JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
19 December 2019
(*)
(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 from economically
linked undertakings constitutes a likelihood of confusion. Under that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
26      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
27      Furthermore, the global assessment of the likelihood of confusion must, in relation to the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). The average consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them (judgments of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26, and of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.), T‑443/12, not published, EU:T:2013:605, paragraph 54).
28      In the present case, as observed by the Board of Appeal in paragraph 12 of the contested decision, the relevant public is the general public of consumers of the goods covered by the marks at issue in the European Union. It should be added that consumers of tobacco products and smokers’ articles have a high level of attention on account of their high degree of brand loyalty (judgment of 3 July 2013, GRE v OHIM — Villiger Söhne (LIBERTE american blend on blue background), T‑205/12, not published, EU:T:2013:341, paragraph 23).
29      As can be seen from paragraphs 11, 13, 14, 41 and 42 of the application, the applicant bases its arguments regarding the similarity of the signs at issue on a single plea
alleging that the Board of Appeal erred in finding that the figurative element of the mark applied for would not be perceived by the relevant public as the group of capital letters ‘IJTI’. According to the applicant, that error vitiates the entirety of the Board of Appeal’s analysis regarding the similarity of those signs.
30      In that respect, as regards the visual comparison of the signs at issue, it must be noted that, as submitted by the parties, the figurative element of the mark applied for constitutes the dominant part of it. That element is in a much more visible position and is thus likely to occupy a position of greater importance, even if imperfectly, in the mind of the consumer. Moreover, the Board of Appeal did not err in its assessment in assuming that that element will not be perceived by the relevant public as the group of capital letters ‘IJTI’. The horizontal and vertical lines forming the figurative part of the mark applied for are configured so as to refer instead to an almost perfect arrangement of elements resting in or on top of one another. They thus provide a highly stylised image. In those circumstances, the consumer would have to engage in a highly imaginative cognitive process in order to ‘decipher’ the figurative element in question and perceive it as representing that group of capital letters. The close interconnection of the lines forming the element concerned will lead the consumer who forms part of the relevant public to perceive that element as an abstract and unitary shape rather than as a combination of four capital letters forming a group.
31      That assessment is not called into question by the fact
relied on by the applicant
that a different arrangement of the components of the figurative element of the mark applied for takes on a form that can easily be associated with the group of capital letters ‘IJTI’ while imitating the font used to form that element. As contended by EUIPO, the assessment regarding the similarity of the signs must be made on the basis of the marks at issue as applied for and registered. It should also be noted, as contended by the intervener, that the consumer, who relies on his imperfect recollection of the marks, will not seek to analyse them to the point of reconstituting them using computer tools such as fonts available online.
32      The presence of the word element ‘i.j. tobacco industry’, which, contrary to the applicant’s claims, is not totally negligible, even if it has a visually secondary position in an overall assessment of the mark applied for, does not alter that assessment. In particular, while it is true that the letters used in the element ‘i.j.’ and the initial letters of the words ‘tobacco industry’ may recall the group of capital letters ‘IJTI’, the latter is not present as such in the mark applied for. In those circumstances, in order for the consumer who forms part of the relevant public to understand, using the word element ‘i.j. tobacco industry’, the figurative element of the mark applied for as representing that group of letters, he must engage in the cognitive process of remembering the letters used in the element ‘i.j.’ and the initial letters of the words ‘tobacco industry’
and then making an effort to draw a link between those four letters and the lines forming the figurative element in question.
33      Both that process and the process described in paragraph 30 above require an amount of time for reflection and a degree of imagination that are hard to reconcile with the approach of the consumer seeking to identify easily and quickly the commercial origin of the goods covered by the marks at issue.
34      It follows that, as the Board of Appeal observed in paragraph 17 of the contested decision, only the letters ‘j’ and ‘i’ may be regarded as elements that the signs at issue have in common. As noted
by the Board of Appeal in that paragraph, those letters are used in the element ‘i.j.’ in the mark applied for, whereas they form part of the letter group ‘JTi’ in the earlier mark. Having regard to the position of the element ‘i.j.’ within the mark applied for, on the one hand, and the stylisation, the interposition of the letter ‘T’ and the order in which the letters are presented in the earlier mark, on the other, it must be held that the Board of Appeal did not err in its assessment in finding that those signs were not visually similar.
