ECLIPS | Decision 2533258 - Space Jam Juice, LLC v. Thierry CAI
Date Published: Oct 15, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 533 258
Space Jam Juice, LLC, 18001 Mitchell South, Irvine, California 92614, United
States of America (opponent), represented by Dehns, St Bride’s House, 10 Salisbury
Square, London EC4Y 8JD, United Kingdom (professional representative)
a g a i n s t
Thierry Cai, 23 Villa Curial, 75019 Paris, France (applicant), represented by Cabinet
Bouchara Avocats, 17 rue du Colisée, 75008 Paris, France (professional
representative).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 533 258 is partially upheld, namely for the following
contested goods:
Class 34: Electronic cigarettes; liquids for electronic cigarettes; Electronic
shisha pipes, electronic pipes, Mods (optimised electronic
cigarettes), Flavourings for liquids for electronic cigarettes or
personal vaporisers, Nicotine bases, electronic cigars.
2. European Union trade mark application No 13 857 792 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 857 792 (figurative). The opposition
is based on European Union trade mark registration No 13 148 994 ‘ECLIPSE’. The
opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 533 258 page: 2 of 7
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs and the relevant public.
a) The goods and services
The goods on which the opposition is based are the following:
Class 34: Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid
form used to refill electronic cigarette cartridges.
The contested goods and services are the following:
Class 5: Pharmaceutical and veterinary preparations; Tobacco-free cigarettes
for medical purposes; Sanitary preparations for medical purposes;
Foodstuffs and dietetic substances for medical or veterinary purposes;
Baby food; Dietary supplements for humans and animals; Plasters,
materials for dressings; Material for stopping teeth, dental wax; Bath
preparations for medical purposes; Sanitary pads and towels and
sanitary pants; Chemical preparations for medical or pharmaceutical
purposes; Medicinal herbs; Herbal teas for medicinal purposes; Alloys
of precious metals for dental purposes.
Class 34: Electronic cigarettes; liquids for electronic cigarettes; Electronic shisha
pipes, electronic pipes, Mods (optimised electronic cigarettes),
Flavourings for liquids for electronic cigarettes or personal vaporisers,
Nicotine bases, electronic cigars.
Class 35: Retailing and wholesaling of electronic cigarettes and tobacco-free
cigarettes for medical purposes; Presentation of goods on
communication media for retail purposes, in particular tobacco, cigars,
cigarettes, electronic cigarettes and tobacco-free cigarettes for
medical purposes.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other (‘Canon criteria’).
Contested goods in Class 5
The contested tobacco-free cigarettes for medical purposes are special cigarettes
containing herbs or other substances for medical purposes. These goods are not
similar to the opponent’s goods in Class 34. The contested goods are intended for
people with health problems and not for smokers (although these groups may
overlap). Their purpose is therapeutic and their natures and compositions differ from
those of the opponent’s goods in Class 34. The contested goods are principally sold
Decision on Opposition No B 2 533 258 page: 3 of 7
in pharmacies and, therefore, differ in their distribution channels from the opponent’s
goods. Moreover, they do not have the same manufacturers, since the contested
goods are produced by pharmaceutical companies and the opponent’s goods are
produced by tobacco companies. Therefore, contrary to the opponent’s argument,
the goods under comparison are considered dissimilar.
When comparing the remaining contested goods in Class 5 with the opponent’s
goods in Class 34, the Opposition Division finds them dissimilar. The contested
goods are in the pharmaceutical and sanitary fields, while those of the opponent are
in the tobacco field. Their natures, end users and methods of use are different.
Furthermore, these goods are not in competition with or complementary to each
other. Moreover, the origins of the goods, their relevant distribution channels and
their sales outlets are also completely different.
Contested goods in Class 34
Liquids for electronic cigarettes, flavourings for liquids for electronic cigarettes or
personal vaporisers are identically contained in both lists of goods (including
synonyms).
Nicotine bases are liquid nicotine solutions that are usually mixed with other liquids
for use in electronic cigarettes. These goods and the opponent’s electronic cigarette
liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette
cartridges can be produced and/or sold by the same undertaking and target the same
purchasing public. Therefore, these sets of goods can have the same producers and
relevant public. In addition, they are complementary. Therefore, they are similar to a
high degree.
The contested electronic cigarettes; electronic shisha pipes, electronic pipes, mods
(optimised electronic cigarettes), electronic cigars cannot be used without the
opponent’s electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form
used to refill electronic cigarette cartridges. These goods are complementary.
Furthermore, they target the same consumers, who will look for them in the same
retail outlets and could expect that such goods to be manufactured under the control
of the same entity. Therefore, they are similar.
Contested services in Class 35
Similarity between the retail and wholesale services of specific goods covered by one
mark and specific goods covered by another mark can only be found where the
goods involved in the retail services and the specific goods covered by the other
mark are identical.
