OPPOSITION Nо B 3 093 686

 

Juul Labs, Inc., 1000 F St. NW, 8th Floor, 20004 Washington, United States of America (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Erag, 118-130 Avenue Jean Jaurès, 75171 Paris Cedex 19, France (applicant), represented by Cabinet Germain & Maureau, 12, Rue Boileau, 69006 Lyon, France (professional representative).

On 15/02/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 093 686 is partially upheld, namely for the following contested goods: Class 34: The complete class.
2.		European Union trade mark application No 18 055 019 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 055 019 FUUL (word mark), namely against all the goods in Classes 5, 30, and 34. The opposition is based on, inter alia,  European Union Trade Mark registrations No 12 477 791 for the word mark JUUL, and No 14 944 251, for the figurative sign , and United Kingdom trade marks No 3 359 620, 3 362 156, 3 386 842 and 3 394 108, all registered for the verbal sign JUUL. The opponent invoked Article 8(1)(b) EUTMR for all earlier rights, and Article 8(5) EUTMR only for its national trade marks.

Preliminary remarks:

With the end of the transitional period of Brexit by 31/12/2020, the United Kingdom ceased to be a Member State of the European Union. Hence, national UK marks cannot be anymore a valid basis of an opposition against a European Union trade mark application. Therefore the opposition based on Article 8(1)(b) EUTMR and Article 8(5) EUTMR is inadmissible concerning the invoked earlier UK rights No 3 359 620, 3 362 156, 3 386 842 and 3 394 108.

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. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registrations No 12 477 791 and No 14 944 251.

 

a) The goods

 

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

European Union Trade Mark registration No 12 477 791:

 

Class 34: Electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; electronic cigarette refill liquids; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes; refill cartridges sold empty for electronic cigarettes; electronic cigarette components in the nature of electronic nicotine inhalation devices comprised of electronic cigarette refill cartridges, electronic cigarette atomizers and refill liquid nicotine solutions distributed as a unit; electronic cigarette accessories, namely, electronic cigarette cases, electronic cigarette mouth guards and electronic cigarette adapters; electronic smoking devices; electronic nicotine inhalation devices; electronic cigars; electronic cigarette cartridges; electronic cigar cartridges; electronic cigarette liquids; electronic cigar liquids; cases and holders for electronic nicotine inhalation devices; electronic nicotine inhalation device refills; vaporizing devices for tobacco, tobacco products and tobacco substitutes; ampoules, cartridges and refill cartridges for electronic smoking devices and electronic cigarettes; parts and fittings for all the aforesaid goods; Nicotine-based liquid used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; liquid nicotine for use in electronic cigarettes; liquid nicotine refills for use in electronic cigarettes; electric vaporizers for the vaporization of tobacco; electronic vaporizers as an alternative to cigarettes.

European Union Trade Mark registration No 14 944 251:

Class 11: Electric vaporizers for the vaporization of herbal and plant matter for household purposes; apparatus for use in vaporising; parts, fittings and accessories for the aforesaid goods.

Class 34: Nicotine-based liquid, namely, liquid nicotine used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes; refill cartridges sold empty for electronic cigarettes; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of tobacco and other herbal matter; processed tobacco pods; pipe tobacco, namely, tobacco for use in electric vaporizers; tobacco, whether manufactured or unmanufactured; smoking tobacco, pipe tobacco, hand rolling tobacco, snus tobacco; tobacco sold in pods; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of tobacco and other herbal matter; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; electronic cigarette refill liquids; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes; refill cartridges sold empty for electronic cigarettes; electronic cigarette components in the nature of electronic nicotine inhalation devices comprised of electronic cigarette refill cartridges, electronic cigarette atomizers and refill liquid nicotine solutions distributed as a unit; electronic cigarette accessories, namely, electronic cigarette cases, electronic cigarette mouth guards and electronic cigarette adapters; electronic smoking devices; electronic nicotine inhalation devices; electronic cigars; electronic cigarette cartridges; electronic cigar cartridges; electronic cigarette liquids; electronic cigar liquids; cases and holders for electronic nicotine inhalation devices; electronic nicotine inhalation device refills; vaporizing devices for tobacco, tobacco products and tobacco substitutes; ampoules, cartridges and refill cartridges for electronic smoking devices and electronic cigarettes; parts and fittings for all the aforesaid goods; nicotine-based liquid used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; liquid nicotine for use in electronic cigarettes; liquid nicotine refills for use in electronic cigarettes; electric vaporizers for the vaporization of tobacco; electronic vaporizers as an alternative to cigarettes.

