OPPOSITION Nо B 3 101 386

 

Promotorzy Trading Spółka Z Ograniczoną Odpowiedzialnością Spółka Komandytowa, ul. Odrowąża 15, 03-310 Warszawa, Poland (opponent), represented by Agnieszka Plucińska, ul. Maratońska 33/52, 94-102 Łódź, Poland (professional representative) 

 

a g a i n s t

 

Worldwide Spirits Supply Inc., Palm Chambers, 197 Main Street., Tortola, British Virgin Islands, (applicant), represented by I. Elias & Co Llc, Platinum Crest, 18 Loizou Askani Street, 3110 Limassol, Cyprus (professional representative).

On 10/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 101 386 is upheld for all the contested goods, namely Class 34: tobacco products (including substitutes).

2.	European Union trade mark application No 18 103 606 is rejected for all the contested goods. It may proceed for the remaining goods.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 The opponent filed an opposition against some of the goods of European Union trade mark application No 18 103 606  (figurative mark), namely against some of the goods in Class 34 (i.e. tobacco products, (including substitutes)). The opposition is based on European Union trade mark registration No 17 922 319 for the figurative 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.

 

 

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 34: Cigarettes containing tobacco substitutes, not for medical purposes

 

The contested goods are the following:

 

Class 34: tobacco products (including substitutes).

The term ‘including’ used in the applicant’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested tobacco products (including substitutes) include, as a broader category or overlap with the opponent’s cigarettes containing tobacco substitutes, not for medical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The applicant claims that both companies are active within two different fields, having diverse consumer types in mind (i.e. that the opponent targets electronic cigarette users and that the applicant targets conventional tobacco users). The applicant also submitted some evidence in order to support its claim (i.e. some printouts from the opponent’s website and online articles). In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

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 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.).

c) The signs

 

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 earlier mark is a figurative mark composed of the verbal element ‘Selfie’ in coloured handwritten typeface within a circular white background. Several verbal elements are placed around the word ‘Selfie’, namely ‘liquid’, ‘SELF PREMIX LIQUID’ and ‘VIVO’, the latter within a circular black background. All these elements are depicted against a rectangular grey background. Contrary to the applicant’s arguments, the verbal element ‘Selfie’, due to its central position and bigger size, overshadows all the other verbal elements of the earlier mark, included the verbal element ‘VIVO’. Therefore it is considered to be the visually dominant verbal element of the earlier mark.

The verbal element ‘VIVO’ will be understood in some languages (e.g. Italian, Portuguese and Spanish) with the meaning of ‘alive’ while it has no meaning for another part of the relevant public. In any case, it is distinctive as it has no clear relation with the goods at issue. The other verbal elements (i.e. ‘liquid’, ‘SELF PREMIX LIQUID’) are English words referring to the characteristics of the goods at issue (i.e. Cigarettes containing tobacco substitutes, not for medical purposes), namely that they contain liquid substances or liquid mixes that consumers must do for themselves.

Therefore, for a part of the public (e.g. the English speaking public) these verbal elements are weak, while for another part of the public - perceiving these elements as meaningless- they are distinctive.

The verbal element ‘SELFIE’, included in both signs, is an English term meaning ‘photograph that you take of yourself, especially using a mobile phone’ which has become popular through the European Union and adopted in the majority of the languages of the European Union. For these reasons it will be understood by the vast majority of the relevant public. As it does no bear any meaning in relation to the relevant goods it is considered distinctive.

The contested sign is a figurative mark composed of the verbal element ‘Selfie’ vertically written within a violet background and a stylized letter ‘S’ made of small violet and grey squares within a grey and violet background. All these elements are within a rectangle made of concentric grey lines of darker and lighter shades.

Following the above considerations, the verbal element ‘SELFIE’ of the contested sign bears no direct link to the goods at issue and, therefore, it is distinctive to a normal degree, as is the case also with the representation of the letter ‘S’. However this letter will be merely perceived as the initial of the element ‘SELFIE’ reproduced on the right side. It is therefore the latter that will draw the consumers’ attention (17/03/2016, R 496/2015-1, M MASTIHA (fig.)/mastihashop VOYAGE TO THE EAST MEDITERRANEAN CHIOS MASTIHA Growers ASSOCIATION (fig.) et al. § 22).

Contrary to the applicant’s arguments, the contested sign has no element which can be considered more dominant than other elements, as both the stylised letter ‘S’ and verbal element ‘SELFIE’ have considerable sizes within the contested sign.

The stylization and colours of the signs’ verbal elements as well as the circular and rectangular backgrounds have a merely decorative purpose. Therefore they will have a reduced impact in the signs.

Furthermore, 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 verbal element ‘SELFIE’ which plays an independent and distinctive role in both signs. The signs differ in their additional verbal and figurative elements that, for the reasons explained above, have a minor impact on consumers. In fact, even if these additional verbal end figurative elements will not be ignored by the relevant public it will be the term ‘SELFIE’ that consumers will concentrate on.

Taking into account that the signs coincide in the verbal elements ‘SELFIE’ but that these two words have different typefaces and are accompanied by further visual elements that will not be completely disregarded, the signs are considered to be similar to a below average degree.

Aurally, at least part of the relevant public will pronounce only ‘SELFIE’ in the earlier mark, as this term clearly stands out and is easily separable from the rest (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Moreover consumers tend to shorten signs also for reasons of economizing on language (06/10/2015, T-61/14, icexpresso + energy coffee (fig.) / MIDNIGHT M X-PRESSO MONSTER ESPRESSO +ENERGY, EU:T:2015:750, § 56). However it cannot be excluded that another part of the relevant public could also pronounce other verbal elements of the earlier mark, such as the verbal element ‘VIVO’ or ‘LIQUID’. With respect to the contested sign, the only term that will be pronounced is ‘SELFIE’, as consumers will see the single letter ‘S’ as its initial letter.

Therefore the marks are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks are conceptually similar at least to an average degree since both refer to the concept of ‘SELFIE', which is not altered by the additional elements irrespective of whether they are understood or not by the relevant public.

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 public in the relevant territory. Therefore, contrary to the applicant’s arguments, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark (for a part of the public), as stated above in section c) of this decision.

 

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).

The signs are visually similar to a below average degree, aurally and conceptually similar at least to an average degree due to the coincidence in the distinctive and independent verbal element ‘SELFIE’.

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 undertaking or economically linked undertakings. In the present case, it highly conceivable that the relevant consumers even if displaying an higher degree of attention, will perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Currently it is common marketing practice to change, even extensively, the logo of a company as long as the distinctive element that makes the sign distinguishable or recognisable for consumers is preserved.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration no 17 922 319.

It follows from the above 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, 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

 

 

Kieran HENEGHAN

Angela DI BLASIO

María del Carmen COBOS PALOMO

 

 

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.