OPPOSITION No B 2 919 929

Keyf GmbH, Grindelallee 150, 20146, Hamburg, Germany (opponent), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Vatansever Ev Aletleri Otomotiv Sanayi Ticaret Anonim Sirketi, Cihangir Mah. Petrol Ofisi C. Sehit J. Kom. Er Turan Selvi Sk. No: 6 Cevriye Balaban Is Merkezi Kat: 0-2 Avcilar, 34310 Istanbul, Turkey (applicant), represented by Durán - Corretjer S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).

On 25/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 919 929 is upheld for all the contested goods.

2. European Union trade mark application No 16 369 902 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 369 902 . The opposition is based on, inter alia, German trade mark registration No 302 016 208 397 . The opponent invoked Article 8(1)(b) EUTMR.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 016 208 397.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 34: Absorbent paper for tobacco pipes; flavourings for tobacco; flavored tobacco; flavorings, other than essential oils, for tobacco; humidifiers for tobacco; tobacco pouches; electronic hookahs; electronic smoking pipes; cases of precious metal for pipes; cases, not of precious metal for pipes; pipe racks for tobacco pipes; asian long tobacco pipe sheaths; japanese shredded tobacco (kizami tobacco); asian long tobacco pipes (kiseru); raw tobacco; smokeless tobacco; absorbent paper for tobacco; spittoons for tobacco users; tobacco; tobacco and tobacco products (including substitutes); roll-your-own tobacco; roll-your-own tobacco; roll-your-own tobacco; loose, rolling and pipe tobacco; tobacco tins; tobacco pouches; tobacco pouches; leaf tobacco; tobacco jars; tobacco substitutes; cigarettes containing tobacco substitutes; tobacco substitutes not for medical purposes; tobacco filters; tobacco free cigarettes, other than for medical purposes; tobacco pipes; tobacco pipes of precious metal; tobacco pipes (not of precious metal); absorbent paper for tobacco pipes; tobacco pipe scrapers; absorbent paper for tobacco pipes; pipe cleaners for tobacco pipes; hookahs; hookah tobacco; cigarettes containing tobacco substitutes, not for medical purposes.

The contested goods are the following:

Class 34: Tobacco, chewing tobacco, cigarettes, cigarillos, cigars, tobacco pipes, mouthpieces for cigarette holders; flavored organic mixtures including fruit coats and carpels replacing tobacco, herbs for smoking; ashtrays for smokers; electronic cigarettes, liquid solutions for use in electronic cigarettes, oral vaporizers for smokers; pocket machines for rolling cigarettes, books of cigarette papers, cigarette filters, cigarette papers; shisha pipes; firestones, 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.

Tobacco; tobacco pipes are identically contained in both lists of goods.

The contested chewing tobacco, cigarettes, cigarillos, cigars are included in the broad category of the opponent’s tobacco products (including substitutes). Therefore, they are identical.

The contested flavored organic mixtures including fruit coats and carpels replacing tobacco; herbs for smoking are included in the broad category of the opponent’s tobacco substitutes. Therefore, they are identical.

The contested liquid solutions for use in electronic cigarettes overlap with the opponent’s tobacco substitutes. Therefore, they are identical.

The contested oral vaporizers for smokers include, as a broad category, the opponent’s electronic smoking pipes. Therefore, they are identical.

The contested shisha pipes overlap with the opponent’s tobacco pipes. Therefore, they are identical.

The contested electronic cigarettes are electronic devices shaped like cigarettes that contain a liquid that is breathed in as steam rather than smoke. The opponent’s electronic smoking pipes are electronic devices shaped like pipes used for smoking a liquid that is breathed in as steam. Therefore, these goods are highly similar, as they have the same nature, purpose, method of use and distribution channels. Furthermore, they are in competition.

The contested mouthpieces for cigarette holders; pocket machines for rolling cigarettes; books of cigarette papers; cigarette filters; cigarette papers are similar to the opponent’s roll-your-own tobacco, as these goods usually have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested firestones; lighters for smokers; ashtrays for smokers are similar to a low degree to the opponent’s tobacco and tobacco products (including substitutes), as these goods can have the same relevant public and distribution channels. Furthermore, they can be complementary.

2. 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 to various degrees are directed at the public at large.

The degree of attention may vary from low (e.g. for firestones; lighters for smokers; ashtrays for smokers, which are relatively inexpensive goods that are often purchased on a frequent basis) to high (e.g. for cigarettes, cigarillos, cigars). In particular, 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. 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.).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a figurative sign consisting of a black rectangular background against which is a letter ‘K’ depicted in shades of gold and intersected through the centre by the word ‘KEYF’, depicted in standard white upper case letters. The stylised letter ‘K’, which is a fanciful duplication of the initial letter of the element ‘KEYF’, merely emphasises the beginning of that element. In addition, the black space in the central section of the stylised letter ‘K’ – which contains the word ‘KEYF’ – enhances, to some extent, the visual impact of this verbal element within the overall impression of the mark. Therefore, the mark has no element that is more dominant than other elements.