Class 35: Retail and wholesale services connected with the sale of electric vaporizers, electronic cigarettes, electronic cigarette refill liquids, tobacco substitutes, electronic nicotine inhalation devices, electronic cigarette accessories, cases and holders for electronic nicotine inhalation devices and electronic vaporizers as well as parts, fittings and accessories for the aforesaid goods.

The contested goods are the following:

Class 5: Pharmaceuticals for use in giving up smoking; pharmaceuticals for reducing or eliminating the desire to smoke; tobacco-free cigarettes for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; chemical preparations for medical or pharmaceutical purposes, namely tobacco substitutes for medical purposes, for incorporation into tobacco-free cigarettes.

Class 30: Food flavorings, other than essential oils.

Class 34: Smokers' articles, namely tobacco substitutes (not for medical purposes) and cigarettes containing tobacco substitutes, not for medical purposes, electronic cigarettes; parts and fittings for electronic cigarettes; cartridges for electronic cigarettes; tips for electronic cigarettes; reservoirs for electronic cigarettes (clearomisers); wicks for electronic cigarette reservoirs; electronic cigarette cases; portable charging cases for electronic cigarettes; liquids and flavourings for electronic cigarettes; fill liquids for electronic cigarettes; Kits for preparing personalised liquid flavourings for electronic cigarettes; shishas (hookahs); matches; cigars; cigarettes; cigarette paper; pipes; lighters for smokers; cigar boxes or cases; cigarette boxes or cases; ashtrays.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘namely’, used in the applicant’s and opponent’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.

 

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 pharmaceuticals for use in giving up smoking; pharmaceuticals for reducing or eliminating the desire to smoke; tobacco-free cigarettes for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; chemical preparations for medical or pharmaceutical purposes, namely tobacco substitutes for medical purposes, for incorporation into tobacco-free cigarettes purposes are pharmaceuticals and special substances containing herbs or other substances for medical purposes. These goods are not similar to the opponent’s electronic tobacco replacements, and other electronic smoking related goods in Class 34.

The aim of the goods in Class 5 is the opposite to the goods in Class 34. The contested goods will be consumed for health reasons, and also especially to quit smoking. The contested goods are primarily intended for sick people, convalescents, and people with health problems and for smokers who need medical support to quit the habit of smoking, whereas the opponent’s products are meant for clients who want to continue smoking but electronically. The producers of smoking articles do not have an interest in making people quit smoking, which is however the purpose of the goods in Class 5.

Their purpose is therapeutic and the composition of the contested goods is quite different from the composition of the earlier ones. Moreover, they are sold in different stores (pharmacies or in special health facilities versus tobacco shops or specialised sections in supermarkets), and are produced by different undertakings, namely pharmaceutical companies versus tobacco companies (31/08/2015, R 2231/2014-5, VT (FIG. MARK) / VT VEGA TORO (FIG. MARK) et al. § 11). These goods are neither in competition nor complementary. Furthermore, they have no other relevant points in contact – they have a different nature, purpose, distribution channels, different manufacturers and they are not in competition. The fact that they can coincide in their method of use, is not sufficient to create a similarity between them.

Therefore, and contrary to the opponent’s arguments, the goods under comparison are considered dissimilar to all the opponents goods and services.

Contested goods in Class 30

The contested food flavorings, other than essential oils are supposed to give food an additional, attractive taste. The earlier goods all relate to electronic smoking and to substituting tobacco. Hence these goods have no relevant points in contact – they have a different nature, purpose, distribution channels, different manufacturers and they are not in competition.

Therefore, and contrary to the opponent’s arguments, the goods under comparison are considered dissimilar to all the opponents goods and services.

Contested goods in Class 34

The contested smokers' articles, namely tobacco substitutes (not for medical purposes) and cigarettes containing tobacco substitutes, not for medical purposes; liquids for electronic cigarettes; fill liquids for electronic cigarettes; overlap with the opponent´s tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes and are hence identical.

