OPPOSITION No B 3 098 826

Zippo Manufacturing Company, 33 Barbour Street, 16701 Bradford, Pennsylvania, 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

Rincoe Technology Co., Ltd., 4401 Anda electronic industry Park, Xinhe Community, Fuhai Rd, Bao'an Dist, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 27/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 826 is partially upheld, namely for the following contested goods:

Class 34: Tobacco; cigarettes containing tobacco substitutes, not for medical purposes; cigarettes; electronic cigarettes; oral vaporizers for smokers; matches; lighters for smokers; flavourings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; cigars; liquid nicotine solutions for use in electronic cigarettes.

2. European Union trade mark application No 18 089 613 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 18 089 613 for the word mark ‘Vezo’. The opposition is based on European trade mark registration No 18 039 939 for the word mark ‘VAZO’. 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: Electronic cigarettes; liquid for electronic cigarettes; lighters for smokers.

The contested goods are the following:

Class 34: Tobacco; cigarettes containing tobacco substitutes, not for medical purposes; cigarettes; electronic cigarettes; pipe racks for tobacco pipes; cigarette cases; cigarette holders; mouthpieces for cigarette holders; tobacco jars; ashtrays for smokers; oral vaporizers for smokers; matches; matchboxes; lighters for smokers; cigarette filters; cigarette paper; flavourings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; cigars; liquid nicotine solutions for use in electronic cigarettes.

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.

Electronic cigarettes; lighters for smokers are identically contained in both lists of goods.

The contested oral vaporizers for smokers overlap with the opponent’s electronic cigarettes. They are therefore identical.

The contested flavourings, other than essential oils, for use in electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes are included in or overlap with the opponent’s liquid for electronic cigarettes. Therefore, they are identical.

The contested flavourings, other than essential oils, for tobacco are at least similar to the opponent’s liquid for electronic cigarettes, since the latter can also include flavourings for electronic cigarettes and therefore these goods have the same nature and purpose. Moreover, they are usually manufactured by the same companies and sold in the same outlets to the same relevant public.

The contested tobacco; cigarettes containing tobacco substitutes, not for medical purposes; cigarettes; cigars 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 are similar to the opponent’s lighters for smokers as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore they are in competition

The contested pipe racks for tobacco pipes; cigarette cases; cigarette holders; mouthpieces for cigarette holders; tobacco jars; ashtrays for smokers; matchboxes; cigarette filters; cigarette paper are articles and accessories used by smokers and parts of cigarettes and, contrary to the opponent’s opinion, have nothing in common with the opponent’s goods. Even though the goods in comparison could be bought in the same distribution channels by the same public (smokers), this would not be enough to find similarity between them. The natures and purposes of the goods are different, and they do not coincide in method of use. Furthermore, they are not in competition. They are therefore considered dissimilar.

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.

Although tobacco products are relatively cheap articles and electronic cigarettes are mass consumption products, 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 these 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.).

In the present case, the goods found to be identical and similar to varying degrees are directed at the public at large. The degree of attention will vary from at most average (for lighters for smokers or matches) to high (for the remaining goods), depending on the specialised nature of the goods, the frequency of purchase and their price and brand loyalty.

3. The signs and the distinctiveness of the earlier mark

VAZO	Vezo
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.

Both signs are word marks and in this case it is the word as such that is protected and not its written form, the use of title case letters is immaterial.

For a substantial part of the public in the relevant territory, the verbal elements ‘VAZO’ and ‘Vezo’ are meaningless and therefore distinctive to an average degree. This finding applies for instance to the Dutch-, French- and German-speaking consumers in the relevant territory. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in Belgium, France, Germany and the Netherlands, since these elements have no particular meaning for them and the likelihood of confusion for that part of the public may be higher.

Since the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory – and since the opponent did not claim enhanced distinctiveness – the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in their letters (and sounds) ‘V*ZO’, in their structures (two syllables) and in their lengths (four letters). They differ in their second letter and sound ‘A’ v ‘e’.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public 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.

4. Global assessment, other arguments and conclusion

As concluded above, the goods are partly identical, partly similar to varying degrees and partly dissimilar and target the public at large with a degree of attention varying from at most average to high.

The signs are visually and aurally similar to at least an average degree and it is not possible to compare them conceptually. The distinctiveness of the earlier mark is normal.

The signs coincide in three out of their four letters and their identical structures and rhythms create a similar overall impression.

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 higher degree of attention, like in the present case, need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Therefore, the difference in one letter in the middle of the signs is not sufficient to avoid a likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-, French- and German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 039 939 for the word mark ‘VAZO’. 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 identical and 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

Victoria DAFAUCE MENÉNDEZ

Sylvie ALBRECHT

Meglena BENOVA

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.