OPPOSITION No B 2 317 793
Trompenburg Holdings B.V., Jonkheer Sixhof 21, 1241 CR Kortenhoef, The Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)
a g a i n s t
Nicoventures Holdings Limited, Globe House, 4 Temple Place, London WC2R 2PG, United Kingdom (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of European
Union trade mark application No
International trade mark registration No 839 255 designating Spain, Italy, Austria and Sweden
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case, the notice of opposition was not accompanied by any evidence regarding earlier international trade mark registration No 839 255 designating Spain, Italy, Austria and Sweden, on which, inter alia, the opposition is based.
Contrary to the opponent’s arguments submitted on 19/05/2017, on 08/04/2014, the Office sent a communication giving the opponent two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit was subsequently extended (following a request for an extension of the cooling-off period and a request to opt out) and expired on 03/05/2015. According to the Office practice in force at that time, the Office provided the opponent with an invitation to complete the opposition accompanied by an information sheet that contained guidance on the proceedings and the means of evidence. Specifically, it referred to the particulars to be proven if the earlier trade mark is other than an EUTM, which is the case for earlier international trade mark registration No 839 255.
As pointed out above, Rule 19 EUTMIR provides that, where an opposition is based on a right that is not a European Union Trade Mark, the opponent must submit evidence originating from the administration by which the mark was registered. In the present case, the earlier right was registered with WIPO. The competent administration for such an international registration is WIPO and not the EUIPO.
The opponent refers to some previous Office decisions, asserting that, in those proceedings, the opponent had received a formal request to provide evidence of the earlier rights, thus invoking the principle of legal certainty. The Opposition Division notes in that regard that the provisions of Rule 19 EUTMIR are clear about the requirements for substantiation of the opposition. Furthermore, pursuant to Rule 20(6), second sentence EUTMIR, the Office is not obliged to indicate the nature and type of the evidence necessary for completion of the opposition. Therefore, the opponent’s arguments in that regard are dismissed as unfounded.
The opponent submitted evidence regarding international trade mark registration No 839 255 designating Spain, Italy, Austria and Sweden on 19/05/2016, that is, only after the expiry of the abovementioned time limit.
According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 839 255 designating Spain, Italy, Austria and Sweden.
Therefore, the opposition will be examined in relation to the opponent’s Benelux trade mark registration No 751 926.
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.
PROOF OF USE
The applicant requested proof of use of the earlier mark. At this point, the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
The goods on which the opposition is based are the following:
Class 34: Tobacco; articles for smokers; matches.
The contested goods are the following:
Class 5: Imitation cigarettes, tobacco-free cigarettes, electronic cigarettes, all for medical use.
Class 34: Electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 5
The contested imitation cigarettes, tobacco-free cigarettes, electronic cigarettes, all for medical use are special cigarettes containing herbs or other substances for medical purposes. These goods are not similar to the opponent’s goods in Class 34. The contested goods are intended for people with health problems and not for smokers (although these groups may overlap). Their purpose is therapeutic and their natures and compositions differ from those of the opponent’s goods in Class 34. The contested goods are principally sold in pharmacies and, therefore, differ in their distribution channels from the opponent’s goods. Moreover, they do not have the same manufacturers, since the contested goods are produced by pharmaceutical companies and the opponent’s goods are produced by tobacco companies. Therefore, contrary to the opponent’s argument, the goods under comparison are considered dissimilar.
In support of its argument, the opponent refers to 10/03/14 R 1026/2013‑2, E-SENSIEL / ESSENTIAL et al., in which these goods were found to be similar to a low degree. However, the Opposition Division refers to a more recent Board of Appeal decision, namely 31/08/15, R 2231/2014-5, VT (fig. mark) / VT VEGA TORO (fig. mark), § 11, where it is stated that:
The Board is not convinced as to the products in Class 5 which are health based. These will be consumed for health reasons, as opposed to being mere tobacco substitutes and there is no evidence to show that smokers who are giving up the habit turn to ‘herbal extracts and herbal compounds for smoking’. The Board has recently commented (6 February 2014, R-1141/2013-1, TOPROL (Fig) / TOP (Fig), § 26: The contested ‘tobacco free cigarettes for medical purposes; Kretek (clove) cigarettes for medical use’ are primarily intended for sick people, convalescents, and people with health problems and not for smokers (although these groups may overlap). Their purpose is therapeutic and the composition of ‘tobacco free cigarettes for medical purposes’ is quite different from the composition of the earlier ‘tobacco’. Moreover, they are sold in different stores (pharmacies or in special health facilities), and are produced by different undertakings, namely pharmaceutical companies and not tobacco companies. The goods are, therefore, dissimilar and, as a result, there can be no likelihood of confusion in regard to such goods.
Contested goods in Class 34
The contested tobacco is identically contained in the opponent’s list of goods.
The contested electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarette cases; cigarette boxes are included in the broad category of the opponent’s articles for smokers. Therefore, they are identical.
The contested cigarettes are included in, or overlap with, the broad category of the opponent’s tobacco. Therefore, they are identical.
The contested tobacco products are included in, or overlap with, the broader category of the opponent’s tobacco. Therefore, they are identical.
The contested cigarettes containing tobacco substitutes; tobacco substitutes and the opponent’s tobacco have the same nature, purpose and method of use. They also have the same distribution channels and points of sale, are in competition and target the same consumers. Therefore, they are highly similar.
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 to a high degree 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. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. 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.).
