NITECORE | Decision 2800285

Date Published: Sep 28, 2017

OPPOSITION No B 2 800 285

British American Tobacco (Brands) Inc., 2711 Centerville Road, Suite 300, Wilmington, Delaware 19808, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Sysmax Industry Trading Company Limited, Rm 2601-06 Central Tower No. 5, Xiancun Road, Tianhe District Guangzhou, Guangdong  510623, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 800 285 is upheld for all the contested goods, namely 

Class 34: Electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; oral vaporizers for smokers; tobacco pipes; cigarette holders; flavorings, other than essential oils, for tobacco; flavorings, other than essential oils, for use in electronic cigarettes; cigarette filters; gas containers for cigar lighters; cigarette tips.

2.        European Union trade mark application No 15 713 498 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 713 498, , namely against all the goods in Class 34. The opposition is based on, inter alia, European Union trade mark registration No 13 687 793, ‘CORE’. 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 13 687 793. 

1. The goods

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

Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers’ articles.

The contested goods are the following:

Class 34: Electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; oral vaporizers for smokers; tobacco pipes; cigarette holders; flavorings, other than essential oils, for tobacco; flavorings, other than essential oils, for use in electronic cigarettes; cigarette filters; gas containers for cigar lighters; cigarette tips.

The contested electronic cigarettes; oral vaporizers for smokers; tobacco pipes, cigarette holders, cigarette filters, gas containers for cigar lighters and cigarette tips are included in the opponent’s smoker’s articles. Therefore, they are identical.

The contested liquid nicotine solutions for use in electronic cigarettes, flavorings, other than essential oils, for use in electronic cigarettes are liquids (flavours) intended for use in electronic cigarettes. The opponent’s smokers’ articles cover, as a broad category, all items or objects for smoking, including for instance electronic cigarettes, but also the contested liquids and flavourings used in electronic cigarettes. Bearing this in mind, the contested goods are included in the opponent’s smoker’s articles and these goods are identical.  

The contested flavorings, other than essential oils, for tobacco are substances (in the form of sprays or drops for instance) used to impart flavour to dried tobacco leaves, for example when used in smoking pipes. These goods are included in the opponent’s tobacco products. Therefore, these goods are deemed identical.

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.

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

CORE
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 elements of the signs will be perceived as meaningful in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part of the public the signs are more similar overall.

The sole element of the earlier mark ‘CORE’ (also present in the contested sign) will be understood by the public under analysis as ‘the part of something that is central to its existence or character’ (information extracted on 08/09/2017 from Oxford Dictionaries online https://en.oxforddictionaries.com/definition/core). Such a meaning has no obvious connection or link to the goods at issue. Therefore, ‘CORE’ is of normal distinctiveness. The initial word element of the contested sign, ‘NITE’, will be understood as colloquial for ‘night’ by the public under analysis, a meaning that has no obvious connection in relation to the goods in Class 34 and is, therefore, a distinctive element in the sign.

Although it is true that the contested sign is a figurative sign, represented in upper case black and bold, it remains that its graphic elements are neither elaborate nor sophisticated, at least not in such a way as to have an impact on the consumer. Therefore, it does not have much of an influence on the comparison of the signs, if at all.

Conceptually, both signs will be perceived as containing the distinctive concept of ‘core’ and they differ in the concept of ‘night’ conveyed by the distinctive element 'nite' in the contested sign. The public under analysis will perceive the contested sign as containing two individual concepts (‘night’ and ‘core’), placed together in a juxtaposition of words, and not as one single word with a new or different meaning altogether. Therefore, the signs are conceptually similar to an average degree.

Visually and aurally, the signs coincide in the word element ‘CORE’ (read and pronounced in both signs). It is true that the differing and distinctive element ‘NITE’ will be read and pronounced first in the contested sign, since the public reads from left to right which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, ‘CORE’ will be perceived as an individual distinctive element in the juxtaposition ‘NITECORE’ (as explained above). Since ‘CORE’ is also the only element to be read and pronounced in the earlier mark, and taking into account the limited visual impact caused by the graphic elements of the contested sign, the signs are visually and aurally similar to an average degree.

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 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 likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In the present case, the goods are identical. The signs are visually, aurally and conceptually similar for the public under analysis and the earlier mark is distinctive. Since the sole element of the earlier mark (‘CORE’) will be perceived as an individual element in the contested sign and taking into account the concept of night conveyed by ‘NITE’ in the contested sign, ‘NITECORE’ may be perceived as a sub brand originating from ‘CORE’, designating a different line of goods, which creates a risk of association between the signs.

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 European Union trade mark registration No 13 68 77 93. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right 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 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

Martina GALLE

Christian RUUD

Adriana VAN ROODEN

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.