OPPOSITION Nо B 2 969 171

Virtue Vape LLC, 572 NW 23rd St, 33127 Miami, United States of America, Paul Kettlewell, 24 Tenter Lane, 56 2BE Heage, Derbyshire, United Kingdom (opponents), represented by Lunati & Mazzoni S.R.L., Via Carlo Pisacane, 36, 20129 Milan, Italy (professional representative)

a g a i n s t

Henry Alvarez, 8011 NW 14th St., 33126 Doral, Florida, United States of America, Mariano Cuesta, 8011 NW 14th St., 33126 Doral, Florida, United States of America (applicants), represented by PGA S.P.A., Via Mascheroni, 31, 20145 Milan, Italy (professional representative).

On 06/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 969 171 is upheld for all the contested goods.

2. European Union trade mark application No 16 751 604 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

On 03/10/2017, the opponents filed an opposition against all the goods of European Union trade mark application No 16 751 604 ‘FOOD FIGHTER JUICE’ (word mark), namely against all the goods in Class 34. The opposition is based on European Union registration No 16 539 348 ‘Food Fighter Juice’ (word mark). The opponents invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

a) The goods

The goods on which the opposition is based are the following:

Class 34: Liquid solutions for use in electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; electronic cigarette liquid [e-liquid] comprised of propylene glycol; electronic cigarette liquid [e-liquid] comprised of vegetable glycerin; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; flavourings, other than essential oils, for use in electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes.

The contested goods are the following:

Class 34: Flavorings for use in electronic cigarettes; electronic cigarette liquid [e-liquid] comprised of vegetable glycerin; electronic cigarette liquid [e-liquid] comprised of propylene glycol.

Electronic cigarette liquid [e-liquid] comprised of propylene glycol; electronic cigarette liquid [e-liquid] comprised of vegetable glycerin are identically included in both lists of goods.

The contested flavorings for use in electronic cigarettes include, as a broader category, the opponents’ flavorings, other than essential oils, for use in electronic cigarettes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponents’ goods.

b) The signs

Food Fighter Juice	FOOD FIGHTER JUICE
Earlier trade mark	Contested sign

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, the use of upper- or lower-case letter is irrelevant.

Therefore, the signs are identical.

c) Conclusion

The goods as well as the signs are identical.

Therefore, the opposition is well founded on the basis of the opponents’ European Union registration No 16 539 348 ‘Food Fighter Juice’ (word mark) and the opposition must be upheld under Article 8(1)(a) EUTMR. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.

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 applicants are the losing party, they must bear the opposition fee as well as the costs incurred by the opponents in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponents 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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.