The contested retailing and wholesaling of electronic cigarettes and tobacco-free
cigarettes for medical purposes and the opponent’s electronic cigarette liquid (e-
liquid) comprised of flavorings in liquid form used to refill electronic cigarette
cartridges in Class 34 are not similar. Apart from being different in nature, since
services are intangible whereas goods are tangible, they serve different needs. Retail
services consist in bringing together, and offering for sale, a wide variety of different
products, thus allowing consumers to conveniently satisfy different shopping needs at
one stop. The object of wholesale trade is similar, except that, in this case, the
relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02,
Praktiker, EU:C:2005:425). This is not the purpose of goods. Furthermore, goods and
services have different methods of use and are neither in competition nor
complementary.
Decision on Opposition No B 2 533 258 page: 4 of 7
The same ‘Canon criteria’ apply to the remaining services, presentation of goods on
communication media for retail purposes, in particular tobacco, cigars, cigarettes,
electronic cigarettes and tobacco-free cigarettes for medical purposes. These
services are provided by specialist companies, which study their client’s needs,
provide all the necessary information and advice for marketing the client’s goods, and
create a personalised strategy for advertising them through newspapers, web sites,
videos, the internet, etc. They are fundamentally different in nature and purpose from
the manufacture of goods. Therefore, they are dissimilar to the opponent’s goods.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are directed at the
public at large.
Although tobacco products are relatively cheap articles for mass consumption,
smokers are considered particularly careful and selective about the brand of
cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed
when tobacco products are involved. Therefore, in the case of tobacco products a
higher degree of similarity of signs may be required for confusion to occur. This has
been confirmed by several Board of Appeal decisions (e.g. 26/02/2010,
R 1562/2008-2, victory Slims (fig.) / VICTORIA et al., where it was stated that the
consumers of Class 34 goods are generally very attentive and brand loyal;
25/04/2006, R 61/2005-2, GRANDUCATO / DUCADOS et al.).
Consequently, the degree of attention will vary from average to high (e.g. in relation
to electronic cigarettes).
c) The signs
ECLIPSE
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier trade mark ‘ECLIPSE’ will be perceived by a part of the relevant public,
such as the English-, French-, Spanish- and Portuguese-speaking public, as ‘an
obscuring of the light from one celestial body by the passage of another between it
Decision on Opposition No B 2 533 258 page: 5 of 7
and the observer or between it and its source of illumination’ (information extracted
from Oxford Living Dictionaries on 28/09/2017 at
https://en.oxforddictionaries.com/definition/eclipse). The same can be said of the
verbal component in the contested sign for the Dutch-speaking part of the relevant
public. The abovementioned relevant public will understand the word of the other
sign, since it is very similar to the equivalent word in the official language in the
relevant territory.
Neither of the verbal elements has any meaning in relation to the relevant goods and
services; therefore, they are distinctive.
The contested sign has no elements that could be considered clearly more dominant
than other elements.
The figurative element in the contested sign is rather abstract and, moreover, when
signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived as ‘eclipse’ by a
significant part of the relevant public, the signs are conceptually identical.
Visually, the signs coincide in the letters ‘ECLIPS*’. However, they differ in the letter
‘E’ of the opponent’s trade mark and in the typeface and the figurative element of the
contested sign. In view of the above and also bearing in mind the lesser impact
attributed to the figurative element of the contested sign, as explained above, the
signs are visually highly similar.
Aurally, both signs will be pronounced identically in some of the languages of the
European Union, for example by the English-speaking part of the public. However,
the pronunciation of the signs coincides in the sound of the letters ‘ECLIPS’ and
differs in the sound of the last vowel ‘E’ of the contested sign in the other languages
of the European Union. For the part of the public speaking these languages, the
signs are aurally similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods in question from the perspective of the public in the
Decision on Opposition No B 2 533 258 page: 6 of 7
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
As concluded above, the contested goods and services are partly identical, partly
similar (to varying degrees) and partly dissimilar to the opponent’s goods.
The signs in conflict are conceptually identical, visually highly similar and aurally
identical for part of the public and aurally highly similar for the rest, as explained in
detail above in section c) of this decision. The relevant public’s degree of attention in
relation to the goods at issue may vary from average to high. However, even
consumers who pay a high degree of attention need to rely on their imperfect
recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Furthermore, the differences between the signs are not sufficient to counteract their
similarities, since the differences are confined to one letter of the opponent’s trade
mark and the figurative element of the contested sign, which has a limited impact on
the perception of the signs, as explained above.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s European Union trade mark registration
No 13 148 994.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar (to varying degrees) to those of the earlier trade
mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this article and directed at these goods and services cannot be
successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
Decision on Opposition No B 2 533 258 page: 7 of 7
The Opposition Division
Richard BIANCHI Carlos MATEO PEREZ Inés GARCÍA LLEDÓ
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.