Therefore, the degree of attention will vary from average (e.g. in relation to cheap, plain smokers’ articles) to high (e.g. in relation to cigarettes or expensive or infrequently purchased smokers’ requisites, such as electronic cigarettes).
Earlier trade mark
The relevant territory is Benelux.
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 consists of the word ‘VIBES’. This word has no meaning in the relevant territory. However, as argued by the opponent, considering the high degree of understanding of English possessed by at least a part of the public, this part of the relevant public may understand the word ‘VIBES’ with the meaning it has in English, namely, inter alia, ‘a person’s emotional state or the atmosphere of a place as communicated to and felt by others’ (Oxford Dictionaries). In any case, the word has no meaning in relation to the goods in question and has an average degree of distinctiveness.
The contested sign is a composite sign reminiscent of a label. It comprises the verbal elements ‘Vype’, ‘reload’ and ‘ECOpure’, all written in a standard typeface. ‘Vype’ is the dominant element, as it is the most eye-catching. Placed in the dark grey circle at the top of the mark is a device that, although a part of the relevant public might recognise it as the letter ‘V’, is too stylised to be perceived as one of the verbal elements, but will rather be perceived as part of the figurative elements of the mark.
For the part of the public that understands English, the word element ‘reload’ will be understood as, inter alia, to refill, for example, a container, and in relation to the goods in question this element will be non-distinctive or weak, as it will merely indicate that goods are refillable or can be used to refill something else, for example, tobacco that can be used to refill cigarettes.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51); it can reasonably be assumed that (a substantial part of) the relevant public will perceive the element ‘ECOpure’ as being composed of two meaningful verbal elements, namely ‘ECO’ and ‘pure’. This is because the word ‘eco’ is a common prefix that is understood by a substantial part of the public in the relevant territory as referring to ‘ecological’, and ‘pure’ (meaning something that is clean and does not contain any harmful substances) is very similar to the equivalent words in the relevant languages, for example ‘pur’ in German and French and ‘puur’ in Dutch and, furthermore, will be understood by the part of the public that understands English. It could be mentioned that a small part of the public will perceive the prefix ‘ECO’ as referring to ‘economically’; however, when used in combination with the word ‘pure’, it can reasonably be assumed that ‘ECO’ will be understood as referring to ‘ecological’ in the present case.
In that event, the inherent distinctiveness of both these verbal elements is weak or even non-distinctive, insofar as they both refer to certain characteristics of the relevant goods; more specifically, ‘ECO’ provides information on their ecological and environmental friendly nature and ‘pure’ indicates that the electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products do not contain any harmful substances and that the cigarette cases; cigarette boxes will protect the cigarettes and therefore keep them from external impurities, such as dust. It follows that the contested sign’s element ‘ECOpure’ is weak or even non-distinctive as a whole.
The background image of the contested sign, containing the various figurative elements, will be perceived as a label used to embellish the verbal elements of the contested sign. Given their low degree of distinguishing power and their secondary role, the impact of the figurative elements is limited in the overall impression produced by the contested sign.
Visually, the signs coincide in the letters ‘V’ and ‘E’, which merely make up two of the earlier mark’s five letters and two out of four letters of one of the contested sign’s verbal elements. They differ in the letters ‘*IB*S’ of the earlier mark and in the letters ‘*YP*’ in the dominant element and all of the second and third elements, ‘Reload’ and ‘ECOpure’, of the contested sign. The signs also differ in the figurative elements of the contested sign.
Even though the figurative elements and the weak or possibly non-distinctive verbal elements ‘Reload’ and ‘ECOpure’ have a lesser impact on the overall impression of the contested sign, the signs show significant differences in their distinctive elements, ‘VIBES’ (the earlier mark) and ‘Vype’ (the contested sign).
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the phonemes ‘V’ and ‘E’ and differ in the phonemes ‘*IB*S’ of the earlier mark and ‘*YP*’, ‘Reload’ and ‘ECOpure’ of the contested sign.
Although it is accepted that the part of the public that has sufficient knowledge of English is likely to pronounce the earlier mark, ‘VIBES’, according to the rules of English pronunciation, that does not apply to the contested sign’s element ‘VYPE’, since it lacks any known meaning in English and will most probably be pronounced following the pronunciation rules of the country’s own language rather than those of English.
Therefore, and notwithstanding the weak distinctiveness of the elements ‘Reload’ and ‘ECOpure’ of the contested sign, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As the earlier mark and part of the contested sign will be associated with a dissimilar meaning from the perspective of the part of the public that understands English, the signs are not conceptually similar.
Part of the relevant public does not understand English; for this part, the earlier mark is meaningless. However, this part of the public will attach some meaning, albeit weak, to the element ‘ECOpure’ of the contested sign. Since the earlier mark 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.
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.
Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
The relevant goods are partly identical and partly similar to a high degree. The distinctiveness of the earlier mark is normal.
The trade marks are visually and aurally similar to a low degree. There is no conceptual similarity between them. Although the signs coincide in some letters, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The mere fact that they have some letters in common is insufficient to conclude that there is a likelihood of confusion between the signs, despite the identity or high degree of similarity between the relevant goods. The differences will allow consumers to safely distinguish between the signs. The coinciding letters do not form an independent element in either of the signs and there is no reason to conclude that consumers would artificially dissect the marks.
In view of all the foregoing, there is no risk that the public might believe that the goods in question came from the same undertaking or from economically-linked undertakings.
The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods are identical or similar to a high degree cannot, in the present case, compensate for the differences identified between the signs.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.