PM | Decision 2342288 – Philip Morris Brands Sàrl v. PM-International AG

OPPOSITION No B 2 342 288

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

a g a i n s t

Pm-International AG, Wäistrooss 15, 5445 Schengen, Luxembourg (applicant), represented by RAU Schneck & Hübner Patentanwälte Rechtsanwälte Partgmbb, Königstraße 2, 90402 Nürnberg, Germany (professional representative)

On 30/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 342 288 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 12 313 557http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=105600513&key=62df760a0a8408037a774652cc5fb1ed. The opposition is based on the following earlier marks:

  • International trade mark registration No 861 924 designating the European Union, PM (word mark)
  • International trade mark registration No 1 035 386 designating the European Union, Magnify
  • International trade mark registration No 1 011 037 designating the European Union, Magnify
  • European Union trade mark registration No 9 488 784 Image representing the Mark
  • Non-registered trade mark claimed in relation to all the territories of the European Union .

The opponent invoked Article 8(5) EUTMR in relation to all the earlier registered marks, and Article 8(4) EUTMR in relation to the non-registered mark.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to the Office´s Guidelines for Examination in the Office, Part C, Opposition:

As regards international registrations, the following databases are accepted (judgment of 26/11/2014, T-240/13, Alifoods, EU:T:2014:994):

  • ROMARIN (the ‘short’ version of the extract being sufficient as long as it contains all the necessary information, but the extended or long version of the WIPO extract being preferable as it contains all the individual indications for each designated country, including the Statement of Grant of Protection)

  • TMview (as far as it contains all the relevant data, see above)

In the present case the evidence filed by the opponent in relation to the earlier International trade mark registrations consisted of extracts from the ‘eSearch’ database, as can be seen from the source of the website at the bottom of the page. According to the above, the evidence submitted is not sufficient to substantiate the opponent’s earlier International trade marks, because the database is not of an official nature.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The opposition will now proceed with the examination of Article 8(5) EUTMR in relation to the earlier European Union trade mark registration No 9 488 784 Image representing the Mark.

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 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.

The opposition will now proceed to assessment of the second requirement, namely, reputation of the earlier mark.

  1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark 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 14/11/2013. However, the contested trade mark has a priority date of 20/09/2013. 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: Tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; 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.

On 04/09/2015, the opponent submitted the following evidence:

  • Annex 1. A printout from www.forbes.com containing a press article entitled ‘A closer look at Philip Morris´ Asia Opportunity’, dated 03/05/2013. The article is in English and contains information about the presence of the opponent company and brand in Asia. It shows a representation of a coat of arms depicted in red, white and brown, where the letters ‘PM’ are shown and the words ‘PHILIP MORRIS INTERNATIONAL’ are positioned below, contained within a band.

  • Annex 2 consists of a printout of a company overview of Philip Morris, carried out by www.threfis.com. Both the printing date of the document (24/06/2015), namely the time when the information was available online, and the date of the last update of the information contained in it (23/06/2015) fall out of the relevant period of time.

  • Annex 3 contains Philip Morris´s annual reports for all years between 2009 and 2013, inclusive. According to the opponent, they are available to the public, and to shareholders. These reports refer to the presence of the opposing company in different markets, such as the European Union, and to the different products marketed by the opponent (for instance, Marlboro cigarettes). The reports include representations of a complex mark, containing the letters “PM” in the middle, as follows:

 

The document contains pictures of packaging of some of the cigarettes sold by the opponent, such Marlboro. These seem to contain the representation of the  sign referred to in the previous paragraph. However, it is not possible to see the parts of the sign in detail, due to their small size.

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