OPPOSITION DIVISION
OPPOSITION No B 2 772 385
Starbuzz Tobacco, Inc., 10871 Forbes Ave., Garden Grove, California 92843,
United States of America (opponent), represented by Kuhnen & Wacker Patent-
und Rechtsanwaltsbüro, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany
(professional representative)
a g a i n s t
Karelia Tobacco Company Inc., Athinon Street, 24100 Kalamata, Greece
(applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United
Kingdom (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 772 385 is upheld for all the contested goods.
2. European Union trade mark application No 15 512 619 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 512 619 , namely against all the goods in Class 34.
The opposition is based on, inter alia, European Union trade mark registration
No 12 280 418 for the word mark ‘MIST’. The opponent invoked Article 8(1)
(b) EUTMR.
Decision on Opposition No B 2 772 385 page: 2 of 8
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 European Union trade mark registration No 12 280 418.
a) The goods
The goods on which the opposition is based are the following:
Class 34: Tobacco; smokers’ articles; matches; ashtrays for smokers; cigar cases;
cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of
cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco
substitutes, not for medical purposes; pocket machines for rolling cigarettes;
cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar
lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and
cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco
pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes;
chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes;
match holders; matches; tobacco; tobacco jars; tobacco pouches; herbs for smoking.
The contested goods are the following:
Class 34: Tobacco, cigars, cigarettes, e-cigarettes, cigarillos, smokers’ articles,
ashtrays, cigarette cases, cigarette lighters, cigarette papers and matches.
Tobacco, cigars, cigarettes, e-cigarettes (electronic cigarettes), cigarillos, smokers’
articles, cigarette cases, cigarette papers; matches are identically contained in both
lists of goods (including synonyms).
The contested ashtrays include, as a broader category, the opponent’s ashtrays for
smokers. Since the Opposition Division cannot dissect ex officio the broad category
of the contested goods, they are considered identical to the opponent’s goods.
The contested cigarette lighters overlap with the opponent’s lighters for smokers.
These goods are identical.
b) 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.
Decision on Opposition No B 2 772 385 page: 3 of 8
In the present case, the goods found to be identical are directed at the public at
large, as well as at business experts in the field of tobacco and tobacco products.
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. 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. 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.).
c) The signs
MIST
Earlier trade mark 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 earlier mark is the word mark ‘MIST’. In the case of word marks, the word as
such is protected and not its written form; therefore, it is immaterial whether the
earlier mark is depicted in lower or upper case letters.
The contested sign is a complex figurative mark comprising the wrapping for a beige
rectangular pouch with a label in its lower part. The expression ‘Oriental Mist’ in
brown title case letters, the expression ‘HAND ROLLING TOBACCO’ in smaller
brown upper case letters underneath it and a small figurative element depicting
tobacco leaves are all depicted against a fanciful background of a city landscape and
surrounded by other features of the label, including a fanciful frame containing the
stylised expressions ‘GEORGE KARELIAS AND SONS’ and ‘THE KARELIA
TOBACCO COMPANY, KALAMATA, GREECE’, both written in upper case letters.
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
Decision on Opposition No B 2 772 385 page: 4 of 8
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The coinciding element ‘MIST’ will be understood by some parts of the public, in
particular by the English speakers, as ‘a cloud of tiny water droplets suspended in the
atmosphere at or near the earth’s surface that limits visibility (to a lesser extent than
fog; strictly, with visibility remaining above 1 km)’ (Oxford Dictionary Online). For
reasons of procedural economy, the Opposition Division finds it appropriate to focus
the comparison of the signs on the English-speaking part of the public, for which the
coinciding element ‘MIST’ conveys a meaning as explained above.