The contested sign is a figurative mark consisting of a red curved banner with a gold edge containing the verbal elements ‘GOLD KEYF’, depicted in white slightly stylised characters. Underneath this banner is a red shield with a gold edge containing the stylised white letters ‘VS’. All of these elements are equally visually important and one is not more dominant than any other.

The element ‘KEYF’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive.

The first word, ‘GOLD’, of the contested sign exists in German with the same meaning as in English, namely ‘a valuable, yellow-coloured metal’. Bearing in mind that the relevant goods are tobacco products, tobacco substitutes, smoking tools and smoking accessories, this element is weak. In particular, in respect of the goods consisting of or containing tobacco, the element ‘gold’ may be perceived as suggesting that these goods are gold in colour. Furthermore, in respect of all the goods, the same public may perceive the element ‘gold’ as alluding to the positive qualities of the goods (30/03/2016, R 1805/2015-2, GOLDEN GATE/GOLDEN GRAPE). Therefore, the degree of distinctiveness of the element ‘GOLD’ is limited.

The element ‘VS’ of the contested trade mark could be understood as an abbreviation of the Latin word ‘versus’, which refers to two opposing figures, ideas or choices. However, considering the specific meaning of this word and the relevant goods, it is reasonable to assume that this element will be perceived as meaningless by most of the consumers and therefore that it is distinctive.

Visually, the signs coincide in the element ‘KEYF’ and in the fact that it is depicted in white letters against a dark background; this element plays an independent distinctive role in both signs. However, they differ in the stylised ‘K’ of the earlier sign (although this letter is simply a reproduction of the first letter of the coinciding element ‘KEYF’) and in the first word, ‘GOLD’ (which has a limited degree of distinctiveness), and the element ‘VS’ of the contested sign, which have no counterparts in the earlier mark. The signs also differ in their graphical depiction and stylisation.

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).

Therefore, taking into account the abovementioned principles and assertions on the distinctive and dominant elements of the signs, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘KEYF’, present identically in both signs. However, the pronunciation differs in the sounds of the word ‘GOLD’ (which has a limited degree of distinctiveness) and the word ‘VS’ of the contested mark. The signs also differ in the letter ‘K’ of the earlier mark. However, this additional element has a limited effect on the aural comparison, as it is simply a reproduction of the sound of the first letter of the coinciding element ‘KEYF’.

Therefore, taking into account the abovementioned principles and assertions on the distinctive elements of the signs, the marks are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘GOLD’ of the contested sign and part of the public may perceive the meaning of the element ‘VS’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical and similar to various degrees. They target the public at large, whose degree of attention may vary from low to high. The distinctiveness of the earlier mark must be seen as normal.

The conflicting marks are visually and aurally similar to an average degree and are not conceptually similar.

In the present case, the signs coincide in the distinctive element ‘KEYF’, depicted in white letters against a dark background and playing an independent distinctive role in both signs. Conversely, they differ in, inter alia, the contested sign’s first word, ‘GOLD’. In this regard, it must be noted that, in general, consumers tend to focus on the beginning of a sign when they encounter a trade mark. However, this is not a fixed rule and the outcome depends on the specific circumstances of the case. Furthermore, it must be recalled that, if the elements in which the marks differ have a lesser degree of inherent distinctiveness than the coinciding element, this will increase the degree of similarity between the marks (06/03/2002, R 536/2001-3, (fig.) Shape of a bottle (NEGRA MODELO); confirmed in 15/02/2005, T‑169/02, Negra modelo, EU:T:2005:46). Given the abovementioned principle, it must be concluded that the initial, differing, word ‘GOLD’ of the contested mark, which is weak, has a limited impact of the differences between the signs. It follows that, in the present case, the relevant consumers’ attention will be focused mainly on the distinctive element ‘KEYF’ present identically in the marks.

Taking all of the above into account, the Opposition Division considers that the differences between the signs are incapable of outweighing the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical, highly similar and similar goods – and despite the higher than average degree of attention paid to some of the goods – is still likely to think that they originate from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to only a low degree, it must be kept in mind that evaluating likelihood of confusion also implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. In the present case, the average degree of similarity, visually and aurally, between the signs is sufficient to offset the low degree of similarity between some of the goods. In particular, the contested goods that are similar to only a low degree to the opponent’s goods (i.e. firestones; lighters for smokers; ashtrays for smokers) are also the goods to which the relevant public has been deemed to pay a low degree of attention. Consequently, the low degree of similarity between those goods is offset by the low degree of attention paid by the relevant public and the average degree of similarity, visually and aurally, between the signs. Therefore, the opposition is successful and the contested trade mark must also be rejected in relation to those goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 016 208 397. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier German trade mark registration No 302 016 208 397 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vita VORONECKAITE

Aldo BLASI

Paloma PERTUSA MARTÍNEZ

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.