When push came to shove, the General Court (GC) dismissed an
appeal against the European Intellectual Property Office (EUIPO)
Board of Appeal's finding that there was a likelihood of
confusion under Article 8(1)(b) EUTMR between the word marks PUSH
and PUNCH for identical goods, being various tobacco products in
Sparking it up
By way of background, JT International S.A. (the applicant)
applied to register the word mark PUSH in March 2013.
Corporación Habanos, SA filed an opposition against this
application on the basis of a number of national marks for PUNCH
(both word and figurative marks), alleging a likelihood of
At first instance, the Opposition Division found that the marks
PUNCH and PUSH were similar to varying degrees and that the goods
were similar, if not identical. Nevertheless, they emphasised the
brand loyalty of smokers and the corresponding high level of
attention on the part of the relevant public, such that when
assessing the overall impression, the conflicting signs varied in
terms of additional letters and differing pronunciations of the
suffixes to the extent that a likelihood of confusion was
For reasons of procedural economy, the Board of Appeal and GC
focused on the earlier Spanish word mark for PUNCH and the relevant
public was considered to be the Spanish-speaking public, who could
not make conceptual comparisons between the marks.
Whilst the Board of Appeal agreed the goods were identical and
the signs were visually and aurally similar, when taking into
account the interdependence principle and the notion of imperfect
recollection, they deemed the high degree of attention on the part
of the relevant public to be insufficient to exclude a likelihood
of confusion. The Board of Appeal highlighted the manner of sale of
various tobacco products in Spain, noting that consumers must
request such goods over the counter or purchase them from vending
machines; in this regard, the enhanced level of attention may not
be sufficient to overcome confusion in a noisy, crowded or
On appeal, the applicant pushed back on the Board of
Appeal's assessments relating to the high level of attention
and the way in which the relevant public came into contact with the
goods. The GC agreed that the relevant public, being
Spanish-speaking consumers, had a high level of attention in light
of the attachment they feel to specific tobacco brands and the
expensive nature of the goods (particularly cigars). Finding that
the goods were identical, the GC utilised the standard test for
similarity of marks and considered that:
Visually, the marks
both consist of one word and share three identical letters
including the first two letters and the final letter; consumers
generally pay more attention to the beginnings of word signs than
to the end and even though the marks are short, the differences in
the middle strings did not rule out a finding of similarity.
PUSH and PUNCH are one syllable, with the same vowel
("U") and, importantly the same sounds at the beginning
("PU"), but also the same sounds at the end
("CH"/"SH"). Thus the signs were similar, even
when taking into account the changes invoked by English
pronunciation and the lack of an additional "N" in PUSH.
The nature of sale of the goods, for example noisy surroundings,
would only exacerbate similarity, although phonetic similarity is
less important than visual similarity given how the goods are
comparison was not possible as the word PUNCH would not be
understood by the Spanish-speaking public.
Overall the GC found there to be a likelihood of confusion, even
when taking into account the fact that the sale of tobacco products
may be in a shop that is not busy, dark or noisy. The fact that the
marks were visually similar and coincided in three out of the four
or five letters, including those at the beginning and the end, gave
sufficient rise to a likelihood of confusion.
This decision illustrates the difficulties encountered by
companies when seeking registration of marks which may contain
identical letters at the beginnings and ends of marks and is
indicative of a relatively low threshold for likelihood of
Case details at a glance
Jurisdiction: European Union
Decision level: General Court
Parties: JT International SA
(applicant) v EUIPO (defendant); Corporación Habanos,
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