OPPOSITION No B 3 072 623

Zippo Manufacturing Company, 33 Barbour Street, 16701, Bradford, United States of America (opponent), represented by Squire Patton Boggs (US) LLP, Neue Mainzer Strasse 66-68, 60311, Frankfurt am Main, Germany (professional representative)

a g a i n s t

Deesan Technology Co. LTD, Room 801, Building 4,Tongtai times center, Fuhai street, Bao 'an district, 518000 Shenzhen, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 623 is partially upheld, namely for the following contested goods:

Class 34: Tobacco; cigarettes containing tobacco substitutes, not for medical purposes; pipe tobacco; cigarettes; herbs for smoking.

2. European Union trade mark application No 17 962 111 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 962 111  , namely against all the goods in Class 34. The opposition is based on European Union trade mark registration No 15 325 657 ‘ARMOR’. 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: Lighters for smokers.

The contested goods are the following:

Class 34: Electronic cigarettes; liquid solutions for use in electronic cigarettes; oral vaporizers for smokers; chewing tobacco; tobacco; cigarettes containing tobacco substitutes, not for medical purposes; snuff; cigarette tips; cigar cases; cigarette cases; ashtrays for smokers; pipe tobacco; cigarettes; herbs for smoking.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 opponent’s lighters for smokers are small devices that produce a flame and are used by smokers. The contested tobacco; cigarettes containing tobacco substitutes, not for medical purposes; pipe tobacco; cigarettes; herbs for smoking are all tobacco products or substitutes that are usually lit up in order to be smoked. Therefore, there is a complementarity between the contested goods and the opponent’s lighters for smokers. Furthermore, the goods in comparison coincide in distribution channels and relevant public. These are, therefore, considered to be similar.

The same connection, however, does not exist between the remaining contested goods and the opponent’s ones. The contested electronic cigarettes; liquid solutions for use in electronic cigarettes; oral vaporizers for smokers; chewing tobacco; snuff; cigarette tips; cigar cases; cigarette cases; ashtrays for smokers are articles used by smokers (however, chewed or inhaled without the use of lighters), parts for cigarettes (e.g. cigarette tips), or accessories for those (e.g. cigar cases; ashtrays for smokers), that are used for holding the tobacco product or serve as receptacles for ash. The complementarity mentioned above in the comparison in the previous paragraph does not exist here, as the goods in comparison are not indispensable or important for the use of the other. Even though the goods in comparison could be bought in the same distribution channels by smokers, this would not be enough to find similarity between them. The natures of the goods and their intended purposes are different and they do not coincide in method of use. Furthermore, they are not in competition. Their production processes require different know-how and technology and their usual origin is not the same and the consumer would not expect them to originate from the same manufacturer. It is, therefore, concluded that, contrary to the opponent’s claim, the goods in comparison are dissimilar.

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.

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.). On the other hand, depending on the price and the specifics some of the goods, such as lighters for smokers may trigger average level of attention.

In the present case, the goods found to be similar are directed at the public at large. The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price and brand loyalty.

c) The signs

ARMOR
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 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 elements ´ARMOR´ and ´MODS´ would carry a meaning for part of the relevant public, such as the English-speaking part. However, for part of the relevant public, such as the Bulgarian-, Lithuanian- and Spanish-speaking parts of the public these elements of the signs would not be perceived as carrying a particular meaning. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which these elements have no particular meaning as the likelihood of confusion for that part of the public may be higher.

As the elements ´ARMOR´ (present in both signs) and ´MODS´ (present in the contested sign) have no particular meaning, they are considered distinctive.

The figurative element of the contested sign has no particular meaning and it is therefore considered distinctive. However, it is noted that 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, the relevant public is likely to focus its attention more on the elements ´ARMOR MODS´ (than to the figurative depiction above it) and refer to the contested sign as ´ARMOR MODS´.

The contested sign has no element that could be considered clearly more dominant than other elements.

It follows that, conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the element ´ARMOR´, present identically in both signs. The signs differ in the element ´MODS´ and the figurative element of the contested sign, which have no counterparts in the earlier mark. A reference is made to the conclusions reached above regarding the distinctiveness of the elements of the signs.

The element ´ARMOR´ is the sole verbal element of the earlier mark and the first verbal element of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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, the fact that this is the sole verbal element of the earlier mark and the first verbal element of the contested sign is of material importance when analysing the similarity of the signs in comparison.

Following from the above, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ´ARMOR´, being the sole verbal element of the earlier mark and the first element of the contested sign. The pronunciation differs in the sound of the element ´MODS´ of the contested sign, which has no counterparts in the earlier mark.

It follows from the above that the signs are aurally similar at least to an average degree.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

As concluded above, the contested goods are partly similar and partly dissimilar to the opponent’s goods. The degree of attention will vary from average to higher than average when choosing the relevant goods. Furthermore, the earlier sign has an average degree of distinctiveness and the signs are found visually similar to an average degree and aurally similar at least to an average degree.

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.

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).

Taking into account that the signs coincide in the sole verbal element of the earlier mark, which is also present as the first verbal element of the contested sign, and also due to the addition of the second verbal element ‘MODS’ and the figurative depiction of the contested sign, it is likely that the relevant public would perceive the contested mark as a variation of the earlier sign, indicating a new line of goods, even when the level of attention is higher than average.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, that will not perceive a meaning in the elements of the signs and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 325 657. 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 similar 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

Loreto URRACA LUQUE

Irina SOTIROVA

Rasa BARAKAUSKIENE

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.