OPPOSITION No B 2 576 828

Trompenburg Holdings B.V., Jonkheer Sixhof 21, 1241 CR Kortenhoef, the Netherlands (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative)

a g a i n s t

Nicoventures Holdings Limited, Globe House, 1 Water Street, London WC2R 3LA, United Kingdom (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 576 828 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 of European Union trade mark application No 14 304 018. The opposition is based on Benelux trade mark registration No 751 926 and international trade mark registration No 839 255 designating Spain, Italy, Austria, Portugal and Sweden. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

International trade mark registration No 839 255 designating Spain, Italy, Austria, Portugal and Sweden

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards earlier international trade mark registration No 839 255 designating Spain, Italy, Austria, Portugal and Sweden on which, inter alia, the opposition is based.

Contrary to the opponent’s argument, on 10/11/2015 the Office sent a communication giving the opponent two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/03/2016. According to the Office practice in force at that time, the Office provided the opponent, along with the invitation to complete the opposition, with an information sheet which contained guidance on the proceedings and the means of evidence. Specifically, it referred to the particulars to be proven if the earlier trade mark is other than an EUTM, which is the case in relation to earlier international trade mark No 839 255.

As pointed out above, Rule 19 EUTMIR provides that where an opposition is based on a right which is not a European Union Trade Mark, the opponent must submit evidence originating from the administration by which the mark was registered. In the present case, the earlier right was registered with WIPO. The competent administration for such an international registration, even when it designates the European Union, is WIPO and not EUIPO.

The opponent refers to some previous Office decisions asserting that in those proceedings the opponent had received a formal request to provide evidence of the earlier rights, thus invoking the principle of legal certainty. The Opposition Division notes in that regard that the provisions of Rule 19 EUTMIR are clear about the requirements for substantiation of the opposition. Furthermore, pursuant to Rule 20(6), second sentence EUTMIR, the Office is not obliged to indicate the nature and type of the evidence necessary for completion of the opposition. Therefore, the opponent’s arguments in that regard are dismissed as unfounded.

The opponent submitted the required evidence on 14/12/2016, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 839 255 designating Spain, Italy, Austria, Portugal and Sweden.

Therefore, the opposition will be examined in relation to the opponent’s Benelux trade mark registration No 751 926.

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.

PROOF OF USE

The applicant requested proof of use of the earlier mark. At this point the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

1. The goods

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

Class 34:        Tobacco; articles for smokers; matches.

The contested goods are the following:

Class 34:        Electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes.

        

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.

Tobacco is identically included in both lists of goods.

The contested electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarette cases; cigarette boxes are included in the broad category of the opponent’s articles for smokers. Therefore, they are identical.

The contested cigarettes are included in the broad category of the opponent’s tobacco. Therefore, they are identical.

The contested tobacco products are included in, or overlap with, the broader category of the opponent’s tobacco. Therefore, they are identical.

The contested cigarettes containing tobacco substitutes; tobacco substitutes and the opponent’s tobacco have the same purpose and method of use. They also have the same distribution channels and points of sale, are in competition and target the same consumers. Therefore, they are highly 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 identical or similar to a high degree 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 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.).

Therefore, the degree of attention will vary from average (e.g. in relation to cheap, plain smokers’ articles) to high (e.g. in relation to cigarettes or expensive or infrequently purchased smokers’ requisites such as electronic cigarettes).

3. The signs

VIBES	VYPE NICOSTREAM
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 mark consist of the word ‘VIBES’. The word has no meaning in the relevant territory. However, as also argued by the opponent, considering the high degree of understanding of English possessed by at least a part of the public, this part of the relevant public may understand the word ‘VIBES’ according to the meaning it has in English, namely, inter alia, ‘a person’s emotional state or the atmosphere of a place as communicated to and felt by others’ (Oxford Dictionaries). In any case, the word has no meaning in relation to the goods in question and it has an average degree of distinctiveness.

