ENERGYSTASH | Decision 2762154

Date Published: Sep 25, 2017

OPPOSITION No B 2 762 154

Landewyck Tobacco S.A., 31 Rue de Hollerich, 1741 Luxembourg, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d'Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative)

a g a i n s t

Shenzhen Smoore Technology Limited, No. 16 Dongcai Industrial Park, Gushu Town, Xixiang, Baoan District, Shenzhen City, Guangdong Province, People´s Republic of China (applicant), represented by Dompatent von Kreisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 154 is partially upheld, namely for the following contested goods:

Class 34:        Cigarettes; cigarette tips; cigarette cases; lighters for smokers; matchboxes; cigarettes containing tobacco substitutes, not for medical purposes; cigarette filters; pocket machines for rolling cigarettes; liquid nicotine solutions for use in electronic cigarettes; electronic cigarettes.

2.        European Union trade mark application No 15 400 161 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 15 400 161. The opposition is based on European Union trade mark registration No 8 777 948. 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.

1. The goods and services

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

Class 34: Tobacco; unworked and manufactured tobacco; tobacco for smoking, snuff, chewing tobacco; herbs for smoking; cigars, cigarettes, cigarillos; herbal cigarettes; cigarette paper; cigarette cases; tobacco in plug form and in rolls; matches; smokers' articles; lighters for smokers; cigar and cigarette boxes, not of precious metal; cigar and cigarette cases, not of precious metal.

The contested goods and services are the following:

Class 9: Batteries, electric; battery chargers; accumulators, electric; batteries for lighting; photovoltaic cells; solar batteries; chargers for electronic cigarettes; chargers for electric batteries.

Class 34: Cigarettes; cigarette tips; cigarette cases; lighters for smokers; matchboxes; cigarettes containing tobacco substitutes, not for medical purposes; cigarette filters; pocket machines for rolling cigarettes; liquid nicotine solutions for use in electronic cigarettes; electronic cigarettes.

Class 35: Advertising; television advertising; on-line advertising on a computer network; presentation of goods on communication media, for retail purposes; commercial administration of the licensing of the goods and services of others; organization of exhibitions for commercial or advertising purposes; marketing; sales promotion for others; import-export agency services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 9

The contested chargers for electronic cigarettes are similar to the opponent´s smokers' articles which logically includes electronic cigarettes in Class 34. Although their nature and purpose are different, the goods under comparison are used in combination with each other. They are marketed through the same channels and directed at the same consumers. Furthermore, they can coincide in producers.

The rest of the contested goods in Class 9 namely : Batteries, electric; battery chargers; accumulators, electric; batteries for lighting; photovoltaic cells; solar batteries; chargers for electric batteries are mainly batteries and chargers that are aimed to provide a source of electric current. On the other hand, the opponent’s goods in Class 34 are tobacco products and its substitutes, which are produced by much specialised companies that are usually engaged in the growth, preparation for sale and distribution of tobacco and tobacco products. The Opposition Division sees no connection between the aforementioned opponent´s goods and the contested goods in Class 34 that could result in a finding of similarity.

Similar reasoning can be adopted for the opponent´s smokers' articles. They are different to the goods covered by the contested mark (with the exception of the chargers for electronic cigarettes) which are electric apparatuses in Class 9. There exists no link between the goods, their producers, purpose and distribution channels are clearly different and the consumers will not believe that they come from the same undertaking.

In fact, the conflicting goods are sold in different departments or even different kinds of shops, and they are sufficiently removed from each other, as their natures, commercial origin purposes, methods of use and distribution channels are entirely different. Moreover, they are not in competition. Consequently, the Opposition Division finds these goods dissimilar to all the opponent’s goods in Class 34.

The opponent does not submit evidence in support of its generic assertion that goods in Class 9 are similar to the goods in Class 34. The submitted Decision of 07/09/2016, R 1737/2015-5, Villa/Villa Dominicana rendered by the Fifth Board of Appeal cannot be extrapolated to the present case. In fact, in the referred case, all the contested goods in Class 9 were explicitly related to electronic cigarettes, which is not the case at issue (with the exception of the contested chargers for electronic cigarette).

Contested goods in Class 34

The contested cigarettes; cigarettes containing tobacco substitutes, not for medical purposes are included in the opponent´s broader category of tobacco. Therefore, they are identical.

The contested cigarette tips; cigarette cases; lighters for smokers; matchboxes; cigarette filters; pocket machines for rolling cigarettes; liquid nicotine solutions for use in electronic cigarettes; electronic cigarettes are included in the opponent´s broader category of smokers' articles. Therefore, they are identical.

Contested services in Class 35

Part of the contested services, namely presentation of goods on communication media, for retail purposes; advertising; television advertising; on-line advertising on a computer network ; organization of exhibitions for commercial or advertising purposes; marketing; sales promotion for others are mainly advertising services of unspecified goods or services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. 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 services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Likewise, the fact that some goods can be used as a medium for disseminating advertising, such as some smokers' articles in Class 34 is also insufficient given the huge differences between them in terms of the Canon criteria. Therefore, the services of presentation of goods on communication media, for retail purposes; advertising; television advertising; on-line advertising on a computer network ; organization of exhibitions for commercial or advertising purposes; marketing; sales promotion for others are dissimilar to the opponent’s goods.

