OPPOSITION No B 2 671 652

Ievgenii Baliura, Prospect Myra, bud. 7, kv. 175, Zhytomyr 10020, Ukraine (opponent), represented by Patent Universe, 45, Solunska Street, et.3, ap.14, 1000 Sofia, Bulgaria (professional representative)

a g a i n s t

Changning Dekang Biotechnology Co. Ltd., No. 28 Caochangba, Tianyuan, Changning, Baoshan City, Yunnan Province, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 671 652 is upheld for all the contested goods, namely:

Class 34:        Cigar cases; cigarette cases; tobacco jars; humidors.

2.        European Union trade mark application No 14 143 762 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 143 762, namely against all the goods in Class 34. The opposition is based on international trade mark registration No 1 219 916 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remarks

The applicant states in its observations dated 28/09/2016 that the opponent did not substantiate the earlier right before the expiry of the time limit on 26/07/2016. However, the earlier right was substantiated by means of the extract from the Romarin database in the opponent’s observations submitted together with the notice of opposition on 11/03/2016. Therefore, the examination of the opposition will continue in relation to the earlier trade mark claimed by the opponent.

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 substitutes for hookahs consisting of fruits and crushed fruits; fruit flavored tobacco for hookahs.

The contested goods are the following:

Class 34:        Cigar cases; cigarette cases; tobacco jars; humidors.

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.

The contested cigar cases; cigarette cases; tobacco jars; humidors can have the same provider, end user and distribution channels as the opponent’s fruit flavored tobacco for hookahs. They are also complementary. Therefore, they are considered similar.

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 similar are directed at the public at large.

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. Therefore, in the case of tobacco products (fruit flavored tobacco for hookahs) a higher degree of similarity of signs may be required for confusion to occur. 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.). However, an average degree of attention is assumed for the contested goods, such as cigar cases; cigarette cases; tobacco jars and humidors, since they can be relatively cheap articles that target the public at large and can be bought without paying a particularly high degree of attention. Therefore, the degree of attention may vary from average to high.

3. The signs

	Shisha fruits
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

The contested sign is a word mark consisting of two verbal elements, ‘Shisha’ and ‘fruits’. The element ‘Shisha’ will be understood by the relevant public as ‘an oriental pipe for smoking marijuana, tobacco, etc, consisting of one or more long flexible stems connected to a container of water or other liquid through which smoke is drawn and cooled’ (information extracted from Collins English Dictionary on 22/03/2017 at https://www.collinsdictionary.com/dictionary/english/shisha) and the element ‘fruits’ will be understood by the relevant public as the plural form of ‘something which grows on a tree or bush and which contains seeds or a stone covered by a substance that you can eat’ (information extracted from Collins English Dictionary on 22/03/2017 at https://www.collinsdictionary.com/dictionary/english/fruit). As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

The earlier mark is a figurative mark consisting of the verbal element ‘SHISHAFRUIT’ in a slightly stylised font. Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign containing a verbal element, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In this case, those elements are ‘SHISHA’ and ‘FRUIT’, which will have the meanings explained above. Bearing in mind that the relevant goods are fruit flavored tobacco for hookahs, these elements are weak for these goods.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as the same concept, the signs are conceptually identical.

Visually, the signs coincide in their first 11 letters, ‘SHISHAFRUIT’. However, they differ in that the opponent’s mark is a single verbal element, whereas the applicant’s mark is formed by two verbal elements ‘SHISHA’ and ‘FRUITS’. The marks differ further in the additional and final letter of the contested sign, ‘S’, which has no counterpart in the earlier mark. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the first 11 letters, ‘SHISHAFRUIT’, present identically in both signs. The pronunciation differs in the sound of the additional and final letter of the contested sign, ‘S’, which has no counterpart in the earlier mark. Therefore, the signs are aurally highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

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 services covered are from the same or economically linked undertakings.

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).

Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T–134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the earlier mark is weak but the signs are conceptually identical and visually and aurally similar to a high degree. The goods are similar. They target the public at large and the degree of attention will vary from average to high.

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), and even consumers with 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).

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 international trade mark registration No 1 219 916 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Justyna GBYL

Alexandra APOSTOLAKIS

Catherine MEDINA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.