OPPOSITION No B 2 953 894

Goldman Global, S.L.U., Gran Via de les Corts 636, 2º 2ª C, 08007 Barcelona, Spain (opponent), represented by Eurosigno Patentes Y Marcas, Txakursolo n° 23, bajo, 48992, Getxo (Vizcaya), Spain (professional representative)

a g a i n s t

Evolution Vaping Ltd, Unit 8c2 Maybrook Road, Maybrook Business Park, Minworth, B76 1AL, United Kingdom (applicant), represented by Paul Price, Suite 114, North Mersey Business Centre, Woodward Road, Kirkby, L33 7UY, United Kingdom (professional representative).

On 27/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 953 894 is partially upheld, namely for the following contested services:

Class 35: Retail services connected with the sale of Raw cotton, wicks, wicks for use with electronic cigarette atomizers and electronic cigarette cartomizers.

2. European Union trade mark application No 16 868 507 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 868 507 for the word mark ‘FUZION’. The opposition is based on, inter alia, European Union trade mark registrations No 10 756 484 and No 11 399 565, both for the figurative 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 10 756 484 and No 11 399 565.

1. The goods and services

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

EUTM No 10 756 484

Class 9: Weighing and measuring apparatus and instruments; Scales; Precision balances.

Class 34: Tobacco; Smokers’ articles; Matches.

Class 35: Wholesaling, retailing in shops and via global computer networks of weighing and measuring apparatus and instruments, scales, precision balances, tobacco, smokers’ articles and matches.

EUTM No 11 399 565

Class 10: Sprayers for medical purposes.

Class 11: Electrical vaporisers.

Class 35: Wholesaling and retailing in shops and via global computer networks of electrical atomisers and atomisers for medical purposes.

The contested goods and services are the following:

Class 4: Wicks.

Class 22: Raw cotton.

Class 35: Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; auctioneering; Promotion of fairs for trade purposes; data processing; provision of business information; retail services connected with the sale of Raw cotton, wicks, wicks for use with electronic cigarette atomizers and electronic cigarette cartomizers.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 4

The contested wicks are for lighting purposes; they should not be confused with wicks used for other purposes, which are classified in other classes. It is true, as alleged by the opponent, that e-cigarettes contain ‘wicking material’ and ‘wicks’, but these goods are different from the contested wicks in Class 4. Contrary to the opponent’s claims, the contested wicks are not intended to be used as part of e-cigarettes, which are covered by the opponent’s electrical vaporisers of EUTM No 11 399 565; instead, the contested goods are a part of candles, oil lamps or other illuminating goods. Another reason why this argument cannot be upheld is that electrical vaporisers in Class 11 do not cover e-cigarettes or other electronic smoking articles, since these goods belong to Class 34, not Class 11; the latter class is where apparatus for environmental control, such as air-conditioning apparatus, humidifiers and apparatus for use in vaporising, are classified. It follows that the contested and the opponent’s goods are not complementary. Moreover, the contested wicks and the opponent’s electrical vaporisers in Class 11 have nothing in common in terms of their nature, purpose or method of use. In addition, they have different distribution channels and generally have different producers.

The opponent’s remaining goods and services in Classes 9 (e.g. weighing and measuring instruments), 10 (sprayers for medical purposes), 34 (e.g. tobacco articles) and 35 (e.g. advertising; business management; business administration; office functions; auctioneering and retail and wholesale of the aforementioned goods) have nothing in common with the contested wicks either, since they have completely different natures, purposes and methods of use and, consequently, also differ in their distribution channels and origin. Therefore, the contested wicks are dissimilar to all of the opponent’s goods and services.

Contested goods in Class 22

The contested raw cotton is cotton in its natural state, that is, unprocessed (information extracted from English Oxford Living Dictionary on 24/08/2018 at https://en.oxforddictionaries.com/definition/raw). The opponent claims that cotton can be used as a ‘wicking material’ in e-cigarettes. However, for the reasons explained above, e-cigarettes are not covered by the opponent’s electrical vaporisers of EUTM No 11 399 565, since e-cigarettes belong to Class 34. Therefore, this argument cannot succeed. However, even if the opponent’s smokers’ articles of EUTM No 10 756 484 were considered as covering e-cigarettes, this argument would still be rejected, since raw cotton and e-cigarettes are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). Indeed, since raw cotton is a natural, unprocessed product produced by farmers and sold to manufacturers of textiles or end consumers in flower shops, these consumers will be aware that this product is not produced by the same undertaking as the opponent’s e-cigarettes. Consequently, it cannot be concluded that there is a degree of similarity between raw cotton and e-cigarettes simply because ‘vape cotton’, a processed form of cotton, can be used as a ‘wicking material’ in e-cigarettes. Moreover, these goods have nothing in common in terms of their nature, purpose and method of use and they are not normally produced by the same companies or sold through the same channels. In view of the foregoing, they are dissimilar.

The same is true for the opponent’s remaining goods and services in Classes 9, 10, 11, 34 and 35. They have nothing in common with the contested raw cotton, since they have completely different natures, purposes and methods of use and, consequently, also differ in their distribution channels and origins. Since raw cotton is a natural unprocessed product, it cannot be considered as vaping cotton, which is covered by the opponent’s smokers’ articles of EUTM No 10 756 484. Raw cotton is produced by cotton farmers and distributed via sales channels different from those of the opponent’s smokers’ articles, which are distributed through specialised tobacco shops and produced by specialised undertakings. Consequently, the contested raw cotton is not complementary to the opponent’s wholesaling, retailing in shops and via global computer networks of smokers’ articles of EUTM No 11 399 565 and it is generally not offered in the same places where smokers’ articles are offered for sale. Therefore, the contested raw cotton is dissimilar to all of the opponent’s goods and services.

