MOST | Decision 2785635
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 785 635
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. 40°, 85354 Freising, Germany
(professional representative)
a g a i n s t
China Tobacco International Europe Company SRL, Strada Cernica 21,
Pantelimon, Ilfov, Romania (applicant), represented by Bogdan Alecu, Brasov,
strada Paducelului 18, 600012 Brasov, Romania (professional representative).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 785 635 is upheld for all the contested goods.
2. European Union trade mark application No 15 612 294 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 612 294 for the word mark ‘MOST’. The opposition is based on
European Union trade mark registration No 12 280 418 for the word mark ‘MIST’. The
opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
Decision on Opposition No B 2 785 635 page: 2 of 5
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: Articles for use with tobacco; Matches; Tobacco and tobacco products
(including substitutes); Personal vaporisers and electronic cigarettes,
and flavourings and solutions therefor.
Articles for use with tobacco; matches; tobacco; electronic cigarettes are identically
contained in both lists of goods (including synonyms).
The contested tobacco products (including substitutes); personal vaporisers, and
flavourings and solutions therefor are included in the broad category of the
opponent’s smokers’ articles. Therefore, they 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.
In the present case, the goods found to be identical are directed at the public at
large.
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.).
Consequently, the degree of attention will vary from average to high (e.g. in relation
to electronic cigarettes).
Decision on Opposition No B 2 785 635 page: 3 of 5
c) The signs
MIST MOST
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 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
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 elements ‘MIST’ and ‘MOST’ are meaningful in certain territories, for example in
those countries where English is understood. Consequently, the Opposition Division
finds it appropriate to focus the comparison of the signs on the non-English-speaking
parts of the public such as the French-, Polish- and Spanish-speaking parts.
Neither the earlier trade mark, ‘MIST’, nor the contested sign, ‘MOST’, has any
meaning for the relevant public. Therefore, they are distinctive in relation to the goods
in question.
Visually and aurally, the signs coincide in the sequence of letters and sounds
‘M*ST’. The differences between the signs are confined to the letters ‘I’ and ‘O’ of the
earlier and contested marks, respectively.
Bearing in mind the commonality in three out of four letters in the word marks, the
signs are visually and aurally similar to an average degree.
Conceptually, the applicant claims in its observations that the marks are dissimilar.
However, neither of the signs has a meaning for the public in the relevant territory.
Since a conceptual comparison is not possible, the conceptual aspect does not
influence the assessment of the similarity of the signs.
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.
Decision on Opposition No B 2 785 635 page: 4 of 5
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
According to settled case-law, the likelihood of confusion on the part of the public
must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
In the present case, the goods at issue are identical and, contrary to the applicant’s
observation, they target the public at large, whose degree of attention may vary from
average to high.
The conflicting signs are visually and aurally similar to an average degree and they
have no concept for the relevant public. Furthermore, the earlier mark is considered
to enjoy a normal degree of distinctiveness.
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). Furthermore, even consumers who pay a high degree of attention need to rely
on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the non-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.
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.
Decision on Opposition No B 2 785 635 page: 5 of 5
The Opposition Division
Richard BIANCHI Carlos MATEO PEREZ Inés GARCÍA LLEDÓ
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.