OPPOSITION Nо B 3 107 289

 

Ayr Ltd, 65a Hopton Street, SE1 9LR London, United Kingdom (opponent), represented by Origin Limited, Twisden Works, Twisden Road, NW5 1DN London, United Kingdom (professional representative) 

 

a g a i n s t

 

Airo Brands, Inc., 201 Edward Curry Avenue, 10314 Staten Island, United States of America (applicant), represented by LK Shields Solicitors LLP, 39/40 Upper Mount Street, 2 Dublin, Ireland (professional representative).

On 20/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 107 289 is rejected in its entirety.

 

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

 

REASONS

 

On 24/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 118 714 ‘airo’ (word mark). The opposition is based on EUTM registration No 12 619 763 (figurative mark), EUTM registration No 15 500 895 ‘AYR’ (word mark) and EUTM registration No 16 400 467 ‘VAPE AYR’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

EARLERI RIGHT EUTM No 12 619 763 - PROOF OF USE and CEASING OF EXISTENCE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected. The applicant requested that the opponent submit proof of use of European Union trade mark registration No 12 619 763 , on which the opposition is, inter alia, based.

On 22/09/2020 the opponent was given two months (until 27/11/2020) to file the requested proof of use.

 

The opponent did not submit any evidence concerning the use of the mentioned earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either. 

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR insofar as based on this earlier EUTM No 12 619 763.

Furthermore, in the present case, earlier trade mark No 12 619 763 was cancelled with decision C 44 950 of 08/12/2020 which is now final.

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

 

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5); […].

 

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

 

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR; […].

 

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

 

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

 

Therefore, in view of the above, the opposition must therefore also be rejected as unfounded, as the earlier mark ceased to exist.

The Opposition Division will continue to examine the opposition in relation to the remaining opponent’s rights, namely EUTM No 15 500 895 and EUTM No 16 400 467.

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 and services

 

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

 

EUTM registration No 15 500 895:

Class 34: Electronic cigarettes and personal vaporisers; liquids, capsules and cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers; cases for electronic cigarettes and personal vaporisers; mouthpieces for electronic cigarettes and personal vaporisers; e-liquid for electronic cigarettes and personal vaporisers; tobacco substitutes; electronic cigarettes as alternative to traditional cigarettes; tobacco free electronic cigarettes replacement cartridges for medical purposes; flavouring for electronic cigarettes; cases for charging electronic cigarettes and personal vaporisers; electric vaporisers for the vaporisation of tobacco and other herbal matter; parts, fittings and equipment for the aforesaid goods.

Class 35: On-line retail store services featuring e-cigarettes, vaporisers, cartridges of e-liquid and accessories; retail stores that bring together, for others, goods relating to electronic cigarettes and personal vaporisers, cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers, cases for electronic cigarettes and personal vaporisers, mouthpieces for electronic cigarettes and personal vaporisers, e-liquid for electronic cigarettes and personal vaporisers; management, organization, operation and supervision of an incentive reward program to promote sale of electronic cigarettes and accessories.

Class 39: Filling and packaging of e-liquid for electronic cigarettes and personal vaporisers.

Class 40: Manufacture of electronic cigarettes and personal vaporisers, cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers, cases for electronic cigarettes and personal vaporisers, mouthpieces for electronic cigarettes and personal vaporisers e-liquid for electronic cigarettes and personal vaporisers.

EUTM registration No 16 400 467:

Class 9: Batteries and other power sources for electronic cigarettes and personal vaporisers; computer software (downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfillment service.

Class 11: Apparatus for heating tobacco and tobacco products.

Class 34: Electronic cigarettes and personal vaporisers; liquids, capsules and cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers; cases for electronic cigarettes and personal vaporisers; mouthpieces for electronic cigarettes and personal vaporisers; e-liquid for electronic cigarettes and personal vaporisers; tobacco substitutes; electronic cigarettes as alternative to traditional cigarettes; tobacco free electronic cigarettes replacement cartridges for medical purposes; flavouring for electronic cigarettes; cases for storing as well as charging electronic cigarettes and personal vaporisers; electric vaporisers for the vaporisation of tobacco and other herbal matter; parts, fittings and equipment for the aforesaid goods.