The contested sign consists of the verbal elements ‘VYPE’ and ‘NICOSTREAM’. The first element lacks any meaning from the perspective of the relevant public and enjoys an average degree of distinctiveness.

As regards the second element, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

It is reasonable to assume that in relation to the goods in question the public will perceive the prefix ‘NICO’ in the contested sign’s element ‘NICOSTREAM’ as referring to nicotine which is one of the main components in tobacco products. Firstly, the word ‘nicotine’ exists as such, or is very close to the equivalent words, in the official languages of the Benelux, e.g. ‘nicotine’ in French and Dutch and ‘Nikotin’ in German, and secondly it will be understood by the part of the relevant public that understands English. The word ‘STREAM’ will also be understood by the part of the relevant public who understands English, as meaning a narrow moving mass of liquid, smoke or air.

Therefore, in relation to the goods in question and for the part of the relevant public that understands English, the verbal element ‘NICOSTREAM’, will be weak. It will merely indicate that the electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products provide or are the source of (a stream of) nicotine. Even with respect to cigarette cases; cigarette boxes this expression has very limited distinguishing power, as these goods are so closely related to tobacco products. The element ‘NICOSTREAM’ will also be weak for the part of the public who does not understand English, on account of the strongly allusive meaning of the prefix ‘NICO’.

As the signs are word marks, neither of them has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘V’ and ‘E’, which merely make up two of the earlier mark’s five letters and two of the contested sign’s fourteen letters. They differ in the letters ‘*IB*S’ of the earlier mark and in the letters ‘*YP*’ in the first element and the whole second element ‘NICOSTREAM’ of the contested sign. In that regard it is noted that the fact that the contested sign’s element ‘NICOSTREAM’ contains the letters ‘I’ and ‘S’ that are present in the earlier mark does not result in any perceptible visual similarity between the signs, in view of their clearly different positions and adjacent letters.

Even though the element ‘NICOSTREAM’ is weak and therefore has a lesser impact on the overall impression of the contested sign, the signs show strong differences in their distinctive components.

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 signs coincide in the phonemes ‘V’ and ‘E’, and they differ in the phonemes ‘*IB*S’ of the earlier mark and ‘*YP* NICOSTREAM’ of the contested sign.

Although it is accepted that the part of the public who has sufficient knowledge of English is likely to pronounce the earlier mark, ‘VIBES’, according to the English pronunciation rules, that does not apply to the contested sign’s element ‘VYPE’, since it lacks any known meaning in English and will most probably be pronounced following the pronunciation rules of the country’s own language, rather than of English.

Therefore, and notwithstanding the weak distinctiveness of the element ‘NICOSTREAM’ of the contested sign, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. As the earlier mark and part of the contested sign will be associated with a dissimilar meaning from the perspective of the part of the public who understands English, the signs are not conceptually similar.

Part of the relevant public does not understand English thus the earlier mark is meaningless, but this part of the public will attach some meaning, albeit weak, to the element ‘NICOSTREAM’ of the contested sign. Since the earlier mark will not be associated with any meaning, the signs are not 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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 (recital 8 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 relevant goods are partly identical and partly similar to a high degree. The distinctiveness of the earlier mark is normal.

The trade marks are visually and aurally similar to a low degree. There is no conceptual similarity between them either. Although the signs coincide in some letters, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The fact that they merely have some letters in common is insufficient to conclude that there is a likelihood of confusion between the signs, despite the identity or high degree of similarity between the relevant goods. The differences will consequently allow consumers to safely distinguish between the signs. Indeed, the coinciding letters do not form an independent element in either of the signs and there is no reason to conclude that consumers would artificially dissect the marks.

In view of all the foregoing, there is no risk that the public might believe that the goods in question came from the same undertaking or from economically-linked undertakings.

The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods are identical or similar to a high degree cannot, in the present case, compensate for the differences identified between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Solveiga BIEZA

Cecilie Leth BOCKHOFF

Francesca CANGERI SERRANO

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.