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The applicant, JT International SA, filed an EUTM for the word mark PUSH in Class 34 for tobacco and tobacco associated products including cigars.
Corporación Habanos, SA filed a notice of opposition based on several earlier marks including the word and figurative marks above right in Class 34 on the grounds of a likelihood of confusion.
The Opposition Division rejected the opposition in respect of all the goods at issue stating that, inter alia, although those goods were identical or similar and there were certain visual and phonetic similarities between the signs at issue, the level of attention of that public was high, with the result that that public would pay great attention to the differences such as the additional letters in the earlier word marks which precluded any likelihood of confusion.
On appeal by the Opponent the Fifth Board of Appeal of EUIPO annulled the decision of the Opposition Division. It found that, in view of the identity of the goods at issue and the visual and phonetic similarity of the signs at issue and their lack of meaning for the Spanish-speaking public, the Opposition Division had mistakenly ruled out any likelihood of confusion. It considered that because the goods at issue (tobacco products) were distributed in Spain, namely vending machines, which generally stand in pubs, and authorised shops — places which are busy, noisy and, as regards pubs, often dark — this heightened the likelihood of confusion.
The Applicant appealed to the General Court and argued that, contrary to what the Board of Appeal maintained, the signs at issue could not be regarded as visually and phonetically similar because, in signs which are short, each letter is important and the consumer therefore pays attention to every difference between those signs. The Applicant maintained that, in the present case, the presence of the two consecutive letters ‘n’ and ‘c’ in the earlier marks, which do not appear in the mark applied for, which contains, in their place, only the letter ‘s’, is sufficient to conclude that there is no visual similarity.
JT International disputed the Board of Appeal’s analysis that the relevant Spanish-speaking public is not capable of grasping the meaning of the mark applied for. They argued there is a high level of attention of the relevant public and, that too much emphasis had been placed on the way in which that relevant public came into contact with the goods at issue (vending machines etc). The Applicant also focused on the issue of Spanish interpretations of the English translated words; suggesting that ‘Push’ is commonly used throughout Europe, for example when opening a door whilst ‘Punch’ is commonly used to describe fist fights, and as a result the Spanish speaking public would recognise the differences between the marks.
However, the General Court found that the Board of Appeal had been right to hold that the signs were visually and phonetically similar, and that no conceptual comparison between them was possible. In particular, three out of the four or five letters were common to both of them, including those at the beginning and the end of the marks.
For a consumer of the goods who went to a specialist shop at a time when it was not busy, in particular to a place that was sufficiently lit and not noisy, the display on shelves or in the window of identical goods (for example cigars or cigar boxes) bearing trade marks which were visually similar was sufficient to give rise to the likelihood of confusion.
It was held that Board of Appeal was right in annulling the decision of the Opposition Division on the grounds there was a likelihood of confusion.