OPPOSITION No B 2 478 280

HBI Europe GmbH, Koepestr. 17, 41812 Erkelenz, Germany (opponent), represented by Geskes Patent- und Rechtsanwälte, Gustav-Heinemann-Ufer 74b, 50968 Cologne, Germany (professional representative)

a g a i n s t

Shenzhen Nokan Technology Co., Limited, Building 6, Xinxintian Industrial Park, Xinsha Road, Shajing Street, Shenzhen, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 01/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 478 280 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 905 601. The opposition is based on Community trade mark registration No 3 835 774. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – 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 goods on which the opposition is based are the following:

Class 34: Cigarette papers; books of cigarette papers; hand operated machines for making cigarettes by rolling, pocket machines for rolling cigarettes; tobacco; leaf tobacco, raw tobacco, smoking tobacco, chewing tobacco; tobacco pouches, holders for tobacco, containers for tobacco, tobacco boxes not of precious metal.

The contested goods are the following:

Class 34: Cigarette cases; ashtrays for smokers; matches; lighters for smokers.

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.

The contested goods may have the same end users and distribution channels as the opponent’s tobacco. They are also complementary. Therefore, they are considered similar.

2. The signs

JUICY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The contested sign is a composite sign, consisting of both word and figurative elements in black and white. It consists of a circle that contains the verbal element ‘100% Ejuice’ in the middle. Above this verbal element are the words ‘PREMIUM EJUICE’, written in smaller letters. Below ‘100% Ejuice’ are the words ‘ULTIMATE VAPOUR’, also written in smaller letters. The mark contains some figurative elements, namely depicting a crown and some sort of crest. The earlier sign is a word mark, ‘JUICY’.

Visually, the signs are similar to the extent that they coincide in the letters ‘JUIC’. However, they differ in the letter ‘Y’ at the end of the earlier mark and in the other elements present in only the contested mark.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘juicy’ and the contested sign as ‘100% Ejuice premium ejuice ultimate vapour’.

The pronunciation of the signs coincides in the sound of the letters ‛JUIC’, present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the letter ‘Y’ of the earlier mark and in the other word elements present in only the contested sign.

Conceptually, the public in the relevant territory with a good command of English will perceive the earlier sign as ‘full of juice’ (information extracted from Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english/juicy). The contested mark will be associated with various meanings: the element ‘100%’ will be understood as ‘one-hundred per cent’; the words ‘ultimate vapour’ and ‘premium’ will be understood as laudatory references meaning ‘great value or regard’ (information extracted from Collins English Dictionary at http://www.collinsdictionary.com/dictionary/english/premium); ‘Ejuice’, which appears twice in the mark does not have a meaning as a whole, but the letter ‘E’ might be perceived as referring to ‘electronic’, and the word ‘Juice’ as such. The figurative elements will be perceived as a crown and a crest.

For the public with no understanding of the English language, the earlier mark has no meaning and, with regard to the contested sign, this part of the public will, at least, understand the well-known word ‘premium’ and ‘100%’.

The conceptual examination of the signs leads, finally, to two possible conclusions, which depend on whether or not the relevant public understands the meanings of the signs under comparison.

As mentioned above, the only similarity between the signs for English speakers is due to the element ‘Juice’ of the contested sign and the word ‘Juicy’ of the earlier sign.

For the rest of the public, the earlier mark will not be associated with any meaning. However, this part of the public will, at least, grasp the meaning of ‘100%’, the word ‘premium’ and the figurative elements of the contested sign. Therefore, the signs are not conceptually similar.

Taking into account the abovementioned coincidences, the signs under comparison are similar to a certain degree.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be considered clearly more distinctive or dominant than other elements.

The word ‘premium’, present in only the contested sign, is a laudatory reference to something excellent (e.g. it could be a description of the quality of a product), and owing to its widespread use and, in particular, to its extensive use in the marketing of various goods, it will be understood by most of the European public.

The expression ‘100% Ejuice’ is dominant in the visual impression created by the contested mark, because it is considerably larger than the other elements, although not to the extent that it completely overshadows these other elements.

4. 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 relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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. 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 are directed at the public at large.

Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective as to 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 between signs may be required for confusion to occur. This has been confirmed by several Board of Appeal decisions: decision of 26/02/2010, R 1562/2008-2 – ‘victory slims’, where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal, and decision of 25/04/2006, R 61/2005-2 – ‘Granducato’.

6. Global assessment, other arguments and conclusion

In comparing the marks, it is necessary to take into account the way the marks look, the way they will be pronounced and any meaning that they may have. It is well established that an overall assessment must be made, while bearing in mind the interdependence of the various criteria.

In the present case, the assessment is complicated by the fact that the mark applied for and the opponent’s earlier mark are of a fundamentally different nature. The opponent’s mark is a word mark, while the applicant’s mark is a composite mark consisting of verbal and figurative elements. The difficulty resides in the fact that, in this case, it is not possible to compare like with like. One thing, however, is clear: the presence of several word and figurative elements in the contested mark means that there is an appreciable visual difference between the marks. These elements are:

1. the verbal element ‘100% Ejuice’;

2. the verbal element ‘PREMIUM EJUICE’;

3. the verbal element ‘ULTIMATE VAPOUR’;

4. the depiction of a crown;

5. the use of a crest motif;

6. the circular arrangement of the elements;

7. the thick black rectangle in the centre, in which the verbal element ‘100% Ejuice’ appears.

It is sometimes argued that a word mark could be presented in any design whatsoever and, therefore, the earlier word mark has protection that extends to any arrangement in which the word mark may be placed. However, this argument is misconceived. It rests on a fundamental error with regard to the scope of protection of word marks. The basic rule is that a word mark may be used in any standard script or typeface. The scope of protection of a word mark is determined in the light of that rule. In assessing whether or not an earlier word mark is likely to be confused with a later figurative mark consisting of or containing a stylised word element, it is legitimate to proceed on the assumption that the earlier word mark might be used in any standard script or typeface. It would not, however, be fair, vis-à-vis the applicant, to base the comparison of such marks on the assumption that the opponent is free to imitate any figurative elements used in the applicant’s mark, including arbitrarily chosen, highly distinctive elements. Such an approach would distort the comparison and weigh unfairly in favour of the opponent.

In the applicant’s mark, the four figurative elements referred to above are, taken together, at least as distinctive and important as the word ‘Juicy’. They are sufficient to justify the finding that there is a strong visual difference between the marks. In addition, there are various differences in the verbal elements, as detailed above. Aurally, there is a low degree of similarity, due to the letters ‘JUIC’, which the signs have in common. Nevertheless, the contested sign contains more syllables. It is presumed that the expressions ‘PREMIUM EJUICE’ and ‘ULTIMATE VAPOUR’ will not be pronounced due to the relatively small letters used. Nevertheless, the rhythms and the intonations of the words will be different.

It is, therefore, unlikely that consumers will be confused by the presence of the coinciding letters in the marks (see above). Even if consumers were to see the two marks next to each other, the visual differences are so strong that they would not be likely to recognise in them the letters that they have in common and, as a result, would be unlikely to believe that the goods originated from the same undertaking or economically-linked undertakings, especially considering the reasonably high degree of attention of the relevant public.

In the context of Article 8(1)(b) CTMR, this minor coincidence is not sufficient for there to be a likelihood of confusion for similar goods and the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rhys MORGAN

Eamonn KELLY

Manuela MIEHLE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.