The contested import and export agency services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. The opponent´s goods are to be considered dissimilar to import and export services for those particular goods in Class 34. The fact that the subject matter of the import/export services and the goods in question may be the same is not a relevant factor for a finding of similarity (Guidelines, Part C, Opposition, Section 2, Double identity and likelihood of confusion, Chapter 2, Comparison of goods and services, point 7.7). Therefore, the contested import-export agency services have nothing in common with any of the opponent’s goods. They belong to different areas of activity, have different purposes and are provided by different types of companies.

The contested commercial administration of the licensing of the goods and services of others are services intended to facilitate licensing of certain matters on behalf of a client and they are dissimilar to the goods in Class 34. They differ in nature, purpose, method of use, distribution channels and points of sale. They do not target the same consumers and are not likely to come from the same kinds of undertakings. In addition, they are neither complementary nor interchangeable.

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 are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 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.).

3. The signs

ENERGY
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. The Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier mark ‘ENERGY’ will be associated by the relevant public as a synonym of intensity, vitality or source of power. In fact very similar words with equivalent meanings exist in most of the relevant languages: Energia in Spanish, Italian, Portuguese, Polish or Slovak or Energija in Slovenian and Enerya in Greek. As those are not the states that consumers may expect from consuming tobacco and its substitutes, the word enjoys an average degree of distinctiveness for the relevant tobacco products and its substitutes.  

The contested sign consists of the verbal element ‘ENERGYSTASH’. Even though is depicted as one word, the relevant consumers 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). Therefore, the relevant non-English-speaking consumers will perceive the contested sign as consisting of two words: ‘ENERGY’, having the meaning indicated above and ‘STASH’ with no particular meaning in the relevant territory and being, therefore, distinctive.

As far as the goods in Class 9 chargers for electronic cigarettes are involved, the word ‘ENERGY’ indicates a characteristic (intended purpose) of the conflicting goods and to that extent; it is descriptive for the said goods. However, as already said, the word ENERGY enjoys an average degree of distinctiveness for the relevant tobacco products and its substitutes in Class 34.

The circular figurative element of the contested mark will be perceived as a stylized figurative device with no concrete or clear meaning. As a result, the distinctiveness of the figurative element is considered average, since it will not be associated with a particular concept and is not purely decorative.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the presence of the element ‘ENERGY’ which constitutes the sole element of the earlier mark and the six first letters of the verbal element of the contested sign. On the other hand, they differ in the contested sign´s ending, ‘STASH’, and in its figurative element. Consequently, the first part of the conflicting mark is identical to the entirety of the earlier mark. Given that the public reads from left to right, the part placed at the left of the sign (the initial part) is the one that first catches the attention of the consumers.

Concerning the figurative element of the contested sign and according to established case-law, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

As seen above, for the goods in Class 9 namely chargers for electronic cigarettes, the element ‘ENERGY’ of the contested sign have no impact on the public’s perception due to its absence of distinctiveness. Consequently, and taking into account that the earlier mark is composed of the sole element ‘ENERGY’, for goods in Class 9, the signs are visually not similar.

However, for the rest of the goods in Class 34, all the elements of the signs have an average degree of distinctiveness and, therefore, the marks are visually similar to an average degree.

Aurally, for the goods in Class 34, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘/E/’-‘/NER/’- ‘/GY/’. The pronunciation differs in the syllable ‘/STASH/’ of the contested mark, which has no counterpart in the earlier sign and to that extent the signs are aurally similar to an average degree.

However, for the goods of the contested mark in Class 9 chargers for electronic cigarettes,  the signs overlap in the term ‘ENERGY’ which is non distinctive in the contested sign The differentiating verbal element ‘STASH' that have a distinctive meaning and capture more the attention of the relevant public, has nothing in common with the element of the earlier mark. As the overlap has no impact, the signs are aurally not similar for these goods.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and to that extent,  for the goods in Class 34, as the signs will be associated with a similar meaning, the signs are similar to an average degree.

However, for the goods in Class 9, the signs overlap in an element which is non-distinctive in the contested mark and, therefore, the signs are not conceptually 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. 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 average.

5. 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.

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).

In the present case, based on the average degree of inherent distinctiveness of the earlier mark and taking into account all the relevant circumstances of the case, it can be reasonably concluded that the relevant public can perceive the contested sign as a configuration of the earlier mark or vice versa. The differences identified between the signs are insufficient to enable the average consumers to safely distinguish between the signs, even where the degree of attention is high when purchasing the goods. Thus the public can be led to believe that the contested goods that have been found identical or similar to those of the earlier mark are offered by the same undertaking, or an economically linked undertaking.

-Moreover, the goods have been found to be identical, similar and dissimilar whereas the services are dissimilar.

The signs are visually, aurally and conceptually similar to an average degree on account on the coinciding letters ‘ENERGY’ for the goods in Class 34. On the other hand, for the goods in Class 9, as the term of the contested sign ‘ENERGY’ is non-distinctive, the sign are aurally, visually and conceptually not similar.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking 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 8 777 948  . 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.

It follows from the above that the contested trade mark must be rejected for the goods in Class 34 found to be identical to those of the earlier trade mark.

For the goods in Class 9 namely chargers for electronic cigarettes that have been found to be similar to the earlier’ s mark smokers articles, the word ‘ENERGY’ is non distinctive and the signs present differing elements that have no counterpart in the other mark. These facts help the signs to have differing overall impressions and, therefore, there is no likelihood of confusion for chargers for electronic cigarettes and the opposition must be rejected as far as they are concerned.

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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

Alexandra APOSTOLAKIS

Richard BIANCHI

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.