OPPOSITION Nо B 3 106 299

Zippo Manufacturing Company, 33 Barbour Street, 16701 Bradford, 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

V.F.P. France, 1-11 Rue Henri Becquerel, Immeuble le Vinci - Lot D7, 77290 Mitry-Mory, France (applicant), represented by Romain Viret, 136 Avenue des Champs-Elysées, 75008 Paris, France (professional representative).

On 14/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 299 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 120 415 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 and services of European Union trade mark application No 18 120 415 (figurative mark). The opposition is based on European Union trade mark registration No 18 039 939 ‘VAZO’ (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.

a) The goods and services

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 and services are the following:

Class 9: Electronic cigarette batteries; chargers for electronic cigarettes.

Class 34: Nicotine inhalers, not for medical purposes; electronic cigarettes; liquids for electronic cigarettes; electronic shisha pipes; electronic smoking pipes; liquids and flavourings for electronic cigarettes; electronic cigars; cartridges for electronic cigarettes; electronic cigarette atomizers; electronic cigarette cases; electronic cigarette lanyards.

Class 35: Wholesaling of nicotine inhalers, not for medical purposes, electronic cigarettes and liquids for electronic cigarettes; wholesaling of electronic shisha pipes, electronic pipes and flavourings for liquids for electronic cigarettes; wholesaling of electronic cigars, cartridges for electronic cigarettes, atomisers for electronic cigarettes, cases for electronic cigarettes and cables for electronic cigarettes; wholesaling of batteries for electronic cigarettes and chargers for electronic cigarettes; retailing of nicotine inhalers, not for medical purposes, electronic cigarettes, liquids for electronic cigarettes, electronic shisha pipes and electronic pipes; retailing of flavourings for liquids for electronic cigarettes, electronic cigars and cartridges for electronic cigarettes; retailing of atomisers for electronic cigarettes, cases for electronic cigarettes and cables for electronic cigarettes; retailing of batteries for electronic cigarettes and chargers for electronic cigarettes.

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 9

The contested electronic cigarette batteries; chargers for electronic cigarettes are similar to the opponent’s electronic cigarettes in Class 34 because they coincide in distribution channels, relevant public and producer. Moreover, they are complementary.

Contested goods in Class 34

Electronic cigarettes; liquids for electronic cigarettes (listed twice) are identically contained in both lists of goods (the latter in singular form in the opponent’s list of goods).

The contested flavourings for electronic cigarettes are included or overlap with the opponent’s liquid for electronic cigarettes. Therefore, these goods are identical.

The contested electronic shisha pipes; electronic smoking pipes; electronic cigars have the same purpose and method of use as the opponent’s electronic cigarettes. They also coincide in producer, distribution channels and relevant public. Moreover, they are in competition. Therefore, these goods are similar to a high degree.

The contested nicotine inhalers, not for medical purposes are similar to the opponent’s electronic cigarettes because they have a similar purpose and method of use. Moreover, they coincide in distribution channels and relevant public.

The contested cartridges for electronic cigarettes; electronic cigarette atomizers are parts of electronic cigarettes. Therefore, they are similar to the opponent’s electronic cigarettes because they usually coincide in producer, distribution channels and relevant public. Furthermore, they are complementary.

The contested electronic cigarette cases; electronic cigarette lanyards are accessories to electronic smoking articles. They are considered similar to the opponent’s electronic cigarettes because they are complementary and coincide in distribution channels and relevant public.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

The principles set out above in relation to retail services apply to the various services that revolve exclusively around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services, etc. (to the extent that these fall into Class 35).

Based on the above, there is at least a low degree of similarity between the contested wholesale and retail services in Class 35 and the opponent’s goods in Class 34.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with a professional knowledge or expertise.

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.).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs and the distinctiveness of the earlier mark

VAZO
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.

For a substantial part of the public in the relevant territory, the verbal elements ‘VAZO’ and ‘VAZE’ are meaningless and therefore distinctive to an average degree. This finding applies for instance to the Dutch- 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 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.

The figurative element depicting a flame above the letter ‘A’ in the contested sign alludes to the relevant goods and services, since these are all electronic cigarettes and their accessories and wholesale services. 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). Consequently, the figurative element has a low impact in the overall impression of the sign.

The two horizontal lines underneath the first and last letter of the contested sign are purely decorative and of no trade mark significance.

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

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 ‘VAZ*’. However, they differ in the last letters/sounds of the signs’ verbal elements, ‘E’ v ‘O’. They further visually differ in the figurative element and aspects of the contested sign.

Therefore, the signs are visually similar to an average degree and aurally similar to a an above-average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element in the contested sign as explained above, the other sign has no meaning in that territory.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to varying degrees. They target business customers and the public at large with a degree of attention that varies from average to high.

The signs are visually similar to an average degree, aurally similar to an above-average degree and conceptually not similar. The earlier mark has a normal degree of distinctiveness.

The first three out of four letters of the signs’ verbal elements are identical and placed in identical positions, namely at the beginning of the signs. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The differences between the signs are confined to the last letters of the verbal elements in both signs and a figurative element in the contested sign. All these differences have a lower impact, and consumers will not focus on them, as seen above. Even the conceptual distance created by the figurative element in the contested sign should not be given much importance, since this element is weak for the goods and services in question. Therefore, there is a likelihood of confusion.

The applicant claims that the signs are short or fairly short and therefore even small differences between the signs may lead to a different overall impression. It is true that 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. In the present case, the identical beginnings of the relatively short signs in fact create a similar overall impression, and consumers might overlook the verbal elements’ differing final letters. Therefore, the applicant’s claim must be set aside.

In addition, 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The previous cases referred to by the applicant are not relevant to the present proceedings. In 15/09/2000, B 760 662, ‘RIGA’ v ‘LIGA’, the differences between the signs lie in their first letter, which is the part consumers usually focus on when they encounter a mark. In 02/08/2011, R 926/2010-4, ASTAL / AOTAL, the substitution of the vowel ‘O’ by the consonant ‘S’ creates a significant difference in the initial parts of the signs. In 31/01/2020, B 3 067 621, ‘ASA-P’ v ‘APAP’, besides the different second letter, the signs also show significant differences in their structures. In 26/07/2019, B 3 062 503, ‘OXID’ v ‘OXIO’, the signs have, besides their differing last letter, a different number of syllables, the earlier mark being composed of two syllables and the contested sign of three. In 10/03/2016, R 591/2015‑5, CONE / CONTI, apart from the differing final letters, the earlier mark consists of four letters and the contested sign of five, which creates a different overall impression.

Based on the above, the applicant’s claim must be set aside.

The applicant further claims that the first two letters of the signs, ‘VA’, refer to the first two letters of the English verb ‘to vape/vaping’ which means ‘to breathe in nicotine as vapour rather than as smoke by using an electronic cigarette’, and that therefore these letters are frequently found in names designating goods and services related to electronic cigarettes. The applicant submits a list of trade marks containing the letters ‘VAP’ to this effect. This list is irrelevant to the present proceedings, since both trade marks start with ‘VA’ and not with ‘VAP’, as also correctly stated by the opponent.

Therefore, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Dutch- and German-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 18 039 939. It follows that the contested trade mark must be rejected for all the contested goods and services, even for the services that are similar to a low degree, based on the striking visual and aural similarities between the signs.

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

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.