"Cigars" and "operation of cigar lounge" held to be similar

Switzerland

The Swiss Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had rejected an opposition filed by Corporación Habanos SA based on its earlier trademark LA CASA DEL HABANO for goods in Class 34 of the Nice Classification against the registration of the trademark CLUB PASSION HABANOS in Class 43. In doing so, the court found that the goods and services in these two classes were similar (Case B-2630/2012, July 4 2013).

Habanos is the owner of the Swiss trademark LA CASA DEL HABANO (No P-482'790), registered in Classes 14 (eg, lighters and ashtrays), 34 (eg, tobacco and smoker's articles) and 35 (eg, retail services).

On July 1 2010 Citsol SA (Switzerland) filed an application for the registration of the trademark CLUB PASSION HABANOS (No 604340) for "the operation of a cigar lounge" in Class 43.

On November 24 2010 Habanos filed an opposition against the registration of Citsol's trademark. On March 30 2012 the IGE dismissed the opposition. The IGE held that the earlier trademark had been put to genuine use for goods and services in Classes 34 and 35. Nonetheless, the opposition was dismissed as the goods/services were not considered to be similar. The IGE concluded that manufacturers of tobacco and smokers' articles did not usually operate cigar lounges. Moreover, retail services were not considered to be similar to the goods covered by the earlier mark, as the services had different purposes (ie, the bringing together of goods and enabling customers to view and purchase those goods on the one hand, and the consumption of the goods on the other).

On May 11 2012 Habanos appealed the decision. It asked the Federal Administrative Court to confirm that the goods/services at issue were similar, and to remand the case to the IGE to examine the similarity of the signs and the likelihood of confusion between them. Habanos argued that it was very common for cigar lounges or smoker's lounges to be operated under the same trademarks as those used for tobacco products, and that tobacco products were generally offered in such locations.

The Administrative Court confirmed earlier jurisprudence that goods and services may be considered similar if consumers assume that they are both provided by the same company. However, a mere link in the consumers' mind is not sufficient; rather, consumers must assume that the products and services are offered in a package. As such, there was no similarity between products in Class 34 and "advertisement" and "retail services" in Class 35, as cigarette manufacturers did not usually operate the shops themselves. The court listed further examples, such as "pharmaceutical products" in Class 5 and "research and development of new medicine and medical preparations" in Class 42 and "medical services" in Class 44, or "products made from metal" in Class 6 and "maintenance and cleaning of buildings" in Class 37, which had not been considered to be similar, even though consumers might believe that these products and services could be offered together in a coherent manner.

With regard to the operation of a cigar lounge and products in Class 34, the court held that cigar lounges are dependent on the tobacco industry. As such, a cigar lounge would be an excellent way of advertising and selling the products in question. It could even be said that a cigar lounge amounted to a sales channel for these goods.

The court thus concluded that there was a likelihood that smokers would believe that cigar lounges and cigars bearing the same trademark originated from the same company. They would perceive the whole as a package offered by the manufacturer. As such, there was a similarity between cigars and the operation of a cigar lounge. The court remanded the case to the IGE, which must now decide whether the trademarks LA CASA DEL HABANO and CLUB PASSION HABANOS are confusingly similar.

The decision is interesting, especially as an earlier decision had held that "alcoholic beverages" in Class 33 and "restaurant services" in Class 42 were not similar. The court noted this decision and stated that, contrary to a cigar lounge, a restaurant offers a vast range of beverages to consumers, rather than primarily or only alcoholic beverages.

Marco Bundi, Meisser & Partners AG, Klosters 

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