OPPOSITION No B 3 080 294

Imperial Tobacco Limited, 121 Winterstoke Road, BS3 2LL Bristol, United Kingdom (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine’s Place, BS1 4UD Bristol, United Kingdom (professional representative)

a g a i n s t

Elda, Zrinskih 62, 35400 Nova Gradiška, Croatia (applicant), represented by Mladen Vukmir, Gramaca 2 L, 10000 Zagreb, Croatia (professional representative).

On 31/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 294 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 970 103 for the figurative mark , namely against some of the goods in Class 5 and all the goods in Class 34. The opposition is based on United Kingdom trade mark registration No 2 624 764 and international trade mark registration No 1 149 642, designating the European Union, both for the word mark ‘GV’. 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.

a) The goods

The goods on which the opposition is based in relation to both earlier marks are the following:

Class 34: Tobacco whether manufactured or unmanufactured; tobacco products; tobacco substitutes, not being for medicinal or curative purposes; hand rolling tobacco; cigarette papers, cigarette tubes, cigarette filters, pocket cigarette rolling machines, hand held machines for injecting tobacco into paper tubes; smokers’ articles and matches.

The contested goods are the following:

Class 5: Smoking herbs for medical purposes; tobacco substitutes for medical purposes.

Class 34: Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; cartridges for electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; chemical flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette atomizers; electronic cigarette cartomizers; electronic cigarette liquid [e-liquid] comprised of flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid [e-liquid] comprised of propylene glycol; electronic cigarette liquid [e-liquid] comprised of vegetable glycerin; electronic cigarettes; electronic cigars; electronic nicotine inhalation devices; flavourings, other than essential oils, for use in electronic cigarettes; inhalers for use as an alternative to tobacco cigarettes; liquid solutions for use in electronic cigarettes; oral vaporizers for smokers; refill cartridges for electronic cigarettes; smokeless cigarette vaporizer pipes; smoking sets for electronic cigarettes; tobacco tar for use in electronic cigarettes; tobacco and tobacco products (including substitutes); cigarettes, cigars, cigarillos and other ready-for-use smoking articles; flavourings for tobacco; loose, rolling and pipe tobacco; herbal molasses [tobacco substitutes]; herbs for smoking; pipes for smoking mentholated tobacco substitutes; snus without tobacco; snus with tobacco; snus; snuff without tobacco; snuff with tobacco; snuff; flavorings, other than essential oils, for tobacco substitutes; flavourings, other than essential oils, for tobacco; cigarettes containing tobacco substitutes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco free cigarettes, other than for medical purposes; tea for smoking as a tobacco substitute; cigars for use as an alternative to tobacco cigarettes; devices for heating tobacco for the purpose of inhalation; devices for heating tobacco substitutes for the purpose of inhalation; electronic cigarette boxes; electronic cigarette cases.

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.

Contested goods in Class 5

The contested smoking herbs for medical purposes; tobacco substitutes for medical purposes are plant material and its substitutes for smoking with medical benefits for the body. They have a completely different purpose from the opponent’s goods in Class 34, which exclude those being for medicinal or curative purposes. The goods in question are distributed through different channels and do not coincide in their producers. Moreover, they satisfy different needs, do not target the same relevant consumers and are neither in competition, nor complementary. Therefore, they are dissimilar.

Contested goods in Class 34

Some of the contested goods in this class are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above in Class 34. The examination of the opposition will proceed as if all these contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 deemed to be identical mainly target the public at large. 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.). The same, mutatis mutandis, applies to the electronic cigarettes and vaporisers, as well as their cartridges, liquids, refills, flavourings, etc., which satisfy the same needs. However, the degree of attention is considered to be average in relation to some of the smoking articles, such as matches, rolling machines or cases.

c) The signs

GV
Earlier trade marks	Contested sign

The relevant territories are the European Union and the United Kingdom.

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 marks are word marks consisting of two letters, ‘GV’. The applicant argues that the earlier marks are weak, since they are composed of two simple letters. However, as these letters do not convey any meaning for the relevant public in the relevant territories, nor do they constitute any abbreviation or acronym that might be meaningful in relation to the relevant goods in Class 34, the Opposition Division considers that they have a normal degree of inherent distinctiveness.

