OPPOSITION Nо B 3 115 110

 

Bio Hazard, Inc., 320 East 3rd Street, Suite A, 90013 Los Angeles, United States of America (opponent), represented by Regimbeau, 87, rue de Sèze, 69451 Lyon Cedex 06, France (professional representative) 

 

a g a i n s t

 

Tms International Corp, 1146 N Central Ave Suite 262, 91204 Glendale, United States of America (applicant), represented by Katarzyna Binder-Sony, Ul. Poznańska 23/6, 00-685 Warszawa, Poland (professional representative).

On 25/06/2021, the Opposition Division takes the following

 

 

DECISION:

1. Opposition No B 3 115 110 is upheld for all the contested goods.

2. European Union trade mark application No 18 193 505 is rejected in its entirety.

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

 

REASONS

 

On 30/03/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 193 505 BYO (word mark). The opposition is based on European Union trade mark registration No 11 832 912, . 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 the following:

 

Class 34: Glass pipes for smoking.

The contested goods are the following:

Class 34: Smoking pipes; Hookahs; Hookah parts and accessories, namely, hoses, vases, bowls, mouthpieces, bases, hose handles, mouth tips, molasses catcher, metal coal trays, clay bowls, funnel bowls, air valves, ash trays, tongs; Hookah accessories, namely, hose converter kits comprising of a hose adapter and hose.

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 list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

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.

 

The contested Smoking pipes include, as a broader category the opponent’s Glass pipes for smoking. 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 contested Hookahs; Hookah parts and accessories, namely, hoses, vases, bowls, mouthpieces, bases, hose handles, mouth tips, molasses catcher, metal coal trays, clay bowls, funnel bowls, air valves, ash trays, tongs; Hookah accessories, namely, hose converter kits comprising of a hose adapter and hose are similar to the opponent’s Glass pipes for smoking. All these goods are smoker’s articles, they have similar purpose, they may coincide in the manufacturer, distribution channels and consumers. Furthermore, the goods are highly 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 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.).

 

The degree of attention is therefore above average.

 

c) The signs

 

	BYO
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 element BIO in the earlier right is derived from the Greek ‘bios’, which means life, and is an element of many compound words which have a connection to the term ‘life’ (see judgment of 19 January 2005 in Case T‑387/03 (‘Bioknowledge’), at paragraph 20). With regard to foodstuffs and agricultural products, ‘BIO’ is a customary reference to organic farming. However, in the present case, considering the goods, it retains its meaning but is to be considered distinctive (29.04.2010, T-586/08, BioPietra, EU:T:2010:171, § 25 and DECISION OF 24 NOVEMBER 2014 – R 559/2014-5 – BYOTHEA (FIG. MARK) / Thea).

The gas mask hidden inside the letter B is a very small element and is hardly noticeable. If perceived with its meaning, it is considered distinctive, but secondary. The fanciful typeface is noticed but paid less attention. 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).

The letters BIO form the dominant part of the earlier mark.

The contested mark is a word mark BYO with no apparent meaning. It can not be ruled out, that some part of the public considers the letter Y equivalent to letter I, or perceives it as a misspelling, in which case the same meaning is perceived as in the earlier mark. In any event, the mark is distinctive.

Visually, the signs coincide in that they both contain three letters, start with letter B and end with letter O. The marks differ in the second letters I/Y, and in the typeface and figurative element of the earlier mark.

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

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 B and O, and in a majority of languages also in the sounds produced when reading the letters I/Y in such a position.

 

Therefore, the signs are aurally highly similar if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public that perceives both marks with the same meaning referring to BIO, the marks are conceptually highly similar, since the comparison is affected by the deafferenting meaning of the gas mask in the earlier mark.

For the remaining part of the public that perceives the meanings of the elements in  earlier mark as explained above, but the other sign has no 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) 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, the distinctiveness of the earlier mark must be seen as normal. 

 

e) Global assessment, other arguments and conclusion

 

The goods have been found partially identical and partially similar. The marks are visually similar to an average degree, aurally highly similar if not identical and conceptually either highly similar or not similar, depending on the perception of the relevant public. The words in both marks have been found distinctive.

Account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The earlier mark and the contested sign have been found to be visually similar to the extent that they have the letters B_ O in common in the same order. They differ visually in the letters I/Y in their middle, and in the figurative element, a small gas mask and fanciful typeface, of the earlier mark. Taking further into account that the signs are aurally identical for the majority of the public, these differences are likely to be overlooked and cannot outweigh the similarity provided by the coinciding letters/sounds in the same order in the distinctive elements. As noted, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. The similarities between the signs are thus sufficient to cause at least part of the public to believe that the conflicting goods – which are identical and similar – come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 832 912. It follows that the contested trade mark must be refused protection in respect of the European Union for all of 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

 

 

Gonzalo BILBAO TEJADA

Erkki MÜNTER

Aldo BLASI

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.