CANCELLATION No 10055 C (INVALIDITY)

E-Hose Technologies LLC, 1373 Ridgeway Street, 91768 Pomona, California, United States (of America) (applicant), represented by Viering, Jentschura & Partner MBB, Grillparzerstraβe 14, 81675 München, Germany (professional representative)

a g a i n s t

Starbuzz Tabacco, Inc, 10871 Forbes Ave., 92843 Garden Grove, United States of America (CTM proprietor), represented by Kuhnen & Wacker Patent- Und Rechtsanwaltsbüro, Prinz-Ludwig-Str. 40A, Freising, Germany (professional representative).

On 14/03/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. Community trade mark No 12 280 715 is declared invalid for some of the contested goods, namely:

Class 34: Tobacco; Smokers’ articles; cigars; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; cigarillos; electronic cigarettes; chewing tobacco; snuff; tobacco; herbs for smoking.

3. The Community trade mark remains registered for all the remaining goods, namely:

Class 34: Matches; ashtrays for smokers; cigar cases; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; pocket machines for rolling cigarettes; cigar cutters; cigar holders; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco jars; tobacco pouches.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of Community trade mark No 12 280 715. The application is based on international trade mark registration designating the European Union No 1 189 952. The applicant invoked Article 53(1)(a) CTMR in conjunction with Article 8(1)(b) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that registration of the contested CTM is precluded as it is the owner of an identical sign that covers partly identical and partly similar goods.

The CTM proprietor disputes the applicant’s claims and asserts that all the goods at issue are clearly dissimilar when applying the relevant criteria. Moreover, the CTM proprietor argues that the goods for which protection is sought are in different classes and submits the Office’s decisions regarding the dissimilarity of goods in Classes 30 and 34. In view of this, the application for a declaration of invalidity should be rejected.

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) CTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) CTMR

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.

1. The goods

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.

Following a limitation from the basic application of the international trade mark, the Class 34 was cancelled. Therefore, the goods on which the application is based are the following:

Class 30: Chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes

The contested goods are the following:

Class 34:Tobacco; Smokers’ articles; Matches; Ashtrays for smokers; Cigar cases; Cigars; Cigarette cases; Cigarette filters; Cigarette tips; Cigarette paper; Books of cigarette papers; Cigarette holders; Cigarettes; Cigarettes containing tobacco substitutes, not for medical purposes; Pocket machines for rolling cigarettes; Cigarillos; Cigar cutters; Cigar holders; Electronic cigarettes; Gas containers for cigar lighters; Humidors; Firestones; Lighters for smokers; Tips of yellow amber for cigar and cigarette holders; Mouthpieces for cigarette holders; Absorbent paper for tobacco pipes; Tobacco pipes; Pipe cleaners for tobacco pipes; Pipe racks for tobacco pipes; Chewing tobacco; Snuff; Snuff boxes; Spittoons for tobacco users; Match boxes; Match holders; Matches; Tobacco; Tobacco jars; Tobacco pouches; Herbs for smoking.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 34

The contested electronic cigarettes and the applicant’s chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes are intended for the same public, and the former is indispensable for the use of the latter. Therefore, the goods are complementary. Furthermore, the goods at issue are sold through the same distribution channels and they are produced by the same undertakings. Therefore, they are highly similar.

The applicant’s chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes are used together with electronic cigarettes that do not burn and, therefore, do not produce smoke; however, electronic cigarettes can produce artificial smoke that visually resembles the smoke produced by the combustion of tobacco. The Cancellation Division is of the opinion that the opponent’s chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes have the same nature and purpose as the contested smoker’s articles within the broader meaning of articles intended for smoking. They can target the same public (smokers or smokers trying to reduce the number of traditional cigarettes smoked). Therefore, these goods are considered highly similar.

The contested tobacco; tobacco; cigars; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; herbs for smoking; cigarillos; chewing tobacco; snuff are all tobacco or tobacco substitutes. The contested goods can be in competition with the applicant’s chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes as they have the same method of use. Therefore, these goods are similar to a low degree.

The contested matches; matches; match boxes; match holders; lighters for smokers; gas containers for cigar lighters; humidors; firestones and the applicant’s chemical flavorings in liquid form contained within a cartridge used to refill electronic cigarettes have different natures and purposes and they are usually not produced by the same undertakings. The goods are not complementary or in competition. The fact that they may be found in the same retail outlets and that they target the same public is not sufficient to offset the differences between them. These goods are dissimilar.

The contested tobacco pipes; pipe racks for tobacco pipes; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes are tobacco-related goods that make up the final product. They have different natures and purposes and they are not produced by the same undertaking. They are not complementary. Therefore, these goods are dissimilar to the applicant’s goods.

The contested ashtrays for smokers; cigar cases; cigarette cases; cigarette holders; pocket machines for rolling cigarettes; cigar cutters; cigar holders; pipe cleaners for tobacco pipes; snuff boxes; spittoons for tobacco users; tobacco jars; tobacco pouches are accessories for cigars, cigarettes and tobacco. They have different natures and purposes and they are not produced by the same undertaking. They are not complementary. Therefore, these goods are dissimilar to the applicant’s goods.

2. Identity of the signs

E-HOSE	E-Hose
Earlier trade mark	Contested trade mark

The signs are identical. Both signs are word marks. In the case of word marks, it is the words themselves that are protected, and not the specific way in which they are written. Therefore, the fact that the earlier trade mark is written in upper case whereas the contested trade mark is mainly written in lower case is not relevant to the comparison of the signs.

3. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442 § 17 et seq.)

The goods are partly similar to varying degrees and partly dissimilar, and they are directed at the public at large. Furthermore, 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 similar (to various degrees) are directed at the public at large, that is smokers. The relevant public is considered to be particularly careful and selective, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved.

As to the distinctive character of the earlier mark, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, in the present case, the distinctiveness of the earlier mark must be seen as normal.

The signs are identical.

The CTM proprietor refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the CTM proprietor are not relevant to the present proceedings, the compared goods are different.

Conclusion

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partially well founded on the basis of the applicant’s international trade mark registration designating the European Union No 1 189 952.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be similar (to varying degrees) to those of the earlier trade mark. The application is not successful insofar as the remaining dissimilar goods are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Vít MAHELKA

Julie GOUTARD

Michaela SIMANDLOVA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.