The contested sign is a figurative mark, consisting of the verbal elements ‘GLAM’ and ‘VAPE’, written in fairly standard upper-case letters, with a larger highly stylised two-character element in between, which may be perceived by the relevant consumers either as the letters ‘gV’ or the alphanumerical combination ‘8V’ or ‘9V’. Considering these possible perceptions of this element of the contested sign, it is appropriate to first examine the opposition in relation to the part of the public that will perceive the contested sign as portraying the highly stylised letters ‘gV’, as this part of the relevant public would be more likely to confuse the signs, given the commonality in the letters ‘GV’. This perspective therefore constitutes the opponent’s best-case scenario.

The verbal element ‘VAPE’ of the contested sign will be perceived by the English-speaking part of the public as referring to ‘an electronic cigarette or similar device; an act of inhaling and exhaling the vapour produced by an electronic cigarette or similar device’ (information extracted from LEXICO Powered by Oxford on 16/07/2020 at https://www.lexico.com/definition/vape). This element is non-distinctive in relation to some of the relevant goods, such as personal vaporisers and electronic cigarettes, as it merely refers to the nature of the goods. The distinctiveness of this element is seen as low for the remaining relevant goods which include cartridges, liquids, refills, flavourings, fittings and tobacco, etc. for vaporisers and electronic cigarettes, as it strongly alludes to the idea that these goods are intended to, or can, be used for/with vaporisers or electronic cigarettes.

The English-speaking part of the public will also perceive the verbal element ‘GLAM’ as short for ‘glamorous’, meaning ‘having glamour’ or ‘glamour’, meaning ‘an attractive or exciting quality that makes certain people or things seem appealing’ (information extracted from LEXICO Powered by Oxford on 16/07/2020 at https://www.lexico.com/definition/glam, https://www.lexico.com/definition/glamour). When perceived as such, it conveys a laudatory connotation in relation to the relevant goods, strongly alluding to their high quality, and is, therefore, very weak.

For the part of the public that will perceive the verbal elements ‘GLAM’ and ‘VAPE’ as meaningless words, both of them have an average degree of distinctiveness in relation to the goods in question. Given that part of the public, which will perceive the abovementioned meanings in the verbal elements ‘GLAM’ and ‘VAPE’, is more likely to confuse the signs due to their limited distinctiveness and, therefore, lesser impact of these elements, the Opposition Division will continue the assessment in relation to the English-speaking part of the public (which is the relevant public for both earlier marks), as it is the best light in which the opponent’s case can be examined.

The element ‘gV’ of the contested sign, as such, does not convey any meaning and, therefore, has an average degree of distinctiveness. Although it is composed of the first letters of the verbal elements ‘GLAM’ and ‘VAPE’, due to its central position, size and high degree of stylisation, it will be perceived as a separate element, playing an independent distinctive role in the overall composition of the contested sign, but not as a mere acronym for the remaining elements. Therefore, its distinctiveness is not affected by the limited distinctiveness of the elements ‘GLAM’ and ‘VAPE’ and, consequently, the element ‘gV’ is the most distinctive element of the contested sign. Moreover, the Opposition Division concurs with the opponent that this element can be considered dominant, due to its larger size and central position in the contested sign. However, contrary to the opponent’s assertions, the earlier marks, being short word marks with only one element, do not have any dominant elements.

Visually, the signs coincide in the letters ‘GV’, which constitute the entire earlier marks and the most distinctive element of the contested sign. However, the signs differ in the additional verbal elements ‘GLAM’ and ‘VAPE’, as well as in the stylisation of the element ‘gV’ of the contested sign.

The Opposition Division agrees with the opponent that the element ‘gV’ in the contested sign, due to its size and central position, will attract the consumer’s attention. However, in addition to the fact that this element incorporates the entire earlier marks, its high degree of stylisation, to the extent that the letter ‘g’ might not even be perceived as such at first sight, creates clearly perceptible visual differences and will definitely be noticed by the relevant consumers. In addition, the contested sign has two clearly perceptible verbal elements, which are not present in the earlier marks. Even taking into account the limited degree of distinctiveness of these elements, they still form part of the overall visual composition of the contested sign.

Moreover, the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, in short words even small differences may frequently lead to a different overall impression. Indeed, the Court has established the principle that in the case of word marks which are relatively short, even if two marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 54). Although the verbal element ‘gV’ can be recognised in the contested sign and is fully included in the earlier marks, ‘GV’, the contested sign is composed of three elements in total, one of which is highly stylised, and the composition of all these elements have clearly perceptible visual differences from the earlier word marks ‘GV’.