Class 35: On-line retail store services featuring e-cigarettes, vaporisers, cartridges of e-liquid and accessories; retail stores that bring together, for others, goods relating to electronic cigarettes and personal vaporisers, cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers, cases for electronic cigarettes and personal vaporisers, mouthpieces for electronic cigarettes and personal vaporisers, e-liquid for electronic cigarettes and personal vaporisers; management, organization, operation and supervision of an incentive reward program to promote sale of electronic cigarettes and accessories.

Class 39: Filling and packaging of e-liquid for electronic cigarettes and personal vaporisers.

Class 40: Manufacture of electronic cigarettes and personal vaporisers, cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers, cases for electronic cigarettes and personal vaporisers, mouthpieces for electronic cigarettes and personal vaporisers e-liquid for electronic cigarettes and personal vaporisers.

Class 42: Research, design and development services relating to electronic cigarettes and personal vaporisers, cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers, cases for electronic cigarettes and personal vaporisers, mouthpieces for electronic cigarettes and personal vaporisers, e-liquid for electronic cigarettes and personal vaporisers; computer software (non-downloadable) for controlling and monitoring electronic cigarettes and personal vaporisers; computer software (non-downloadable) for enabling cartridges of e-liquid used in e-cigarettes to be ordered from an electronic-fulfillment service; computerized data storage services.

The contested goods are the following:

 

Class 34: Oral electronic vaporizers for the vaporization of herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Rechargeable oral electronic vaporizers for the vaporization of herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Disposable oral electronic vaporizers filled herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Pre-rolled combustible cigarettes containing CBD (Cannabidiol) and THC (Tetrahydrocannabinol) and herbal oils, plant matter and other non-nicotine tobacco substitutes for household smoking purposes; vaping cartridges containing Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils and herbal oils, plant matter and other non-nicotine tobacco substitutes for household smoking purposes specifically adapted for oral electronic vaporizers for vaping.

Contested goods in Class 34

The contested Oral electronic vaporizers for the vaporization of herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Rechargeable oral electronic vaporizers for the vaporization of herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Disposable oral electronic vaporizers filled herbal oils, Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils, plant matter and other non-nicotine tobacco substitutes for smoking or vaping purposes; Pre-rolled combustible cigarettes containing CBD (Cannabidiol) and THC (Tetrahydrocannabinol) and herbal oils, plant matter and other non-nicotine tobacco substitutes for household smoking purposes are included in the respective broad category of, or at least overlap with, the opponent’s Electronic cigarettes and personal vaporisers in Class 34, covered by both earlier marks. Therefore, they are identical.

The contested vaping cartridges containing Cannabidiol (CBD) oils, Tetrahydrocannabinol (THC) oils and herbal oils, plant matter and other non-nicotine tobacco substitutes for household smoking purposes specifically adapted for oral electronic vaporizers for vaping are included in the broad category of, or at least overlap with, the opponent’s cartridges of e-liquid, nicotine and non-nicotine substances used in e-cigarettes and personal vaporisers in Class 34, covered by both earlier marks. Therefore, they are identical.

 

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. The degree of attention is considered to be high. Indeed, although smoker’s 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 smoker’s products are involved. This has been confirmed by several Board of Appeal decisions (e.g. 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.). This reasoning is considered to extend by analogy to all the relevant goods which are related to smoking/vaping/inhaling.

c) The signs

AYR (1) EUTM No 15 500 895   VAPE AYR (2) EUTM No 16 400 467	airo
Earlier trade marks	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).

 

All marks are word marks and as such have no element(s) that could be considered clearly more dominant than other elements. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, in general, it is irrelevant if word marks are depicted in upper- or lower-case letters.

Earlier mark 1 contains the verbal element ‘AYR’ and earlier mark 2 contains the two verbal elements ‘VAPE AYR’. The element ‘AYR’ of the earlier marks has no meaning for the relevant public in the relevant territory and its inherent distinctiveness is normal. According to the applicant, ‘AYR’ is the name of a town situated on the south west coast of Scotland and this meaning will be understood throughout the EU. However, the Opposition Division does not find this likely, as the town of ‘Ayr’ is fairly small and is generally not known within the European Union. Therefore, it is considered that the vast majority of the relevant public will not associate ‘AYR’ of the earlier marks with any particular meaning and even if a small part of the public associates it with the mentioned meaning, its inherent distinctiveness is still normal, as it has no descriptive, non-distinctive or weak meaning in relation to the relevant goods.

