Judgments nº T-743/18 of Tribunal General de la Unión Europea, December 19, 2019

• Resolution Date: December 19, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-743/18

(EU trade mark - Opposition proceedings - Application for the EU figurative mark I.J. TOBACCO INDUSTRY - Earlier EU figurative mark JTi - Relative ground for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-743/18,

Japan Tobacco, Inc., established in Tokyo (Japan), represented by J. Gracia Albero and R. Ahijón Lana, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska, J. Ivanauskas and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

I.J. Tobacco Industry FZE, established in Ras Al Khaimah (United Arab Emirates), represented by A.-E. Malami, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 15 October 2018 (Case R 979/2018-4), relating to opposition proceedings between Japan Tobacco and I.J. Tobacco Industry,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias (Rapporteur), President, V. Valančius and R. Frendo, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 18 December 2018,

having regard to the response of EUIPO lodged at the Court Registry on 15 March 2019,

having regard to the response of the intervener lodged at the Court Registry on 20 March 2019,

further to the hearing on 24 October 2019,

gives the following

Judgment

Background to the dispute

1 On 7 November 2016, the intervener, I.J. Tobacco Industry FZE, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative mark:

3 The goods in respect of which registration was sought are in Class 34 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Tobacco; smokers’ articles; matches’.

4 On 6 March 2017, the applicant, Japan Tobacco Inc., filed a notice of opposition pursuant to Article 41, Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 (now Article 46, Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 respectively) to registration of the mark applied for.

5 The opposition was directed against all the goods covered by the mark applied for and was based on the following earlier EU figurative mark:

6 The earlier mark was registered on 2 December 2002 and designates the goods ‘Cigarettes, raw and manufactured tobacco, smokers’ articles and matches’ in Class 34.

7 By decision of 29 March 2018, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion on account of the low visual and phonetic similarity and the lack of conceptual similarity between the marks at issue. Moreover, the Opposition Division noted that the applicant had not adduced evidence as to the alleged reputation of the earlier mark and therefore the opposition also had to be rejected in so far as it was based on Article 8(5) of Regulation No 207/2009.

8 On 28 May 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Opposition Division.

9 By decision of 15 October 2018 (‘the contested decision’), the Fourth Board of Appeal dismissed the appeal.

10 In particular, the Board of Appeal found, first, that the figurative element of the mark applied for, consisting in a complex pattern of horizontal and vertical lines in which it is impossible to see a particular letter combination, was the dominant element of that mark. Secondly, it found that the word element ‘i.j. tobacco industry’ of that mark was not negligible. According to the Board of Appeal, the words ‘tobacco industry’ in that word element will be perceived as descriptive of the goods covered, while the element ‘i.j.’ is distinctive in respect of the same goods.

11 In that context, the marks at issue are not similar for the relevant public, composed of average EU consumers, and therefore a likelihood of confusion within the meaning of Article 8(1) of Regulation 2017/1001 must be ruled out.

12 The figurative element of the mark applied for does not display any visual similarity with the earlier mark. Moreover, the element ‘i.j.’ in the mark applied for does not give rise to a finding that there is visual similarity with the earlier mark, since the letters ‘i’ and ‘J’, present in the earlier mark, are not only highly stylised but also arranged in reverse order and separated by the letter ‘T’.

13 Phonetically, the earlier mark is pronounced in the same way as the letters of which it consists, read one after the other, which excludes any similarity with the pronunciation of the word part of the mark applied for, the only part of that mark capable of being pronounced.

14 Lastly, according to the Board of Appeal, the earlier mark does not convey any conceptual message, whereas only the words ‘tobacco industry’, which are present only in the mark applied for, convey such a message.

15 In the light of those considerations, the Board of Appeal concluded that the marks at issue were not similar and therefore the opposition had to be rejected in so far as it was based on Article 8(1)(b) of Regulation No 207/2009.

16 As to the alleged reputation of the earlier mark, which was also relied on in support of the opposition pursuant to Article 8(5) of Regulation No 207/2009, the Board of Appeal noted, first, that the lack of similarity between the marks at issue precluded the mark applied for from being refused under that provision and, secondly, that, in any event, the applicant had not adduced any evidence capable of demonstrating that reputation.

Forms of order sought

17 By application lodged at the Court Registry on 18 December 2018, the applicant brought the present action. EUIPO and the intervener lodged their responses on 15 and 20 March 2019 respectively.

18 The applicant claims that the Court should:

- annul the contested decision so that the opposition is upheld and the application for an EU trade mark is rejected;

- order EUIPO to pay the costs, including those incurred before the Opposition Division and those incurred before the Board of Appeal.

19 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

20 In support of the action, the applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

21 While the applicant agrees with the Board of Appeal’s finding that the figurative element of the mark applied for is the dominant component of that mark, it submits that that element is not so highly stylised that the consumer will not see the group of capital letters ‘IJTI’ in it. According to the applicant, the consumer intuitively looks for elements that make the mark understandable, which is supported in the present case by the spacing, level, font and similarity of the components of the figurative element of the mark applied for with the letters of the Latin alphabet ‘I’, ‘J’, ‘T’ and ‘I’. At least part of the relevant public will therefore be inclined to perceive those letters in the figurative element of the mark applied for. Moreover, the word element ‘i.j. tobacco industry’ in the mark applied for is entirely negligible for that public, first, on account of its secondary position, secondly, owing to the tendency to abbreviate the trade mark, also taking into account how the goods concerned are sold, and, thirdly, because the words ‘tobacco industry’ are descriptive.

22 Thus, according to the applicant, a correct analysis, based on the premiss that the dominant element of the mark applied for is perceived to be the group of capital letters ‘IJTI’, leads to the conclusion that that element is the same as the earlier mark if account is taken of the fact that the letter ‘I’ at the beginning of that group of letters refers to information technology and therefore has weak distinctive character. It follows that the marks at issue are, at the very least, visually and phonetically similar, while a conceptual similarity may arise if the relevant public attributes the meaning ‘J. Tobacco Industry’ to the group of letters making up the earlier mark. That similarity is accentuated on account of the way that tobacco products are sold, which means that, first, the visual and phonetic similarities outweigh any conceptual differences and, secondly, the word elements of the mark applied for are negligible for the relevant public. Since the goods covered by those trade marks are identical, a likelihood of confusion must be claimed at least for part of that public. Accordingly, the applicant submits that the Board of Appeal’s assessment is flawed in that regard.

23 EUIPO and the intervener dispute the applicant’s arguments.

24 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

25 In accordance with settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or...