OPPOSITION No B 2 978 057

Haze Tobacco Spain. S.L., Plaza Cardona 11, 1º 2º, 08006 Barcelona, Spain (opponent), represented by Leggroup, C/ Campoamor 13, 1º, 28004 Madrid, Spain (professional representative)

a g a i n s t

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

On 06/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 978 057 is partially upheld, namely for the following contested goods:

Class 34: Hookahs and electronic hookahs and accessories thereof; 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; 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 17 068 701 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 17 068 701 for the word mark ‘HAZE’, namely against all the goods in Classes 4 and 34. The opposition is based on European Union trade mark registration No 10 144 145 for the word mark ‘HAZE TOBACCO’. 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.

1. The goods

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

Class 34: Tobacco; hookah tobacco.

The contested goods are the following:

Class 4: Candles; perfumed candles; scented candles; fruit candles; candles secreting the scent of shisha smoke; candles in tins; musk scented candles; charcoal.

Class 34: Hookahs and electronic hookahs and accessories thereof; 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; 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 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.

Contested goods in Class 4

The contested candles; perfumed candles; scented candles; fruit candles; candles secreting the scent of shisha smoke; candles in tins; musk scented candles are sticks of hard wax with a piece of string called a wick through the middle. These items are usually burned to give a steady flame that provides light or to release aromas for a pleasant ambience or for removing unpleasant odours. The contested charcoal is a black amorphous form of carbon made by heating wood or other organic matter in the absence of air and is usually used as a fuel. It is evident that these contested goods differ in their distribution channels and relevant consumers, as well as in their manufacturers, from the opponent’s tobacco goods in Class 34. In addition, they have different natures and methods of use and are not in competition with each other. Therefore, these goods are dissimilar.

Contested goods in Class 34

The contested cigarette tobacco; chewing tobacco; pipe tobacco; shisha tobacco; all the aforesaid goods not for medical purposes are included in the broad category of the opponent’s tobacco. Therefore, they are identical.

The contested tobacco products; all the aforesaid goods not for medical purposes overlap with the opponent’s tobacco and are also identical.

The word ‘tobacco’ is usually associated with ‘dried leaves which people smoke in pipes, cigars, and cigarettes’. However, the general public often refers to pipes, cigars and cigarettes as a whole as tobacco (information extracted from Collins Dictionary on 22/08/2018 at https://www.collinsdictionary.com/dictionary/english/tobacco). Given the broad scope that the word ‘tobacco’ covers, the contested cigars; small cigars; smoking pipes; all the aforesaid goods not for medical purposes overlap with the opponent’s tobacco and therefore they are considered identical. This finding has been further confirmed by the decision of 25/07/2013, R 0068/2013-1, § 12-15.

The contested tobacco substitutes, in particular those made out of tea and tea plants; cut and uncut tea for smoking as tobacco substitute; all the aforesaid goods not for medical purposes are considered similar to the opponent’s tobacco to the extent that they target the same public and will be distributed through the same channels. The goods have the same purpose and similar methods of use. Furthermore, they are in competition with each other, as the contested goods are substitutes for the opponent’s tobacco.

The contested smokers’ articles of all kinds, in particular matches; all the aforesaid goods not for medical purposes are considered similar to the opponent’s tobacco. These goods may be complementary to each other and, furthermore, they target the same public and are distributed through the same channels.

The contested shishas and accessories thereof; hookahs and accessories thereof; all the aforesaid goods not for medical purposes are oriental pipes for smoking, inter alia, tobacco, consisting of one or more long flexible stems connected to a container of water or other liquid through which smoke is drawn and cooled, as well as the accessories thereof. These goods are considered similar to the opponent’s hookah tobacco, since they have a certain degree of complementarity, namely hookah tobacco is smoked in hookahs and shishas. The goods usually target the same public and are available through the same sales outlets, in particular shisha/hookah and tobacco stores.

The contested electronic cigarettes; electronic cigars; electronic shishas and accessories thereof; electronic hookahs and accessories thereof; 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; all the aforesaid goods not for medical purposes are devices and articles used for artificial or synthetic smoking. In principle, these goods have the same general purpose, of smoking, and relevant public as the opponent’s tobacco. Furthermore, they are in competition. Therefore, they are considered similar to at least a low degree.

The contested inhalable aerosols and carrier substances therefor, for use in water pipes; substances for inhalation using water pipes, in particular aromatic substances; mineral carrier substances for flavorings, for use in water pipes; steam stones, in particular steam stones for water pipes; all the aforesaid goods not for medical purposes are considered similar to a low degree to the opponent’s hookah tobacco. The contested goods are various substitutes for tobacco that smokers may use when using water pipes (e.g. shisha or hookah pipes). These goods are, therefore, in direct competition with each other. They target the same public and may be distributed through the same channels.

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 and similar to various degrees are directed at the public at large, as well as at business experts in the field of tobacco and tobacco products.

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

HAZE TOBACCO	Haze
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 contested sign is the word mark ‘HAZE’. In the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial whether the contested sign is depicted in lower, upper or title case letters.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element, ‘HAZE’, will be understood by some parts of the public, in particular by the English speakers, as ‘light mist, caused by particles of water or dust in the air, which prevents you from seeing distant objects clearly’ (Collins Dictionary online). For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the coinciding element, ‘HAZE’, conveys a meaning, as explained above, thus increasing the likelihood of a link between the signs being established and confusion occurring. The word ‘HAZE’ is considered to have a normal degree of distinctiveness in relation to the goods in question.

The element ‘TOBACCO’ of the earlier sign will be perceived by the relevant consumers as described above in the comparison of the goods. Bearing in mind that the relevant goods are tobacco and tobacco-related products, this element is non-distinctive or at most weak for the goods in Class 34.

Visually and aurally, the signs coincide in the verbal element ‘HAZE’. They differ in the verbal element ‘TOBACCO’ in the earlier mark. Account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, given the limited distinctiveness or non-distinctiveness of the word ‘TOBACCO’ in the earlier mark, the word ‘HAZE’ will be the element that will primarily attract consumers’ attention. Therefore, the signs are considered visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, due to the distinctive element ‘HAZE’, the signs are conceptually highly similar or, under circumstances in which the word ‘tobacco’ is perceived as fully descriptive, identical.

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, despite the presence of a non‑distinctive or weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical and similar (to various degrees) and partly dissimilar; the degree of attention is likely to be high due to the brand loyalty that exists in relation to tobacco goods in Class 34. The earlier mark is considered to enjoy a normal degree of distinctiveness in relation to the goods in question.

The signs are visually, aurally and conceptually (at least) highly similar to the extent that the earlier mark entirely incorporates the verbal element ‘HAZE’, which constitutes the entire contested sign. Consequently, the presence of this coinciding element with an average degree of distinctiveness in both signs will be sufficient to outweigh the presence of the additional, non-distinctive/weak element, ‘TOBACCO’, in the earlier mark and lead to a likelihood of confusion, including a likelihood of association.

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.

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 high degree of similarity between the signs will be sufficient to counterbalance the low degree of similarity between some of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (even to a low degree) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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 Opposition Division

Monika CISZEWSKA

Manuela RUSEVA

Gueorgui IVANOV

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.