The contested parts and fittings for electronic cigarettes; cartridges for electronic cigarettes; tips for electronic cigarettes; reservoirs for electronic cigarettes (clearomisers); wicks for electronic cigarette reservoirs; electronic cigarette cases; portable charging cases for electronic cigarettes; cigar boxes or cases; cigarette boxes or cases; cigarette paper; flavourings for electronic cigarettes; kits for preparing personalised liquid flavourings for electronic cigarettes are at least similar to the opponent’s electronic cigarette accessories, namely, electronic cigarette cases, electronic cigarette mouth guards and electronic cigarette adapters as they can have the same distribution channels, manufacturers and can also be complementary.

The contested electronic cigarettes are contained identically in both lists of goods.

The contested shishas (hookahs), pipes are included in the broad category of, or overlap with, the opponent’s nicotine inhalation devices. Therefore, they are identical.

The contested cigars are similar to the opponent’s electronic cigars as they have the same purpose. They usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested cigarettes are similar to the opponent’s electronic cigarettes as they have the same purpose. They usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The contested matches; lighters for smokers; ashtrays are similar to the opponent’s manufactured tobacco in Class 34 (of European Union Trade Mark registration No 14 944 251) as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

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 are directed at the general public. Although tobacco and other smoker’s products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke (and other smoker’s articles use), so a higher than average degree of brand loyalty and attention is assumed when tobacco and other smoker’s products are involved. Therefore, in the case of tobacco and other smoker’s products a higher degree of similarity of signs may be required for confusion to occur. 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

JUUL (EUTM No 12 477 791) (EUTM No 14 944 251)	FUUL
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 the stylisation of the figurative sign invoked is of a mere decorative nature, and the verbal element ‘JUUL’ is clearly recognisable, the Opposition Division will examine both earlier right together and refer to them as the earlier mark .

The earlier mark consists of the single verbal element ‘JUUL’. 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.

The contested sign is a word mark consisting of the single verbal element ‘FUUL’. The verbal element ‘FUUL’ is meaningless for the relevant public and therefore it is distinctive. Contrary to the arguments of the applicant, the Opposition Division does not deem it likely that the public would understand the word ‘FULL’ when perceiving the contested sign.

The earlier mark and the contested sign are rather short words, consisting of four letters respectively.

Visually, the signs coincide in their last three letters ‘UUL’ and differ in their first letters, namely ‘J’ in the earlier mark and ‘F’ in the contested sign. Visually, a difference of one letter – especially being the first one – may be important in these rather short signs. In the present case, apart from the fact that the letters consist of vertical lines, there is no similarity between ‘J’ and ‘F’. However, the conflicting marks have the visually characteristic and unusual double ‘UU’ in the middle, which will attract the consumers attention, and the same ending ‘L’.

Taking all this into consideration it is concluded that there is an average visual similarity between the marks.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘UUL’, present identically at the end of both signs. Phonetically, the difference between the mark applied for and the earlier mark ‘JUUL’ is that the first letter of the marks consists in the letter ‘J’ and ‘F’, respectively, both being consonants. In English, the pronunciation of the letters ‘J’ and ‘F’ is quite different. Still, all in all, the marks must be considered to be similar phonetically as ‘UUL’ is identical and not very common, and the fact that they both start with consonants, none of which is very prominent phonetically. ‘UUL’ will always be pronounced the same way, independently of the specific language, as the rules of pronunciation must be the same for the identical combination.

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

Conceptually, neither of the signs has a meaning in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 European Union trade 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.

 

e) 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).

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

In the present case, the goods are partly dissimilar, and partly similar and identical. The goods are directed at the public at large with a higher degree of attention.

The earlier mark is distinctive. The signs are visually and aurally similar to an average degree, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the  public as the signs are similar in spite of their different initial letters especially due to the uncommon combination of two letters ‘UU’ in the middle of both signs (see by also in this sense decision of the Boards of Appeal of 30/04/2009, Case R 1486/2007-1).

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 12 477 791, and No 14 944 251, JUUL. 

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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.

 

The opponent has also based its opposition on the following earlier trade mark:

 

EUTM registration No 17 930 880,  .

 

Since this mark  is almost identical to the ones which have been compared and covers additional goods such as ‘software’ in Class 9, ‘vaporizers’ in Class 11, and ‘retail and wholesale services’ in Class 35, services in Class 37 – ‘maintenance of electric vaporizers’, and ‘troubleshooting services’ in Class 42, which are clearly different to those applied for in the contested trade mark, therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those 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. 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

Marta Maria CHYLIŃSKA

Karin KLÜPFEL

Beatrix STELTER

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.