In its observations, the applicant argues that the earlier trade mark, ‘MIST’, has a low
degree of distinctiveness given that the word is understood by English speakers as,
inter alia, ‘a cloud of particles’, ‘something that dims, obscures or blurs’ and ‘a
suspension of a liquid in a gas’, thus allowing it to be associated with ‘smoky’, ‘misty’
or ‘cloudy’ or having some connotations related to the tobacco industry (Annexes G
and H). However, the Opposition Division points out that, contrary to the applicant’s
assertions, the word ‘MIST’ is in no way descriptive, allusive or otherwise weak for
the relevant goods, as it does not serve to directly describe tobacco products and
articles and, moreover, it gives no information about the goods’ characteristics or
qualities. Consequently, the element ‘MIST’ is considered distinctive for the relevant
goods in Class 34 in both signs. On the other hand, the word ‘Oriental’ in the
contested sign will be perceived by the relevant public as ‘related to the Orient
(eastern part of Asia)’ and, bearing in mind that this verbal element does not play an
independent role in the sign but serves to define the word ‘MIST’, it will be perceived
as exclusively related to this coinciding element.
The element ‘HAND ROLLING TOBACCO’ of the contested sign will be associated
with a particular type of tobacco by the English-speaking part of the public. Bearing in
mind that the relevant goods are tobacco-related products and articles, this element
is weak or non-distinctive for these goods. Specifically, it is non-distinctive for tobacco
and weak for the remaining goods. Furthermore, the figurative element of tobacco
leaves is also considered less distinctive than average for the goods in question.
However, the expression ‘GEORGE KARELIAS AND SONS’ in the contested sign
has a normal degree of distinctiveness in relation to the goods and the expression
‘THE KARELIA TOBACCO COMPANY, KALAMATA, GREECE’ indicates the origin of
the goods, from the applicant’s company (Karelia) located in Kalamata, Greece.
In addition, the contested sign also contains figurative elements of a purely
decorative nature, namely the wrapping for a beige rectangular pouch and the
remaining features of the label. These are also considered less distinctive than the
other elements of the sign.
The element ‘Oriental Mist’ in the contested sign is the most eye-catching element in
the sign due to its central position and larger size. Furthermore, the element ‘HAND
ROLLING TOBACCO’ has a secondary, sub-dominant, position in the sign and the
remaining verbal elements, indicating the company origin, are barely perceptible
because they are very small and placed at the side, so may be considered almost
negligible.
Visually, the signs coincide in the verbal element ‘MIST’. However, they differ in the
verbal element ‘ORIENTAL’, which precedes it in the contested sign and has no
counterpart in the earlier mark. Furthermore, the signs differ in all the remaining
Decision on Opposition No B 2 772 385 page: 5 of 8
verbal and figurative elements, described above. 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). Therefore, given the
limited distinctiveness of the expression ‘HAND ROLLING TOBACCO’ in the
contested sign, ‘Oriental Mist’ will be the element that will mostly attract consumers’
attention. To that extent, taking into account that this is also the most eye-catching
element of the contested sign, the signs are considered visually similar to an average
degree.
Aurally, the pronunciation of the signs coincides in the syllable ‘MIST’, present
identically in both signs. Taking into account the fact that the relevant public will
understand the sub-dominant verbal element ‘HAND ROLLING TOBACCO’ as only a
reference to the goods in question, it may be presumed that consumers will refer to
the contested sign aurally by pronouncing only the expression ‘ORIENTAL MIST’.
The remaining verbal elements are almost negligible and will not be pronounced at
all. Therefore, bearing in mind all the above, as well as the subordinate character of
the word ‘ORIENTAL’ in the expression that will be pronounced, the signs are
considered aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks, as well as the limited distinctiveness of the
sub-dominant expression ‘HAND ROLLING TOBACCO’ in the contested sign. As the
signs will be associated with similar meanings evoked by the concept of the element
that they have in common, ‘MIST’, the signs are conceptually similar to an average
degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
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 in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The goods are identical and the degree of attention is likely to be high due to the
brand loyalty that exists in relation to tobacco goods in Class 34. The earlier mark
has been considered to enjoy a normal degree of distinctiveness in relation to the
goods in question.
