OPPOSITION No B 2 338 690

K. Hansotia & Co. Inc., 3705 NW 115th Street, Bay #5, Miami, FL 33178, the United States of America (opponent), represented by R.G.C. Jenkins & Co, 26 Caxton Street, London SW1H 0RJ, the United Kingdom (professional representative)

a g a i n s t

Stefan Götz, Zanderstraße 18, 17033 Neubrandenburg, Germany (applicant), represented by Rae Andrae & Simmer GbR, An der Christ-König-Kirche 8, 66119 Saarbrücken, Germany (professional representative).

On 06/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 338 690 is partially upheld, namely for the following contested goods:

Class 11: Evaporators; Electric vaporizers.

Class 34: Tobacco free cigarettes, other than for medical purposes; Electronic cigarettes.

2. Community trade mark application No 12 341 301 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 341 301. The opposition is based on, inter alia, Community trade mark registration No 10 655 157. The opponent invoked Article 8(1)(a) and (b), 8(4) and 8(5) CTMR. However, in its submissions of 09/10/2014 the opponent informed that it did not intend to pursue its opposition on the grounds of Article 8(4) and 8(5) CTMR. Therefore, the Opposition Division will proceed with the examination of the opposition on the grounds of Article 8(1)(a) and (b) CTMR with respect to the earlier Community trade mark registration No 10 655 157.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 34: Cigars.

The contested goods are the following:

Class 5: Tobacco-free cigarettes for medical purposes.

Class 11: Evaporators; Electric vaporizers.

Class 34: Tobacco free cigarettes, other than for medical purposes; Electronic cigarettes.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 tobacco-free cigarettes for medical purposes are dissimilar to the opponent’s goods. Tobacco-free cigarettes for medical purposes are intended for people with health problems and not for smokers (although these groups may overlap). Their purpose is therapeutic and composition differs from the composition of the opponent’s cigars. The contested goods are principally sold in pharmacies and special health facilities and, therefore, differ in their distribution channels. Moreover they do not share the same manufacturers, since the contested goods are produced by pharmaceutical companies and the opponent’s products by tobacco companies.

Contested goods in Class 11

The categories of contested evaporators; electric vaporizers contain devices intended to simulate tobacco smoking, other than for medical use. Such devices generally use a heating element that vaporises a liquid solution (usually containing a mixture of nicotine, flavourings and other additives) and most of them are designed to simulate smoking implements, such as cigarettes or cigars, in their use and/or appearance. These goods serve the same purpose and target the same end users as the traditional tobacco products, such as the opponent’s cigars. Furthermore, they are in competition. Therefore, the conflicting goods are similar.

Contested goods in Class 34

The contested tobacco free cigarettes, other than for medical purposes; electronic cigarettes are devices that simulate tobacco smoking. They are usually in a form of vaporisers, as described in the paragraph above. These goods serve the same purpose and target the same end users as the traditional tobacco products, such as the opponent’s cigars. Furthermore, they are in competition. Therefore, the conflicting goods are similar.

2. The signs

VIPER	Viper
Earlier trade mark	Contested sign

According to the practice of the Office, in the case of word marks, the use of upper or lower case letters is not relevant, since it is the word as such which is protected. Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

The contested goods were found to be partly similar and partly dissimilar to the opponent’s goods. The marks are identical, since they are both composed of the verbal element ‘VIPER’ and, in case of word marks, the use of upper or lower case letters is not relevant.

Considering the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 10 655 157.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail in so far as based on grounds under Article 8(1)(a) CTMR and directed against the remaining goods because the goods are obviously not identical.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gordana TRIPKOVIĆ

Eamonn KELLY

Ana MUÑIZ RODRÍGUEZ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.