9017807 and No 13340799.

• Exhibit 18: Extract from the webpage www.casioreviewsandbonus.com/isoftbet, dated 28/10/2016 referring to the applicant’s activities in relation to online games.

• Exhibit 19 and 20  refer to various printouts from the applicant’s website www.isoftbet.com showing the use of famous marks and names in gambling industry and the sign ‘Loki Strike’ in connection with a cigarette pack and the figurative element being a part of the opponent’s figurative trade mark ‘LUCKY STRIKE’.

• Additional document submitted by the opponent on 02.01.2017 which shows the sales figures of ‘LUCKY STRIKE’ cigarettes in Germany in the period 2011-2015 and supports the evidence submitted on 01/11/2016.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The cigarettes marketed under the earlier ‘LUCKY STRIKE’ arrived for the first time to Europe during the Second World War and gained a considerable exposure in the European territory, in particular in Germany, where, according to the opponent (see Exhibits 4 and 5 not translated into the language of the present proceedings but described by the opponent in its observations), they became a replacement currency in the market place, where the regular German currency (Reichsmark) did not work properly. The sales figures and marketing efforts (see Exhibit 2 and additional documentation filed on 02/01/2017) suggest that the trade mark ‘LUCKY STRIKE’ has acquired a consolidated position in the market, in particular in a very diversified German cigarette market, where the cigarettes ‘LUCKY STRIKE’ achieved about 5% market share in the period between 2003 – 2007. Additionally, the Exhibit 3 shows that during the same period the trade mark was ranked sixth in French market, third in the German and seventh in the Spanish cigarette market. The same material mentions opponent’s important investments in advertising and promotions of cigarettes and tobacco products under the earlier trade mark ‘LUCKY STRIKE’. Furthermore, in this regard the opponent also refers to subsequent legislative restrictions regarding advertisements of cigarettes and tobacco products in the European Union and in Europe in general, which considerably reduced typical advertisement means, like TV and radio spots, to promote cigarettes/tobacco and tobacco products under the earlier ‘LUKCY STRIKE’. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant general public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in the European Union in relation to the opponent’s cigarettes, tobacco, tobacco products in Class 34. As regarding the remaining goods covered by the earlier European Union trade mark registration No 6 338 for a word mark ‘LUCKY STRIKE’, there is no evidence in the material filed by the opponent that would clearly indicate the recognition that the earlier mark enjoys among the public in the context of the remaining goods, namely, smoker's requisites, lighters and matches.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

As mentioned above the signs are visually similar to an average degree and aurally highly similar and from the conceptual point of view the signs oscillate between being highly similar to completely meaningless. They coincide in their second verbal element ‘STRIKE’ and still display important similarities in their first element ‘LUCKY’ and ‘LOKI’. Furthermore, the signs share a very similar structure (both contain two words) and the number of letters in each verbal element.

The earlier European Union trade mark registration No 6 338 has a reputation for cigarettes, tobacco, tobacco products in Class 34, whereas the contested services for which the opposition is unsuccessful under Article 8(1)(b) EUTMR are the following:

Class 35: Advertising, marketing and promotional services; Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services.

The Opposition Division is of the opinion that in the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. The contested services target specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services or business consultants that gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The earlier trade mark was found to have a reputation among the general public of cigarettes, tobacco and tobacco products. Although the earlier goods are relatively inexpensive mass consumption articles, smokers are considered particularly careful and selective as to the brand of cigarettes they smoke, so a higher degree of brand and attention is assumed when tobacco products are involved.

Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no mental association will be made between the signs.

Furthermore, the above goods and services are clearly different in their nature, purposes, usual origins and they are neither complementary nor in competition. Therefore, it is unlikely that the contested sign could bring the earlier mark to the mind of the relevant public.

According to the case-law, one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of dissimilarity between those goods or services, and the relevant section of the public’ (judgment of 27/11/2008, C-252/07, ‘Intel Corporation’, paragraph 42). When analysing the nature of the goods and services at issue, consideration must be given to the fact that they belong to distinct market sectors that have no material overlap and, in essence, have nothing at all in common. As mentioned above, there is no overlap between the relevant sections of the public for the trade marks in dispute because each mark targets different type of public (general public versus professional public).

As seen above, it is a requirement for the opposition to be successful under Article 8(5) CTMR that the earlier trade mark has a reputation. Moreover, there must be established a ‘link’ between the conflicting marks in consumers’ minds. Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as Article 8(5) EUTMR is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.