Decision on Opposition No B 2 772 385 page: 6 of 8
The signs are visually and conceptually similar to an average degree and aurally
highly similar to the extent that the contested sign entirely incorporates the verbal
element ‘MIST’, which constitutes the whole earlier mark, and presents it as a
separate word. Consequently, the presence in both signs of this coinciding element
with an average degree of inherent distinctiveness may outweigh the differences
between them and lead to a likelihood of confusion, including a likelihood of
association.
Firstly, in any event, account is taken of the fact that average consumers rarely have
the chance to make a direct comparison between different marks, but must trust in
their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26). Even consumers who pay a high degree of attention, as they
might in the present case, need to rely on their imperfect recollection of trade marks
(21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Secondly, likelihood of confusion covers situations where the consumer directly
confuses the trade marks themselves, or where the consumer makes a connection
between the conflicting signs and assumes that the goods/services covered are from
the same or economically linked undertakings. Bearing in mind that the coinciding
and distinctive word ‘MIST’ may appear affixed on identical tobacco products, it
cannot be completely ruled out that the additional verbal and figurative elements of
the contested sign, regardless of their distinctiveness, may be perceived as denoting
different lines of goods from the same producer. Although the contested sign contains
a clear reference to the goods’ origin (‘GEORGE KARELIAS AND SONS’ and ‘THE
KARELIA TOBACCO COMPANY, KALAMATA, GREECE’), the earlier mark does not
bear any additional features that might prevent a conceptual link between the signs
for the same broad category of products.
Furthermore, it was established by the General Court that where the goods or
services are identical there may be a likelihood of confusion on the part of the public
where the contested sign is composed by juxtaposing the company name of another
party and a registered mark that has normal distinctiveness and which, without alone
determining the overall impression conveyed by the composite sign, still has an
independent distinctive role therein (06/10/2005, C-120/04, Thomson Life,
EU:C:2005:594, § 37). As seen in the present case, the word ‘MIST’ has preserved
its independent, distinctive and co-dominant character in the contested sign and is
most likely to trigger an association with the earlier mark when the public encounters
the goods on the market.
In addition, evaluating likelihood of confusion implies some interdependence between
the relevant factors and, in particular, a similarity between the marks and between
the goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the
goods are identical and, consequently, the relevant consumers and distribution
channels through which the products will be purchased will be to a certain extent the
same. Furthermore, cigarettes, for instance, are purchased in supermarkets and
stores by asking for these goods out loud. Therefore, account must also be taken of
the high degree of aural similarity in the present case.
To conclude, the applicant argues that the coinciding word ‘MIST’ has been
incorporated in many other trade marks. To demonstrate this, the applicant has
submitted a list from the Office’s registry containing EUTMs bearing the verbal
element ‘MIST’.
Decision on Opposition No B 2 772 385 page: 7 of 8
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include ‘MIST’. Under these
circumstances, the applicant’s claims must be set aside.
Furthermore, the applicant refers to previous decisions of the Office to support its
arguments (in particular in Annex B). 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 applicant are not relevant
to the present proceedings, as they mostly comprise different sets of factors and
circumstances that have to be taken into account on a case-by-case basis.
Furthermore, while the Office does have a duty to exercise its powers in accordance
with the general principles of European Union law, such as the principle of equal
treatment and the principle of sound administration, the way in which these principles
are applied must be consistent with respect to legality. It must also be emphasised
that each case must be examined on its own individual merits. The outcome of any
particular case will depend on specific criteria applicable to the facts of that particular
case, including, for example, the parties’ assertions, arguments and submissions.
Finally, a party in proceedings before the Office may not rely on, or use to its own
advantage, a possible unlawful act committed for the benefit of some third party in
order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the
Opposition Division are to some extent factually similar to the present case, the
outcome may not be the same.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 280 418. It follows that the contested trade mark
must be rejected for all the contested goods.
As the earlier right examined above leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods against which the opposition
was directed, there is no need to examine the other earlier rights invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268), or the
scenario of a family of marks claimed by the opponent.
Decision on Opposition No B 2 772 385 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Volker TIMO MENSING Manuela RUSEVA Marzena MACIAK
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.