OPPOSITION No B 3 090 128

Ayman Shakmos Youssif, Rohrackerstr. 20, 70329 Stuttgart, Germany (opponent), represented by Patent- und Rechtsanwaltskanzlei Daub, Bahnhofstr. 5, 88662 Überlingen, Germany (professional representative)

a g a i n s t

European Hookah Tobacco Factory S.L., Plaza Presidente Adolfo Suarez 1, 10.1, 29620 Torremolinos, Spain and National Q For Tobacco Production Co., Alhasmiya, 8639 Alzarqa, Jordan (applicants).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 128 is upheld for all the contested goods.

2. European Union trade mark application No 18 042 001 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 18 042 001 (figurative mark). The opposition is based on the German trade mark registration No 3 020 162 121 576 ‘ABSOLEM’ (word mark). 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: Articles for use with tobacco; matches; tobacco; Hookahs.

The contested goods are the following:

Class 34: Articles for use with tobacco; Matches; Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Tobacco and tobacco products (including substitutes).

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.

Articles for use with tobacco; matches; tobacco are identically contained in both lists of goods.

The contested personal vaporisers is included in the broad category of, or overlap with, the opponent’s hookahs. Therefore, they are identical.

The contested tobacco products (including substitutes); flavourings and solutions therefor [personal vaporisers] are included in the broad category of, or overlap with, the opponent’s articles for use with tobacco. Therefore, they are identical.

The contested electronic cigarettes, and flavourings and solutions therefor are at least highly similar to the opponent’s articles for use with tobacco. They have the same purpose and methods of use, the same distributors and relevant public.

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.

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

ABSOLEM
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a word mark, ‘ABSOLEM’. A part of the public may perceive this word as the name of the smoking caterpillar in the book and movie ‘Alice in Wonderland’. However, for another part of the public, this word has no meaning. In any case, it has no clear meaning in relation to the relevant goods and is, therefore, distinctive.

The contested sign is a figurative mark, consisting of two figurative elements, one on top of the other. They are identical except for the colours; the one on top is in green, black and white and the one underneath in grey, black and white. On top in each of these two elements is the verbal element ‘ABSOLEM’ present in highly stylised upper case black letters, presented in a half circle. By part of the public, this word might be associated with the same meaning as in the earlier mark, especially in connection with the figurative element below. However, for a part of the public, it has no meaning at all. In any case, it is distinctive, as it has no meaning in relation to the relevant goods. The stylisation of the figurative element of the caterpillar or dragon (however perceived and even if it smokes) is distinctive as a whole, as it is not descriptive or otherwise weak for the relevant goods.

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

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).

Visually, the signs coincide in the distinctive verbal element ‘ABSOLEM’, present twice in the contested sign. However, they differ in the figurative elements of the caterpillars/dragons, which are distinctive, and in the high stylisation of the words in the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ABSOLEM’, even if present twice in the contested sign.

Therefore, the signs are aurally identical.

Conceptually, for the part of the public that perceives a meaning in the word ‘ABSOLEM’ as described above, the marks are conceptually identical.

However, for the part of the public in the relevant territory that will perceive only the meaning of the figurative element of the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

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.

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).

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.

In the present case, the goods are identical or at least highly similar. They are directed at the public at large with a higher than average degree of attention.

The signs are visually similar to an average degree and aurally identical. For a part of the public, the signs are conceptually identical, and for another part, they are not conceptually similar.

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).

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).

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 German trade mark registration No 3 020 162 121 576. It follows that the contested trade mark must be rejected for all the contested goods.

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

Katarzyna ZANIECKA

Lena FRANKENBERG GLANTZ

Martin INGESSON

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.