OPPOSITION No B 2 669 730

V2 Tobacco A/S, C/o V2 Tobacco A/S, Georg Jensens Vej 7, 8600 Silkeborg, Denmark (opponent), represented by Njord Law Firm Advokatpartnerselskab, Pilestræde 58, 1112 Copenhagen K, Denmark (professional representative)

a g a i n s t

Phantom SH LLC, 119 Greenmeadow Drive, 91320 Thousand Oaks California, United States of America (applicant), represented by Nucleus IP Limited, 10 St. Bride Street, EC4A 4AD London, United Kingdom (professional representative).

On 19/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 669 730 is upheld for all the contested goods.

2. European Union trade mark application No 14 826 812 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 826 812 (work mark ‘PHANTOM SMOKE’), namely against all goods in Class 34. The opposition is based on European Union trade mark registration No 6 195 796 (word mark ‘Phantom’). 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.

1. The goods

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

Class 34: Tobacco; smokers’ articles; matches; herbs for smoking.

The contested goods are the following:

Class 34: Portable electronic smoking devices, namely, electronic hookahs, electronic cigarettes, and electronic shisha, that can be both disposable and rechargeable; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; chemical flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges.

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 contested portable electronic smoking devices, namely, electronic hookahs, electronic cigarettes, and electronic shisha, that can be both disposable and rechargeable; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; chemical flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges are included in the broad category of the earlier smokers’ articles. Therefore, they are identical.

2. 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 higher than average, considering the particular goods involved.

Indeed, 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.).

3. The signs

Phantom	PHANTOM SMOKE
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).

In the case of word marks such as here, the word as such is protected and not its written form; therefore, it is immaterial whether the contested sign is depicted in lower, upper or title case letters.

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.

The common element ‘PHANTOM’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Ireland, Malta and the United-Kingdom.

The earlier mark, ‘PHANTOM’, will be understood by the relevant public as ‘a ghost; a figment of the imagination’, (information extracted from English Oxford Living Dictionaries on 13/11/2018 at https://en.oxforddictionaries.com/definition/phantom), as it is commonly used in the relevant territory. As the word has no direct relation to the relevant goods, it enjoys a normal degree of distinctiveness.

The contested sign is composed of the terms “PHANTOM” and SMOKE”.

The element ‘SMOKE’ of the contested sign will be perceived by the relevant consumers as referring to a visible suspension of carbon or other particles in air, typically one emitted from a burning substance (information extracted from English Oxford Living Dictionaries on 31/10/2018 at https://en.oxforddictionaries.com/definition/smoke). Bearing in mind that the relevant goods are smokers-related products, this element is considered to be non-distinctive for the goods in Class 34.

In addition, 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.

Visually, the signs fully coincide in the element ‘PHANTOM’, which constitutes the entire earlier mark and is the first element of the contested sign. The signs differ in the second element of the contested mark, namely the word ‘SMOKE’, which is considered to be non-distinctive.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the syllables /phan-tom/, present identically in both signs. The pronunciation differs in the syllable /sməʊk/, present in the contested sign as a second element.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Taking into account that the goods are smokers’ articles, the non-distinctive element ‘SMOKE’ will not influence the conceptual comparison. As the signs will be associated with similar meanings, due to the common distinctive element ‘PHANTOM’, the signs are therefore 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.

4. 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.

5. Global assessment, other arguments and conclusion

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 (eighth recital of the CTMR). 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).

In the present case, the contested goods are identical to the goods on which the opposition is based. The earlier mark has a normal degree of distinctiveness in relation to the goods, and the relevant public, that is to say the public at large, will pay a degree of attention that is considered to be higher than average due to the brand loyalty that exists in relation to tobacco goods in Class 34.

Moreover, the signs are visually and aurally similar to a high degree, to the extent that they coincide in the element ‘PHANTOM’, which constitutes the entire earlier mark. The differentiating element, ‘SMOKE’, which is considered to be non-distinctive is placed at the end of the contested sign, to which the relevant public normally pays less attention. In addition, the signs are conceptually similar to an average degree on account of the coinciding concept of ‘PHANTOM’.

Furthermore, account is taken of the fact that 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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In addition, although the purchasers of tobacco products are generally very attentive, it does not imply that a likelihood of confusion is excluded (26/02/2010, R 1562/2008‑2, victory Slims (fig.) / VICTORIA, § 51). As the contested sign is composed of the earlier mark and a descriptive term, the relevant public could believe that the applicant’s trade mark is a variant of the earlier trade mark, depicting a new line of products with a globally understandable English term. Experience shows that in the cigarette and cigar market, house marks are often accompanied by less distinctive indications identifying different lines of products (20/12/2004, R 636/2004-1 (ROYALE CLASSIC (FIG. MARK)/CLASSIC (FIG. MARK)).

Considering all the above, there is a likelihood of confusion on the part of the English-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 6 195 796. It follows that the contested trade mark must be rejected for all 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Tobias KLEE

Lars HELBERT

Swetlana BRAUN

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.