OPPOSITION No B 3 055 827

Innevape, LLC, 9718 Katy Drive, Unit B2, 34667, Hudson, United States of America (opponent), represented by Michael Ellis, 53/4 George Street, EH2 2HT, Edinburgh, United Kingdom (professional representative)

a g a i n s t

Flavour Warehouse Holdings Limited, Global Way, Darwen, Lancashire, BB3 0RW, United Kingdom (applicant), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, M3 2JA, Manchester, United Kingdom (professional representative).

On 02/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 827 is upheld for all the contested goods.

2. European Union trade mark application No 17 869 120 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 869 120 for the word mark ‘THE BERG’. The opposition is based on, inter alia, European Union trade mark registration No 17 874 073 for the word mark ‘THEBERG’. The opponent invoked Article 8(1)(a) and (b)EUTMR.

Preliminary Comment – The Priority Claim on the earlier EUTM

On 06/03/2018 the applicant of the present proceedings filed before the Office an application for registration for the word mark ‘THE BERG’.

On 13/03/2018, the opponent, claims priority of its earlier mark, based on the United States of America trade mark application No 87 805 642 for an identical sign. The priority date is 21/02/2018.

As the United States forms part of the Paris Convention and according to Article 4.A.(1) : ‘Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.’

According to Article 34 of EUTMR and as explained in Guidelines for Examination in the Office, Part B, Examination Page 39, ‘the substantive requirements of the priority claim will be examined when the outcome of the opposition or cancellation case depends on whether priority was validly claimed…’

In the present case, determining the validity of the priority claim of the earlier mark is essential (as the filing date of the contested mark is previous to the filing date of the earlier mark), and therefore the substantive requirements under Article 34 EUTMR have to be duly considered.

After a careful analysis of all the documents available to the Office, the Opposition Division finds that the priority claim has to be accepted as:

(i). - There is an identity of the marks (both are word marks and both are composed of the same verbal element)

(ii). - There is an identity in persons: both marks refer to the same owner.

(iii). - There is a partial identity of the goods covered by both marks. Indeed, the United States application is filed only for ‘electronic cigarette liquid comprised of vegetable glycerine and propylene glycol’.

Accordingly, the goods that will be taken into consideration as a basis of the present opposition are:

Class 34: Electronic cigarette liquid comprised of vegetable glycerine and propylene glycol.

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., as both earlier signs are composed of the same word element and have the same scope of protection, for economy of the proceedings the Opposition Division has decided to first examine the opposition in relation to the opponent’s European Union trade mark registration No 17 874 073.

a) The goods

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

Class 34: Electronic cigarette liquid comprised of vegetable glycerine and propylene glycol.

The contested goods are the following:

Class 34: Electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; flavourings, other than essential oils, for use in electronic cigarettes; electronic cigarette liquids; electronic cigarette liquid solutions containing nicotine; flavour essences for electronic cigarettes and electronic smoking devices; electronic cigarette atomizers; electronic cigarette cartomizers; nicotine-free liquid solutions containing flavourings for electronic cigarettes and electronic smoking devices; personal vaporisers and electronic cigarettes; electronic cigarette boxes; electronic cigarette cases; smokers' articles; parts and fittings for all the aforesaid goods

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 liquid nicotine solutions for use in electronic cigarettes; flavourings, other than essential oils, for use in electronic cigarettes; electronic cigarette liquids; electronic cigarette liquid solutions containing nicotine; flavour essences for electronic cigarettes and electronic smoking devices; nicotine-free liquid solutions containing flavourings for electronic cigarettes and electronic smoking devices; overlap with the opponent´s electronic cigarette liquid comprised of vegetable glycerine and propylene glycol. Therefore, they are identical.

The contested electronic cigarettes; electronic cigarette atomizers; electronic cigarette cartomizers; personal vaporisers and electronic cigarettes are, at least similar to the opponent´s electronic cigarette liquid comprised of vegetable glycerine and propylene glycol. They are complementary and share the same target public and producers.

The contested electronic cigarette boxes; electronic cigarette cases; smokers' articles and parts and fittings for all the aforesaid goods, encompasses various types of requisites for smoking. To that extent, the opponent’s goods have relevant commonalities with the opponent´s electronic cigarette liquid comprised of vegetable glycerine and propylene glycol. Specifically, they are directed at the same consumers who look for them in the same retail outlets. Furthermore, consumers could expect that such goods are manufactured under the control of the same entity. Therefore, the goods are at least similar to low degree.

b) 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.

In the present case, even if 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.).

c) The signs

THEBERG	THE BERG
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).

As both signs share the same letters and may potentially form the same words, their degree of distinctiveness is the same, irrespective of whether their meanings will be perceived or not by different parts of the public, and therefore it has no impact on the comparison.

Visually, the signs coincide in the verbal elements ‘THE’ and ‘BERG’. The only difference between the signs is the separation between the verbal elements ‘THE’ and ‘BERG’ that has no counterpart in the earlier mark.

As a consequence, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide in the pronunciation of all the words components, identically contained in both signs. Therefore, the signs are identical.

Conceptually, the signs are either identical or a conceptual comparison is not possible, depending on the perception of the coinciding elements ‘THE’ and ‘BERG’ by the relevant public (i.e. for part of the public might be perceived as the English determiner followed by a word used as a short for iceberg and for another part might be meaningless)

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

d) 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 average.

e) Global assessment, other arguments and conclusion

The goods in dispute are partly identical and partly similar to various degrees and target the public at large, displaying an above average degree of attention. The distinctiveness of the earlier mark is average.

The only difference in the signs lies in the space in the contested mark between the verbal components.. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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.

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 European Union trade mark registration No 17 874 073. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 17 874 073 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

Vanessa PAGE

Alexandra APOSTOLAKIS

Vít MAHELKA

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.