OPPOSITION DIVISION

OPPOSITION No B 2 533 258

Space Jam Juice, LLC, 18001 Mitchell South, Irvine, California 92614, United

States of America (opponent), represented by Dehns, St Bride’s House, 10 Salisbury

Square, London EC4Y 8JD, United Kingdom (professional representative)

a g a i n s t

Thierry Cai, 23 Villa Curial, 75019 Paris, France (applicant), represented by Cabinet

Bouchara Avocats, 17 rue du Colisée, 75008 Paris, France (professional

shisha pipes, electronic pipes, Mods (optimised electronic

cigarettes), Flavourings for liquids for electronic cigarettes or

personal vaporisers, Nicotine bases, electronic cigars.

2. European Union trade mark application No 13 857 792 is rejected for all the

above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 13 857 792 (figurative). The opposition

is based on European Union trade mark registration No 13 148 994 ‘ECLIPSE’. The

the Regulations currently in force, except where expressly indicated otherwise.

Decision on Opposition No B 2 533 258 page: 2 of 7

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

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations; Tobacco-free cigarettes

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 (‘Canon criteria’).

Contested goods in Class 5

The contested tobacco-free cigarettes for medical purposes are special cigarettes

containing herbs or other substances for medical purposes. These goods are not

Decision on Opposition No B 2 533 258 page: 3 of 7

in pharmacies and, therefore, differ in their distribution channels from the opponent’s

goods are produced by pharmaceutical companies and the opponent’s goods are

produced by tobacco companies. Therefore, contrary to the opponent’s argument,

the goods under comparison are considered dissimilar.

When comparing the remaining contested goods in Class 5 with the opponent’s

goods in Class 34, the Opposition Division finds them dissimilar. The contested

Furthermore, these goods are not in competition with or complementary to each

other. Moreover, the origins of the goods, their relevant distribution channels and

synonyms).

Nicotine bases are liquid nicotine solutions that are usually mixed with other liquids

for use in electronic cigarettes. These goods and the opponent’s electronic cigarette

liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette

cartridges can be produced and/or sold by the same undertaking and target the same

purchasing public. Therefore, these sets of goods can have the same producers and

relevant public. In addition, they are complementary. Therefore, they are similar to a

high degree.

The contested electronic cigarettes; electronic shisha pipes, electronic pipes, mods

(optimised electronic cigarettes), electronic cigars cannot be used without the

opponent’s electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form

Similarity between the retail and wholesale services of specific goods covered by one

mark and specific goods covered by another mark can only be found where the

goods involved in the retail services and the specific goods covered by the other

mark are identical.

The contested retailing and wholesaling of electronic cigarettes and tobacco-free

cigarettes for medical purposes and the opponent’s electronic cigarette liquid (e-

liquid) comprised of flavorings in liquid form used to refill electronic cigarette

cartridges in Class 34 are not similar. Apart from being different in nature, since

services are intangible whereas goods are tangible, they serve different needs. Retail

services consist in bringing together, and offering for sale, a wide variety of different

products, thus allowing consumers to conveniently satisfy different shopping needs at

one stop. The object of wholesale trade is similar, except that, in this case, the

Decision on Opposition No B 2 533 258 page: 4 of 7

communication media for retail purposes, in particular tobacco, cigars, cigarettes,

electronic cigarettes and tobacco-free cigarettes for medical purposes. These

services are provided by specialist companies, which study their client’s needs,

provide all the necessary information and advice for marketing the client’s goods, and

create a personalised strategy for advertising them through newspapers, web sites,

videos, the internet, etc. They are fundamentally different in nature and purpose from

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be

In the present case, the goods found to be identical or 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 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.).

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 trade mark ‘ECLIPSE’ will be perceived by a part of the relevant public,

such as the English-, French-, Spanish- and Portuguese-speaking public, as ‘an

obscuring of the light from one celestial body by the passage of another between it

Decision on Opposition No B 2 533 258 page: 5 of 7

and the observer or between it and its source of illumination’ (information extracted

https://en.oxforddictionaries.com/definition/eclipse). The same can be said of the

verbal component in the contested sign for the Dutch-speaking part of the relevant

public. The abovementioned relevant public will understand the word of the other

sign, since it is very similar to the equivalent word in the official language in the

relevant territory.

services; therefore, they are distinctive.

than other elements.

figurative component. This is because the public does not tend to analyse signs and

will more easily refer to the signs in question by their verbal element than by

describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,

EU:T:2005:289, § 37).

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As both signs will be perceived as ‘eclipse’ by a

significant part of the relevant public, the signs are conceptually identical.

Visually, the signs coincide in the letters ‘ECLIPS*’. However, they differ in the letter

‘E’ of the opponent’s trade mark and in the typeface and the figurative element of the

contested sign. In view of the above and also bearing in mind the lesser impact

attributed to the figurative element of the contested sign, as explained above, the

signs 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.

Decision on Opposition No B 2 533 258 page: 6 of 7

relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as

e) Global assessment, other arguments and conclusion

As concluded above, the contested goods and services are partly identical, partly

similar (to varying degrees) and partly dissimilar to the opponent’s goods.

identical for part of the public and aurally highly similar for the rest, as explained in

detail above in section c) of this decision. The relevant public’s degree of attention in

consumers who pay a high degree of attention need to rely on their imperfect

the perception of the signs, as explained above.

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the public and therefore the opposition is partly well founded

on the basis of the opponent’s European Union trade mark registration

No 13 148 994.

It follows from the above that the contested trade mark must be rejected for the

goods found to be identical or similar (to varying degrees) to those of the earlier trade

mark.

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

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.

Decision on Opposition No B 2 533 258 page: 7 of 7

deemed to have been filed only when the appeal fee of EUR 720 has been paid.