OPPOSITION No B 2 950 064

Starbuzz Tobacco, Inc., 20155 Ellipse, 92610, Foothill Ranch, United States of America (opponent), represented by Kuhnen & Wacker Patent- Und Rechtsanwaltsbüro Partg Mbb, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative)

a g a i n s t

Star Hookah Inc., 325 Sunnycroft Road, 95005 Ben Lomond, United States of America (applicant), represented by Markenizer, Weg en Bos 132 A, 2661 GX Bergschenhoek, Netherlands (professional representative).

On 15/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 950 064 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 676 711 ‘STAR HOOKAH’ (word mark). The opposition is based on European Union trade mark registrations No 13 648 092 ‘STARBUZZ’ (word mark) and No 12 899 531 ‘STARBUZZ. THE ULTIMATE HOOKAH EXPERIENCE’ (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.

1. The goods and services

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

European Union trade mark registration No 13 648 092

Class 4: Candles, charcoal.

Class 5: Air fresheners.

Class 43: Shisha bars; hookah lounges; vaping bars; cigar lounges.

European Union trade mark registration No 12 899 531

Class 4: Candles; perfumed candles; scented candles; fuels and illuminants; charcoal for use with hookah pipes and tobacco; parts.

Class 34: Smokers’ articles; hookah pipes and tobacco for use therewith; parts and fittings for hookah pipes; herbs for smoking; water pipes; cigarettes and electronic cigarettes; smoking pipes; cleaning kits.

Class 35: On-line retail store services featuring hookahs and accessories; retail services in relation to smokers’ articles, tobacco, flavoured tobacco, electronic cigarettes, fluid for electronic cigarettes, smoking pipes, and parts and fittings for the aforesaid.

The contested services are the following:

Class 35: Advice in the running of establishments as franchises; franchise services, namely, offering business management assistance in the establishment and operation of hookah lounges; franchising, namely, consultation and assistance in business management, organization and promotion.

Class 43: Hookah lounge services.

Some of the contested services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The contested services in Class 35 (advice in the running of establishments as franchises; franchise services namely, offering business management assistance in the establishment and operation of hookah lounges; franchising, namely, consultation and assistance in business management, organization and promotion) are specialised services that mainly target business customers. Therefore, the relevant public for the assessment of likelihood of confusion in relation to the contested services in Class 35 is the professional public, as this is the part of the public that will encounter the trade marks at issue. The relevant professional public will have enhanced technical expertise, sophistication and knowledge of the given market sector and, therefore, the relevant public’s degree of attention in relation to the services in Class 35 is above average.

The degree of attention for the rest of the services will be average.

3. The signs

European Union trade mark registration No 13 648 092 STARBUZZ European Union trade mark registration No 12 899 531 STARBUZZ. THE ULTIMATE HOOKAH EXPERIENCE	STAR HOOKAH
Earlier trade marks	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 earlier marks are the word marks ‘STARBUZZ’ and ‘STARBUZZ. THE ULTIMATE HOOKAH EXPERIENCE’.

The signs share the string of letters ‘STAR’, which is a basic English word, meaning, inter alia, ‘[a]n outstandingly successful person or thing in a group’ (information extracted from Oxford Lexico Dictionary on 11/09/2019 at https://www.lexico.com/en/definition/star). This word is, according to case-law, a laudatory term emphasising the quality of the goods and services (11/05/2010, T‑492/08, Star foods, EU:T:2010:186, § 52) and its distinctiveness is limited.

The verbal element ‘BUZZ’ will be understood by the English-speaking part of the relevant public as ‘[a] low, continuous humming or murmuring sound, made by or similar to that made by an insect’ or the informal meaning of ‘[a] feeling of excitement’, intense enthusiasm, or exhilaration (information extracted from Oxford Lexico Dictionary on 11/09/2019 at https://www.lexico.com/en/definition/buzz). It would be associated with a similar meaning in some of the relevant languages (e.g. ‘buzzer’ in German is an electrical device that makes a buzzing noise and is used for signalling). This word may be considered as laudatory by those who understand the informal meaning of this word in English (a feeling of enthusiasm, excitement) or as referring to the intended purpose of the goods or services such as hookah pipes, shisha bars, hookah lounges, vaping bars and, therefore, weak in relation to them. For the remaining part of the public, this verbal element is meaningless or not directly associated with the characteristics of the relevant goods and services and has, therefore, an average degree of distinctiveness.