The verbal element ‘VAPE’ of earlier mark 2 will be perceived by the English-speaking part of the public as referring to ‘a device used for inhaling vapour containing nicotine and flavouring; inhale and exhale vapour containing nicotine and flavouring produced by a device designed for this purpose’ (extracted from LEXICO Powered by Oxford at https://www.lexico.com/definition/ vape). This element is non-distinctive in relation to the relevant goods (being essentially personal vaporisers, electronic cigarettes and cartridges thereof), as it merely refers to their relevant characteristics, such as their purpose and intended use. For the part of the public that will perceive the verbal element ‘VAPE’ as meaningless, its distinctiveness is normal.

The contested sign consists of the verbal element ‘airo’. In some languages, ‘airo’ has a certain meaning, in particular ‘an implement used to propel or steer a boat’ in Finnish and ‘a type of seabird’ in Portuguese (‘the most frequent variety of murre’). However, ‘airo’ has no specific meaning in the remaining relevant territories. Whether understood or not, the term ‘airo’ included in the congested sign has no descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods.

Visually, earlier mark 1 and the contested sign coincide in the letters ‘A*R’ and differ in ‘Y’ of the earlier mark 1 and ‘I’ and ‘O’ of the contested sign. The signs coincide in their first and third letters but differ in their second letters ‘Y’ vs. ‘I’, and the fourth letter ‘O’ of the contested sign, which has no counterpart in the earlier mark 1. In the present case, the signs are relatively short and their length is different (three letters vs. four letters). The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Indeed, in the present case, in spite of the coincidence in the letters ‘A*R’, the differences in the remaining letters, especially in ‘Y’ of the earlier mark 1, which is quite noticeable, and is rather unusual in terms of its position within the word, as well the differences in ‘I’ and the additional final vowel ‘O’ of the contested sign, will not be overlooked in the visual perception of the signs. Therefore, the coincidence in two letters in the relatively short signs at issue should not be overestimated. The signs differ in their length, in their second letters and in the final fourth letter of the contested sign. Therefore, it is considered that earlier sign 1 and the contested sign are visually similar to a low degree, at best.

As to earlier mark 2, its structure is quite distinct from that of the contested sign (two relatively short words vs. one single word with four letters). In view of the different structure of the signs, the coinciding letters between them are barely noticeable, if at all, as they appear at entirely different positions within the signs. Although the word ‘VAPE’ of the earlier mark 2 is non-distinctive for a part of the public and it is likely to attract less attention as a trade origin identifier, it still introduces its visual impact in the beginning and in the layout of the earlier mark 2. Therefore, bearing in mind the different structure and length of the signs as well as the fact that the coinciding letters are lost within the signs and hardly identifiable therein, it is considered that the earlier mark 2 and the contested sign are not visually similar.

Aurally, the pronunciation of the signs is closest when the element ‘AYR’ of the earlier signs is pronounced in the same way as ‘air*’ of the contested sign ‘airo’. The pronunciation of the signs differs in the sound of the letters of the additional verbal element ‘VAPE’ of earlier mark 2 and in the vowel sound of the final letter ‘O’ of the contested sign. However, even in that closest possible pronunciation scenario, the degree of aural similarity between the signs (earlier mark 1 and the contested sign) is not more than average. This is because the length of pronunciation is still different and, as explained above, since the signs are relatively short, even small differences may frequently lead to a different overall impression. Consequently, in view of the above, it is considered that earlier mark 1 and the contested sign are aurally similar to a medium degree, at best.

