OPPOSITION No B 2 285 446

Philip Morris Brands Sàrl, Quai Jeanrenaud 3, 2000 Neuchâtel, Switzerland (opponent), represented by Hoyng Monegier Spain LLP, Calle Ruiz de Alarcón, 7-2º Dcha., 28014 Madrid, Spain (professional representative)

a g a i n s t

Union Tobacco & Cigarette Industries Co., Al Itihad Street, Al Jeeza, Amman  11185, Jordán (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 285 446 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 073 862. The opposition is based on European Union trade mark registration No 75 606 and international registration No 1 023 145. The opponent invoked Article 8(1)(b) and 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.

1. The goods

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

1. Earlier right No 75 606

Class 34: Tobacco, raw or manufactured; cigarettes, cigars, cigarillos, smoking and chewing tobacco; smokers' articles; matches.

2. Earlier right No 1 023 145

Class 34: Raw or manufactured tobacco; tobacco products, including cigars, cigarettes, cigarillos, hand-rolling tobacco, pipe tobacco, chewing tobacco, snuff, kretek; snus tobacco; tobacco substitutes (for non-medical use); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco boxes, cigarette cases and smokers' ashtrays, tobacco pipes, pocket machines for rolling cigarettes, smokers' lighters; matches.

The contested goods are the following:

Class 34: Tobacco; smokers' articles; matches.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested goods are identically reproduced in the lists of goods of both earlier marks.

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.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

In the present case, the goods found to be identical are directed at the public at large. However, it must be noted that although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. Therefore, in the case of tobacco products, a higher degree of similarity of signs may be required for confusion to occur. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008 2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005 2, GRANDUCATO / DUCADOS et al.).

Therefore, the degree of attention will be high.

3. The signs

MARLBORO
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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 contested sign ‘Mikado’, written in slightly stylized letters with a capital ‘M’, has no meaning for the relevant public and is, therefore, distinctive.

The earlier marks consist of the word marks ‘Marlboro’, written in capital letters in one case and in slightly stylized letters with a capital ‘M’ in the other. This term will be understood as ‘the Japanese emperor’ (Collins English Dictionary/Dictionnaire de français Larousse) at least by the English and French speaking public in the relevant territory. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the rest of the relevant public, it has no meaning and hence is also distinctive.

Visually, the signs coincide in their initial letter ‘M’ and their final letter ‘O’ and in the letter ‘a’ placed in the second position in the earlier rights and in the fourth position in their contested mark. However, they differ in the letters ‘rlbor’ of the earlier rights and in the letters ‘ik d’ of the contested sign.   The common letters are also depicted with a similar font.

As the signs only coincide in three letters, their first and last letters and in another letter placed in a different position but differ in the rest of the letters, it is concluded that the signs, as a whole, are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the letter ‘a’, placed in different positions, as already explained above and in the sound of their initial and final letters respectively, namely ‘M’ and ‘O’. However, the similar sounds of these letters will be somewhat distorted because they form part of syllables formed with other letters, namely ‘MA’ and ‘RO’ in the earlier signs in contrast with ‘MI’ and ‘DO’ of the contested mark. Finally, the pronunciation differs in the sound of the letters ‛arlbor’, of the earlier sign, and in the sound of the letters ‘ikad’, of the contested mark.

As the signs only coincide in the sound of their first and last letters as well as in another letter placed in a different position, it is concluded that the signs, as a whole, are not aurally similar.

Conceptually, although at least the English and French speaking public in the relevant territory will perceive the meaning of the contested sign, as explained above, the other sign has no meaning in the relevant territory. Therefore, for the English speaking public in the relevant territory, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the remaining part of the public in the relevant territory, since neither of the marks have any meaning, a conceptual comparison is not possible, and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs merely coincide in three letters, their first and last letters, namely ‘M’ and ‘O’ and in the letter ‘a’ placed in different positions in each of them, and despites the fact that the signs in conflict are depicted in a similar typeface which is not very stylised, the visual, aural and conceptual perception of the signs as a whole is that they are dissimilar.

4. Conclusion

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant for the present proceedings. This is because the marks in comparison in such cases have a highly similar stylisation (R 139/2013-1; B 2 092 479; B 2 423 658, which is not the case in the present proceedings, or they have significant similarities in their word element, such as the identical endings ‘BORO’ (MARLBORO v MARBORO; MARLBORO v KINGSBORO; MARLBORO v DUNBORO).

The marks in conflict in the present case do not have a special stylisation in their wording nor have similar word elements that could lead to a similarity of signs. In fact, the marks do not coincide neither in their initial, middle nor final syllables. They only coincide in the first and final letter and in the vowel ‘a’ placed in different positions, and hence, the current case is not comparable to the cases provided by the opponent.  

 

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

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][holder] 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

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR and they have been found dissimilar. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Patricia LOPEZ FERNÁNDEZ DE CORRES

Juan Antonio MORALES PAREDES

Dorothée SCHLIEPHAKE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.