OPPOSITION No B 3 104 448

Pax Labs, Inc., 660 Alabama Street, 2nd Floor, 94110 San Francisco, United States of America (opponent), represented by J A Kemp SNC, 75 Boulevard Haussmann, 75008 Paris, France (professional representative)

a g a i n s t

Shenzhen First Union Technology Co., Ltd., Bldg C, Tangwei High-Tech Park, Fuyong Str, Baoan Dist, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by ZHAoffice SPRL, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative).

On 06/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 448 is upheld for all the contested goods.

2. European Union trade mark application No 18 106 808 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 106 808 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 15 894 041 for the word mark ‘ERA’. 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 registration No 15 894 041 for the word mark ‘ERA’.

a) The goods

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

Class 34: Nicotine-based liquid, namely, liquid nicotine used to refill electronic cigarettes; cartridges sold filled with liquid nicotine for electronic cigarettes; electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes; cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; electronic cigarettes; electronic smoking vaporizers, namely, electronic cigarettes; tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes; refill cartridges sold empty for electronic cigarettes; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of tobacco and other herbal matter; processed tobacco pods; pipe tobacco, namely, tobacco for use in electric vaporizers; tobacco, whether manufactured or unmanufactured; smoking tobacco, pipe tobacco, hand rolling tobacco, snus tobacco; tobacco sold in pods.

The contested goods are the following:

Class 34: Electronic cigarettes; liquid solutions for use in electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic cigarette cases; liquid nicotine solutions for use in electronic cigarettes; electronic cigars; flavourings, other than essential oils, for use in electronic cigarettes; electronic smoking pipes; oral vaporizers for smokers; tobacco substitutes not for medical purposes.

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 opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Electronic cigarettes are identically contained in both lists of goods.

The contested electronic cigarettes for use as an alternative to traditional cigarettes are included in the broad category of the opponent’s electronic cigarettes. Therefore, they are identical.

The contested liquid nicotine solutions for use in electronic cigarettes are, albeit worded slightly differently, identically contained in the opponent’s list of goods as nicotine-based liquid, namely, liquid nicotine used to refill electronic cigarettes.

The contested liquid solutions for use in electronic cigarettes; flavourings, other than essential oils, for use in electronic cigarettes include, as broader categories, or overlap with, the opponent’s electronic cigarette refill liquids, namely, chemical flavorings in liquid form used to refill electronic cigarettes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested electronic smoking pipes; oral vaporizers for smokers include, as broader categories, or overlap with, the opponent’s electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of tobacco and other herbal matter. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested tobacco substitutes not for medical purposes include, as a broader category, the opponent’s tobacco substitutes in liquid solution form other than for medical purposes for electronic cigarettes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested electronic cigars are at least highly similar to the opponent’s electronic cigarettes; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of tobacco and other herbal matter as they have the same purpose and method of use. They usually coincide in their producers, distribution channels and relevant public. Furthermore, they are in competition.

The contested electronic cigarette cases and the opponent’s electronic cigarettes target the same relevant public, can share the same distribution channels and are complementary since the contested goods cannot be used without electronic cigarettes. Consequently, the goods under comparison are similar.

b) 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 varying degrees) are directed at the public at large.

Although some 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.).

Consequently, the degree of attention of the relevant consumers is considered to be higher than average.

c) The signs

ERA
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).

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 verbal element constituting the earlier mark will be associated with a meaning by the consumers in some parts of the relevant territory, such as the English, Italian and Spanish-speaking public (where ‘era’ would be perceived as referring to ‘a period of time considered as being of a distinctive character; epoch’), and this introduces a conceptual difference between the marks for that part of the public. Nevertheless, neither of the verbal elements of the marks is meaningful in some languages, such as Finnish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the majority of the Finnish-speaking consumers for which the marks under comparison are meaningless.

Given that none of the verbal elements constituting the marks will be associated with any meaning by the majority of the Finnish-speaking part of the public taken into account, they are both distinctive to an average degree.

Conceptually, for the part of the public taken into consideration neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the sequence of the letters ‘ERA’. However, they differ in the contested sign’s first letter ‘X’. The signs also differ in the stylisation of the contested sign, which is, however, not sufficient to obscure or camouflage the coinciding letters of the signs.

Therefore, and notwithstanding the fact that the signs under comparison are rather short, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ERA’, present identically in both signs. The pronunciation differs in the sound of the contested sign’s initial letter ‘X’. The marks are composed of the same number of syllables and, therefore, they have the same intonation and rhythm.

Consequently, the marks are aurally similar to a high degree.

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

d) 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 taken into consideration. Therefore, the distinctiveness of the earlier mark must be seen as normal.

a) Global assessment, other arguments and conclusion

In the present case, the goods under comparison are identical or similar (to different degrees) and are directed at the public at large whose degree of attention may be higher than average. The earlier mark has an average degree of inherent distinctiveness.

The signs are visually similar to an average degree and aurally similar to a high degree on account of the coinciding letter sequence ‘ERA’, which constitutes the earlier mark in its entirety and is fully included in the contested sign. Nevertheless, the Opposition Division considers that the differences between the signs at issue due to the additional first letter, ‘X’, of the contested sign and its overall stylisation are not enough to counteract the overall visual and aural similarities between them.

The marks will not be associated with any meanings by the relevant public under analysis. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

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).

Taking the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to goods which are identical or similar (at least to an average degree), is likely to think that such goods come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Finnish-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 15 894 041 for the word mark ‘ERA’. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

María del Carmen COBOS PALOMO

Boyana NAYDENOVA

Martin MITURA

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.