Contested services in Class 35

The contested retail services connected with the sale of wicks for use with electronic cigarette atomizers and electronic cigarette cartomizers overlap with the opponent’s retailing in shops and via global computer networks of smokers’ articles of EUTM No 10 756 484 because wicks for use with electronic cigarette atomisers and electronic cigarette cartomizers are smokers’ articles. Therefore, these services are identical. Moreover, the contested services are similar to the opponent’s wholesaling and retailing in shops and via global computer networks of electrical atomisers and atomisers for medical purposes of EUTM No 11 399 565, since they are both retail services and therefore they have the same purpose and method of use.

The contested retail services connected with the sale of raw cotton, wicks are considered similar to the opponent’s retailing in shops and via global computer networks of smokers’ articles of EUTM No 10 756 484 and the opponent’s wholesaling and retailing in shops and via global computer networks of electrical atomisers and atomisers for medical purposes of EUTM No 11 399 565. The services at issue have the same nature since they are all retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs and the same method of use.

The contested advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; auctioneering; promotion of fairs for trade purposes; data processing; provision of business information are professional support services that have nothing in common with the opponent’s goods and services.

The abovementioned contested services are advertising services and business support activities aimed at helping other businesses to run and improve the performance of their commercial or industrial establishment, whereas the opponent’s mark covers wholesaling and retailing services, which are activities involving the actual sale of goods in terms of bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Therefore, these services have entirely different purposes, origins and distribution channels. Furthermore, they are neither complementary nor in competition.

In addition, the fact that the opponent’s goods may be the subject of some of the contested services does not make them similar, since they are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

Consequently, the contested advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; auctioneering; promotion of fairs for trade purposes; data processing; provision of business information are dissimilar to all of the opponent’s goods and services.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered average.

2. The signs

	FUZION
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 signs are both a figurative mark consisting of the word ‘FUZION’ written in a fanciful typeface that is composed of small grey squares.

The contested sign is the word mark ‘FUZION’.

Although the verbal element of the signs has no meaning as such in any of the languages of the European Union, the word ‘FUZION’ could be associated by part of the relevant public with the word ‘fusion’ (‘the process or result of joining two or more things together to form a single entity’; information extracted from Oxford Living Dictionary on 24/08/2018 at https://en.oxforddictionaries.com/definition/fusion) due to the similarity of the equivalent words in various languages of the European Union, for example ‘Fusion’ in German, ‘fusion’ in English and ‘fusión’ in Spanish. The same element will be perceived as meaningless by other parts of the public, such as the Bulgarian- and Greek-speaking parts of the public (the equivalent words are ‘синтез’ and ‘συγχώνευση’, respectively). In any case, the word is distinctive in relation to the relevant goods and services, as it has no direct connection to them or their essential characteristics, whether it is understood or not.

Visually, the signs coincide in the verbal element ‘FUZION’. The signs differ only in the stylisation of the earlier marks and, despite the earlier marks’ particular typeface, the letters ‘FUZION’ are easily readable.

Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the sound of the letters ‘FUZION’ and are therefore identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Consequently, there is a conceptual link between the signs for the part of the public that will associate the word ‘FUZION’ with the concept of ‘fusion’. Therefore, since the signs will evoke the same concept, the marks are conceptually identical for this part of the public.

For the part of the public that will perceive the word ‘FUZION’ as meaningless, such as the Bulgarian- and Greek-speaking parts of the public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity between the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

3. 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

4. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As seen above, the goods are dissimilar and the services are partly dissimilar and partly identical and similar. The relevant public is formed by the public at large, which pays an average degree of attention, and the earlier marks have an average degree of distinctiveness.

The signs are aurally identical and visually similar to a high degree on account of their coinciding verbal element ‘FUZION’, which forms the entirety of all marks and is stylised to only a limited extent in the earlier marks. The conceptual aspect either does not influence the assessment of the similarity between the signs or the signs are conceptually identical, depending on the part of the public considered, that is, whether or not an association is made between the word ‘FUZION’ and the concept of ‘fusion’, as explained in section b) above.

Taking into account the foregoing, it is considered that the minor differences between the signs are not sufficient to counteract their similarities and therefore there is a likelihood of confusion.

In addition, the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related undertakings (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16). In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a variation of the earlier marks configured in a different way according to the type of services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public in relation to the services found to be identical or similar. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 10 756 484 and No 11 399 565.

It follows from the above that the contested trade mark must be rejected for the services found to be identical and similar to the services of the earlier trade marks.

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

The opponent has also based its opposition on the following earlier trade mark: EUTM No 11 234 689 for the figurative mark .

This earlier right invoked by the opponent is less similar to the contested mark than the earlier marks already compared. This is because it contains additional words, namely ‘BUY FACTORY DIRECT’, which are not present in the contested mark. Moreover, it covers the same scope of goods and services as EUTM No 10 756 484. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Rosario GURRIERI	Maria Slavova	Adriana VAN ROODEN

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.