Trademarks SHUANGXI un XISHANGXI admitted to be confusingly similar due to complex characteristics and restricted access of tobacco products
In 2019 our client CTBAT International Co. Limited (the Defendant) filed a notice of opposition with the Board of Appeal against the registration of the trademark XISHANGXI (fig.) (reg. No. M 72 423) for tobacco, cigarettes and smoking accessories on the basis of Article 7 (2) of the Law On Trade Marks and Indications of Geographical Origin. The opposition was supported by the earlier trademark rights SHUANGXI of Diamond Quest Ltd (the Plaintiff).
The Board of Appeal upheld the opposition and declared the mark XISHANGXI to be invalid.
Consequently, the owner of the contested mark Diamond Quest Ltd brought an action before the Riga City Vidzeme District Court for annulment of the Board of Appeal’s decision. However, the court rejected the action pursuant the following reasonings:
- The Court supports the Defendant’s argument that the goods at issue are identical or similar, because they are used in the smoking process or in the provision of smoking. Therefore the goods have the same purpose and distribution channels;
- The ruling admits that the marks SHUANGXI and XISHANGXI are similarly designed, because they are shaped in the form of a cigarette package. Moreover, retail sale of tobacco products is strictly regulated by the Latvian law, as consumers do not have direct access to smoking products. Consequently, the court joins the Defendant’s arguments that word elements in cigarette brands are of utmost importance;
- When assessing the word elements comprised in the marks at comparison, the court supports the CJEU case law findings that consumers pay particular attention to the beginning of word marks. Moreover, they are only few consumers in Latvia, who are familiar with Asian writing and vocabulary. In fact, for Latvian consumers the ending of the marks ANGXI would be easier to pronounce, so there is a greater chance that consumers will be able to remember this part of the marks better.
- The court also relies on the survey carried out by SKDS in 2018 that was submitted by the Defendant. The survey reveals that the largest range of consumers of smoking products are young people, people with low income and low level of education. Therefore, the degree of attention of the relevant consumers would be lower and and the determining factor for choice would be the price.