OPPOSITION No B 2 920 943

nextro GmbH, Bahnhof-Umgebung 17a, 6170 Zirl, Austria (opponent)

a g a i n s t

Wael Elhalwani, 10871 Forbes Ave., Garden Grove, California, 92843, United States of America (applicant), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro PartG mbB, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative).

On 20/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 943 is upheld for all the contested goods, namely:

Class 34: Tobacco products; Tobacco substitutes, in particular those made out of tea and tea plants; cut and uncut tea for smoking as tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers’ articles of all kinds, in particular matches; shishas and electronic shishas and accessories thereof; hookahs and electronic hookahs and accessories thereof; electronic cigarettes; cigars; small cigars; electronic cigars; electronic vaporizing smoking device; E-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes; smoking pipes; steam stones, in particular steam stones for water pipes; mineral carrier substances for flavorings, for use in water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances; all the aforesaid goods not for medical purposes.

2. European Union trade mark application No 16 812 216 is rejected for all the contested goods. It may proceed for the remaining, uncontested goods in Class 4.

3. The applicant bears the costs, fixed at EUR 320.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 812 216 for the word mark ‘BLACK LAVA’, namely against all the goods in Class 34. The opposition is based on European Union trade mark registration No 13 225 123 for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 34: Electronic cigarettes; Smokeless cigarette vaporizer pipes; Tobacco substitutes not for medical purposes; Chewing tobacco; Herbs for smoking; Snuff; Hookahs; Tobacco substitutes; Smoking tobacco; Tobacco; Articles for use with tobacco; Tobacco and tobacco products (including substitutes).

The contested goods are the following:

Class 34: Tobacco products; Tobacco substitutes, in particular those made out of tea and tea plants; cut and uncut tea for smoking as tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; smokers’ articles of all kinds, in particular matches; shishas and electronic shishas and accessories thereof; hookahs and electronic hookahs and accessories thereof; electronic cigarettes; cigars; small cigars; electronic cigars; electronic vaporizing smoking device; E-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes; smoking pipes; steam stones, in particular steam stones for water pipes; mineral carrier substances for flavorings, for use in water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances; all the aforesaid goods not for medical purposes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 tobacco products; tobacco substitutes, in particular those made out of tea and tea plants; cut and uncut tea for smoking as tobacco substitute; cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; cigars; small cigars; all the aforesaid goods not for medical purposes are identical to the opponent’s tobacco and tobacco products (including substitutes), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods and, as explained above, the term ‘in particular’ indicates that the goods that follow are only examples.

The contested smokers’ articles of all kinds, in particular matches; all the aforesaid goods not for medical purposes include, as a broader category, the opponent’s articles for use with tobacco. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested shishas and electronic shishas and accessories thereof; hookahs and electronic hookahs and accessories thereof; electronic cigars; electronic vaporizing smoking device; smoking pipes; all the aforesaid goods not for medical purposes are included in the broad category of the opponent’s articles for use with tobacco. Therefore, they are identical.

Electronic cigarettes are identically contained in both lists of goods.

The contested e-liquid for use in electronic smoking devices and electronic cigarettes, namely, refill liquid for electronic smoking devices and electronic cigarettes; all the aforesaid goods not for medical purposes and the opponent’s electronic cigarettes have the same distribution channels and points of sale, target the same consumers and, moreover, are complementary. Therefore, they are highly similar.

‘Water pipe’ is another name for ‘hookah’ and is an apparatus for smoking in which the smoke is drawn through a container of water or ice and cooled before inhaling. (information extracted on 19/09/2018 from Collins Dictionary and The Free Dictionary at https://www.collinsdictionary.com/dictionary/english/water-pipe and https://www.thefreedictionary.com/water+pipe). The contested steam stones, in particular steam stones for water pipes; mineral carrier substances for flavorings, for use in water pipes; inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances; all the aforesaid goods not for medical purposes are goods that are placed in hookahs for smoking or for their aroma. The contested goods and the opponent’s hookahs have the same distribution channels and points of sales, target the same consumers and, moreover, are complementary, as the contested goods are intended for use in the opponent’s hookahs (also referred to as ‘water pipes’). Therefore, the goods are highly similar.

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 highly similar are directed at the public at large. The degree of attention will vary from average to high, depending on the particular goods involved.

For example, 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.).

However in relation to certain other goods in Class 34, for instance articles for use with tobacco, that do not entail such brand loyalty or careful and selective purchase, the degree of attention will be average.

3. The signs

	BLACK LAVA
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 figurative mark contains the verbal element ‘LAVA’, depicted in black bold upper case letters, near standard, except that the letters ‘A’ are incomplete, having no horizontal bar; however, due to their inclusion in a sequence of Roman letters and also because this depiction of the letter ‘A’ is not uncommon, they will be clearly perceived as letter ‘A’s.