Bearing in mind that the earlier marks are short signs and that the overall impression and distinctiveness of the contested sign is to a large extent influenced by the specific graphic depiction of the element ‘gV’, the earlier word marks and the contested figurative sign are considered visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the letters ‘GV’ present in all the signs, constituting the entire earlier marks and one of three verbal elements of the contested sign. The pronunciation of the signs differs in the sounds of the additional verbal elements ‘GLAM’ and ‘VAPE’ of the contested sign, which have no counterpart in the earlier marks.

Although the elements ‘GLAM’ and ‘VAPE’ are not particularly distinctive (for the reasons explained above), they are clearly legible in the overall composition of the contested sign and there is no reason to assume that they would not be pronounced by the relevant consumers. The opponent claims that the contested sign will be pronounced as ‘GV GLAM VAPE’. However, bearing in mind that the public usually reads from left to right, it is more likely that the verbal element ‘GLAM’, which appears in the first position in the contested sign, will be pronounced first by the relevant consumers. As explained above, the element ‘gV’ plays an independent distinctive role in the contested sign and will not be immediately associated with the remaining verbal elements, or seen as an acronym thereof, especially taking into account that consumers usually perceive a sign as a whole and do not proceed to analyse its particular details. Consequently, it is reasonable to assume that the verbal elements of the contested sign will be pronounced in the same order as they are written, namely ‘GLAM GV VAPE’, when aurally referring to the contested sign. Since the contested sign is much longer than the two-letter earlier marks, the signs will have different rhythms and intonation when pronounced.

Considering all the above, as well as the fact that that the earlier marks are short marks, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements ‘GLAM’ and ‘VAPE’ of the contested sign. Although these elements are of limited impact due to their limited distinctiveness (for the reasons explained above), they are clearly perceptible and will be noticed and understood by the relevant public. However, the earlier marks will not be associated with any meanings. Therefore, the signs are conceptually not similar.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meanings for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally which implies some interdependence between the relevant factors, and, in particular, a similarity between the marks and between the goods and/or services. Accordingly, a lesser degree of similarity between the goods and/or 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).

The contested goods in Class 5 are dissimilar and the contested goods in Class 34 are deemed to be identical to the opponent’s goods, and they target the public at large with an average or higher degree of attention depending on the goods in question. The degree of distinctiveness of the earlier marks is normal.

The earlier marks and the contested sign are similar insofar as they have the letters ‘GV’ in common, which constitute the earlier marks in their entirety and is the most distinctive and dominant element of the contested sign. However, considering that the earlier marks are short signs, consisting of only two letters, the manner in which these coinciding letters are depicted in the contested sign, as well as the fact that the contested sign has two additional verbal elements (albeit of limited distinctiveness) are relevant factors to be taken into account when assessing likelihood of confusion.

As explained in detail in section c), the manner in which the contested sign is depicted and its overall composition differ from the earlier marks to such extent that the signs under comparison are visually similar to only a very low degree. Moreover, only a low degree of aural similarity was established between the signs due to the differences in their length, rhythm and intonation. In the absence of any conceptual link between the signs that could lead the public to associate them with each other, the clearly perceptible visual and aural differences are sufficient to exclude any likelihood of confusion, including likelihood of association, even taking into account the abovementioned principle of interdependence and even in relation to the goods that would require only an average degree of the relevant public’s attention. The same applies even more so to the goods in relation to which the degree of attention is higher, since, as already mentioned above, the relevant consumers are particularly careful and selective about the brand when choosing tobacco products.

The opponent refers to the principle 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). However, the similarities between the signs under comparison are insufficient to allow the assumption that the relevant consumers, seeing the contested sign in the absence of the earlier marks, in view of their only general recollection of marks, would be liable to be confused and think that the contested sign was the same as, or related to, the earlier marks.

Consequently, it can be concluded that the differences between the signs are striking enough to clearly outweigh their commonalities. Therefore, a likelihood of confusion, including a likelihood of association, on the part of the relevant public can be safely excluded, even assuming that the goods in Class 34 are identical.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, the Opposition Division points out that there is no need to compare the signs for the part of the public that will perceive the alpha-numerical combination ‘8V’ or ‘9V’ in the contested sign and the verbal elements ‘GLAM’ and ‘VAPE’ as meaningless, since the outcome would not be different. If there is no likelihood of confusion for those consumers who perceive the dominant element of the contested sign as ‘gV’ and the abovementioned verbal elements as of limited distinctiveness, a fortiori, there is no likelihood of confusion for those consumers who will perceive the dominant element in another way and the remaining verbal elements will have an average degree of distinctiveness, since the signs will be even more different for these consumers.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Rasa BARAKAUSKIENE

Christophe DU JARDIN

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.