As to earlier mark 2, in spite of the non-distinctive character of ‘VAPE’ for a part of the relevant public, this element will be pronounced and it appears at the beginning of the sign, thereby blurring the aural coincidence between ‘AYR’ of the earlier mark 2 and ‘air*’ (of ‘airo’) of the contested sign. In addition, the length of pronunciation of earlier mark 2 and the contested sign is considerably different and the aural ‘coincidences’ appear at different positions within the signs. Therefore, although ‘AYR’ of earlier mark 2 and ‘air*’ (of ‘airo’) of the contested sign will be aurally identical for a part of the public, the length of pronunciation is quite different. The structure of the syllables of earlier mark 2 and of the contested sign is quite distinct and the aural ‘coincidences’ are lost within the signs, as they appear at different positions. Consequently, in view of the above, it is considered that earlier mark 2 and the contested sign are aurally similar to a very low degree, at best, if at all.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of the marks. Part of the public, in particular the Finnish and the Portuguese-speaking public will associate the contested sign with a meaning, whereas the remaining part of the public will not attribute any particular meaning to it. Earlier mark 1 is meaningless for the great majority of the relevant public or has a (different) meaning (if ‘AYR’ is associated with a town). Earlier mark 2 will be seen as meaningless by a part of the public or will be associated with a (different) concept on account of ‘VAPE’ by the English-speaking part of the public. Nevertheless, it should be taken into account that ‘vape’ is of non-distinctive character and the impact of this conceptual difference is not to be overestimated.

Therefore, for the public that will associate at least one of the signs with a meaning, the signs are not conceptually similar. This is because at least one of the compared signs will have a different concept that is either not found, or is different from that, in the other sign.

For the remaining part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and 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 marks

 

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 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, earlier trade mark 1 as a whole has no meaning for the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of earlier mark 1 must be seen as normal. In relation to earlier mark 2, as a whole, it has no meaning in relation to the goods, despite the presence of a non-distinctive element in the mark as regards part of the relevant public, as stated above in section c) of this decision. Therefore, the distinctiveness of earlier mark 2 must be seen as normal as well.

 

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 are identical to the opponent’s goods. The relevant goods are directed at the public at large and the degree of attention is high. The degree of distinctiveness of the earlier marks is normal.

The earlier trade mark 1 and the contested sign are visually similar to a low degree, at best and they are aurally similar to a medium degree, at best. Earlier mark 2 and the contested sign are not visually similar and they are aurally similar to a very low degree, at best, if at all. Depending on the understanding of the marks by the relevant public, the signs are not conceptually similar, or the conceptual aspect does not influence the assessment of the similarity of the signs.

The earlier marks and the contested sign are similar insofar as they have the letters ‘A*R’ in common, and due to the aural coincidence between ‘AYR’ of the earlier marks and ‘air*’ of the contested sign, for a part of the public, as explained above.

However, considering that earlier mark 1 is a short sign, consisting of only three letters, and that the contested sign is also relatively short (four letters), the coincidences between earlier mark 1 and the contested sign are not sufficient to induce a likelihood of confusion on the part of the highly attentive public, in spite of the identity of the goods. Even if the signs may be visually similar to a low degree (at best) and aurally similar to a medium degree (at best), for a part of the consumers, the level of similarity is not sufficient in the present case to lead to confusion between the signs, which are in addition not conceptually similar, or a conceptual link will not be established between them, as they are conceptually neutral.

With regard to earlier mark 2, its structure, beginning and overall length differs from that of the contested sign. The presence of the additional ‘vape’ in front of ‘ayr’, albeit non-distinctive for a part of the public, blurs any existing similarities between the signs in question. In the most favourable scenario, only a very low degree of aural similarity was established between the signs. In the absence of any visual similarity, and as the signs are not conceptually similar, or they are conceptually neutral, it is considered that the differences between the earlier mark 2 and the contested sign 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 identical goods.

In the present case, the Opposition Division recalls and highlights that the degree of attention is high since the relevant consumers are particularly careful and selective about the brand when choosing the relevant goods. Even considering that consumers only rarely have the chance to make a direct comparison between the different marks, the differences in the signs are significant and sufficient to exclude any likelihood of confusion between the marks, including the likelihood of association.

Consequently, it can be concluded that the differences between the signs are striking enough to rule out any likelihood of confusion between the signs. Therefore, a likelihood of confusion, including a likelihood of association, on the part of the relevant public can be safely excluded in spite of the identity of the goods.

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 also in relation to the opponent’s EUTM No 15 500 895 and EUTM No 16 400 467.

 

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

 

 

Justyna GBYL

Liliya YORDANOVA

Anna PĘKAŁA

 

 

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.