35      As regards the applicant’s argument that part of the relevant public could, in spite of the assessments set out in paragraphs 30 to 34 above, still perceive the figurative part of the mark applied for as representing the group of capital letters ‘IJTI’, it must be noted that no analysis intended to describe the relevant public’s approach to a sign can claim to be exhaustive in the sense that all members of that public will adopt an identical approach without exception. In those circumstances, it is for the applicant to demonstrate, with corroborating evidence, that the analysis carried out by the Board of Appeal is incorrect in respect of a significant part of that public (see to that effect, judgments of 19 April 2013, Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, not published, EU:T:2013:207, paragraph 26, and of 25 January 2018, Brunner v EUIPO — CBM (H HOLY HAFERL HAFERL SHOE COUTURE), T‑367/16, not published, EU:T:2018:28, paragraph 25).
36      Since no such evidence has been provided by the applicant, that argument is not capable of calling into question the assessments set out in paragraphs 30 to 34 above.
37      Likewise, the applicant’s argument that the capital letter ‘I’ at the beginning of the group of letters ‘IJTI’ in the mark applied for has limited distinctive character within that mark owing to the fact that that letter refers to information technology must be rejected. In that regard, it must be noted, as observed by EUIPO, that that capital letter may fulfil that function when it is followed by a word designating a product or service that can be associated with information technology. However, the mark applied for does not contain such a word.
38      As regards the phonetic comparison, the Board of Appeal’s finding
in paragraph 18 of the contested decision
that the signs at issue were not similar is also free of error. Bearing in mind that the figurative part of the mark applied for is illegible, it will be pronounced by the public having a basic knowledge of English as the word element ‘i.j. tobacco industry’ or indeed, for those who prefer to shorten, the sole element ‘i.j.’. Those pronunciations are clearly different from the pronunciation of the earlier mark, which contains the letters ‘i’ and ‘J’, but in reverse order compared to the earlier mark, and, more importantly, the letter ‘T’ between the letters ‘J’ and ‘i’. Moreover, there is nothing in the file to suggest that members of the relevant public who do not know English and who are making an effort to pronounce those signs will eventually pronounce them in a similar way.
39      Lastly, as regards the conceptual comparison, the applicant does not dispute the Board of Appeal’s assessment, set out in paragraph 19 of the contested decision, that the earlier mark does not convey any message, like the element ‘i.j.’ in the mark applied for. Moreover, while it is true that the words ‘tobacco industry’ that are present in the mark applied for convey a conceptual message, they do not form part of the earlier mark
and therefore they are not such as to justify a finding that the signs at issue are conceptually similar.
40      It is only in the scenario, which the applicant itself describes as hypothetical, in which the consumer simultaneously possesses goods bearing the marks at issue that he could possibly be led to associate the figurative element of the mark applied for with the letters used in the element ‘i.j.’ and with the initial letters of the words ‘tobacco industry’ which also appear in that mark, and to assume that the capital letter ‘T’ and lower
case letter ‘i’ in the earlier mark in fact correspond to J. TOBACCO INDUSTRY.
41      First, as set out in paragraph 27 above, the consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them. Secondly, as set out in paragraph 33 above, the perception of the figurative element of the mark applied for as representing the group of capital letters ‘IJTI’ requires reflection that is hard to reconcile with the approach of the consumer seeking to identify easily and quickly the commercial origin of the goods.
42      It follows that the Board of Appeal did not err in finding that the signs at issue were not conceptually similar.
43      In those circumstances, the applicant’s argument that the way in which the goods covered by the marks at issue are sold makes the visual and phonetic aspects of the signs at issue more important than their conceptual aspect is irrelevant, since, as follows from paragraphs 30 to 37 above, the Board of Appeal did not err in finding that those signs are neither visually nor phonetically similar. Accordingly, the applicant’s argument that the sales methods in question lead the consumer to ask for the goods marketed under the mark applied for by pronouncing the group of capital letters ‘IJTI’ that he would see in the figurative part of that mark is based on an incorrect premiss. As noted in paragraphs 30 to 33 above, the figurative part of the mark applied for is so highly stylised that the consumer who forms part of the relevant public will not be inclined to see that group of letters in it.
44      Consequently, it must be concluded that, as correctly found by the Board of Appeal, the overall impression created by the marks at issue is different, as they do not display sufficient visual, phonetic or conceptual similarities.
45      Given that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not fulfilled, there is no need to examine the applicant’s arguments relating to the degree of similarity between the goods covered by the marks or to assess globally the likelihood of confusion (see, to that effect, judgment of 31 January 2013, K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), T‑54/12, not published, EU:T:2013:50, paragraph 51).
46      It follows from all the foregoing considerations that the single plea in law
alleging infringement of Article 8(1)(b) of Regulation 2017/1001
is unfounded. Consequently, the action must be dismissed.
Costs
47      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Japan Tobacco, Inc., to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by I.J. Tobacco Industry FZE.
Gratsias
Valančius
Frendo
Delivered in open court in Luxembourg on 19 December 2019.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.