The verbal element ‘LAVA’, which is included in both signs, will be perceived by English speakers as referring to any extrusive igneous rock formed by the cooling and solidification of molten lava (information extracted from Collins Dictionary on 19/09/2018 at www.collinsdictionary.com/). ‘LAVA’ is a word that has very similar equivalents in other official languages in the relevant territory (e.g. ‘lave’ in French, ‘Lava’ in German, ‘lawa’ in Polish, ‘Laava’ in Estonian and ‘лава’ in Bulgarian). Therefore, it can be safely assumed that it will be understood throughout the relevant territory.

As the word ‘LAVA’ is not descriptive of any characteristic of the goods in question, it is distinctive.

With regard to the stylisation of the earlier mark, 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). In the present case, the verbal element of the earlier sign, ‘LAVA’, is more distinctive than its graphic depiction, which is of a purely decorative nature.

The contested sign is composed of the verbal elements ‘BLACK LAVA’. In general, it cannot be assumed that the entire relevant public understands English; however, the word ‘BLACK’ is a basic English word that indicates an essential colour. The meaning of the word will, therefore, be understood by the majority of the relevant public (07/12/2016, R 36/2016-2, HMR WHITE / White By: Cune (fig.), § 57, 58, with further references; regarding other colours, see 12/11/2008, T‑281/07, ECOBLUE / BLUE, et al., § 30; 29/06/2015, R 1677/2014-5, Pinktrotters / PINK et al., § 21).

The element ‘Black’ is likely to be perceived as having the meaning specified above. Bearing in mind that the relevant goods are mostly tobacco and smoking articles, the element ‘BLACK’ may refer to the type or colour of particular goods (e.g. tobacco products: black tobacco; cigarettes: black cigarettes; electronic cigars: black electronic cigars). Even though some of the relevant goods may not be typically bought because of their colour, they could still be considered part of a ‘black’ series or line of products. Therefore, the element ‘BLACK’ in the contested sign is considered weak.

Moreover, contrary to the applicant’s argument, the word ‘BLACK’ can also be associated with the colour of lava, as solid lava is black (information extracted on 19/09/2018 from http://volcano.oregonstate.edu/why-lava-different-colors); it is, therefore, merely an adjective that describes the word that follows it; consequently, the word cannot be seen as a significant point of conceptual difference between the signs, and the public is likely to attach more attention to the word that follows it, namely ‘LAVA’.

Visually, the signs coincide in the word ‘LAVA’. Moreover, this word is the only verbal element of the earlier mark and it is included in its entirety in the contested sign. However, the signs differ in the word ‘BLACK’ of the contested sign, which has no counterpart in the earlier mark, and in the slight stylisation of the earlier sign. These differing elements are weak, and consequently their impact on consumers’ perception is limited.

Therefore, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‛LAVA’, present identically in both signs. The pronunciation differs in the sound of the element ‛BLACK’ of the contested trade mark, which has no counterpart in the earlier mark. This differing element is weak; therefore, its impact is limited. The stylisation of the verbal element of the earlier sign is not subject to an aural assessment.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the elements of the marks. The signs refer to the same concept, that of lava, with the contested sign specifying the colour of the lava. Overall, the concept evoked by the coinciding distinctive words makes the signs highly similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are partly identical and partly highly similar to the opponent’s goods. The earlier trade mark is inherently distinctive to a normal degree. The relevant public is the public at large, displaying a degree of attention varying from average to high. The signs are visually and aurally similar to at least an average degree and conceptually highly similar. Even though the element ‘BLACK’ of the contested sign carries the concept of a colour, which is not present in the earlier mark, it cannot serve to distinguish the signs from one another, as it may refer to characteristics of the relevant goods. Moreover, it merely refines the concept of ‘LAVA’, as explained above, and therefore does not play an independent, distinctive role in the sign, being merely an adjective that describes the word that follows it.

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.

Therefore, the Opposition Division considers that, due to the visual, aural and conceptual similarities between the signs, originating from their coinciding distinctive elements, when consumers encounter the signs at different times, they may assume that the relevant goods come from the same undertaking or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The additional element ‘BLACK’ favours such a conclusion, as names of colours are used in the market as indications of product lines alongside the main brand, and therefore the contested goods could be seen as belonging to a new series or line of products marked with a variation of the opponent’s sign. This could apply to the goods that are highly similar, and even more so to the identical goods.

The applicant argues that there is no likelihood of confusion between the signs, since they differ in their initial parts. In support of his argument, the applicant quotes some decisions (28/02/2017, B 1 930 919, GOURMET (fig.)/BABY COURMET; 12/02/2018, B 2 825 514, GOURMET (fig.)/Dem’s Gourmet; 06/02/2014, B 2 181 736 dogs (fig.)/Rolling Dogs; 07/06/2012, B 1 888 729, real (fig.)/VIDA REAL).

The Opposition Division finds that the current case is not analogous to the cases the applicant refers to, as the signs in those cases have different levels of similarity resulting from the degrees of distinctiveness of the coinciding and differing elements. Therefore, the applicant’s arguments have to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 225 123. It follows from the above 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)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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 applicant is the losing party, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ewelina SLIWINSKA

Maria Slavova

Jakub MROZOWSKI

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.