The earlier European Union trade mark registration No 12 899 531 has the additional expression ‘THE ULTIMATE HOOKAH EXPERIENCE’, which is a laudatory expression in English that will also be understood in several of the relevant languages as the equivalent words are very similar (e.g. último’ and ‘experiencia’ in Spanish and ‘ultime’ and ‘expérience’ in French). Therefore, this expression is weak.

The word ‘hookah’ is the English word for an oriental tobacco pipe. This word is descriptive for part of the relevant services, namely hookah lounge services and franchise services, namely, offering business management assistance in the establishment and operation of hookah lounges, and, therefore, non-distinctive for these services for the English-speaking part of the public. For the part of the public who does not understand the word ‘HOOKAH’, it has an average degree of distinctiveness. For the English-speaking part of the public, the word ‘STARBUZZ’ is the most distinctive element in European Union trade mark registration No 12 899 531. For the rest of the public, the words ‘STARBUZZ’ and ‘HOOKAH’ are the distinctive elements. There is no element that could be more dominant than other elements.

The contested sign is the word mark ‘STAR HOOKAH’. The words ‘STAR’ and ‘HOOKAH’ have the meaning described above. Therefore, the word ‘HOOKAH’ has lower-than-average distinctiveness for a part of the relevant public in relation to part of the relevant services (hookah lounge services and franchise services, namely, offering business management assistance in the establishment and operation of hookah lounges), and the word ‘STAR’ is laudatory and weak. There is no element that could be more dominant than other elements.

Visually, the signs coincide in the words ‘STAR’ and ‘HOOKAH’, which are included in the contested sign and in European Union trade mark registration No 12 899 531 (which is part of the laudatory expression of the mark). However, they differ in the structure of the signs as the word ‘STAR’ of the contested sign is a separate word. Moreover, they have a different number of words, two words in the contested sign, while the earlier EUTM No 13 648 092 has one word and the earlier EUTM No 12 899 531 has five words.

They also differ in the laudatory verbal element ‘BUZZ’ of the earlier marks for part of the services and in part of the laudatory expression ‘THE ULTIMATE EXPERIENCE’ of European Union trade mark registration No 12 899 531. In the case of the earlier EUTM No 13 648 092 ‘STARBUZZ’, the signs also differ in the contested sign’s word ‘HOOKAH’.

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 pronunciation of the signs coincides in the sound of the letters ‘STAR’, present in both signs.

The pronunciation differs in the sound of the letters ‘BUZZ’ of the earlier marks, and in part of the laudatory expression ‘THE ULTIMATE EXPERIENCE’ of European Union trade mark registration No 12 899 531. In the case of the earlier EUTM No 13 648 092 ‘STARBUZZ’, the signs also differ in the sound of the contested sign’s word ‘HOOKAH’.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will partly be associated with a similar meaning, the concept of the weak element ‘STAR’ and in European Union trade mark registration No 12 899 531 along with the non-distinctive element, HOOKAH, for part of the services, the signs are conceptually similar to a low degree.

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 marks

The distinctiveness of the earlier marks 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 marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for some of the services in question, namely hookah lounge services in Class 43 and franchise services, namely, offering business management assistance in the establishment and operation of hookah lounges in Class 35. These marks have a normal degree of distinctiveness for the remaining services in relation to which they have no meaning from the perspective of the public in the relevant territory.

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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 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 services are assumed to be identical. They target the public at large and at business customers with specific professional knowledge or expertise and their degree of attention will vary from average to high. The distinctiveness of the earlier marks is normal for part of the services. The distinctiveness of the contested sign is lower than average for part of the contested services.

The signs are visually, aurally and conceptually similar to a low degree. Although the signs have some similarities, there are sufficient visual, aural and conceptual differences, due to their different structures and lengths resulting in a significantly different overall visual and aural impact in the signs.

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35).

Considering all the above, the high degree of attention for some of the services, even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Aurelia PEREZ BARBER

Justyna GBYL

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.