VAPOWELT | Decision 2802224
Date Published: Sep 22, 2017
OPPOSITION No B 2 802 224
Florimond Desprez Veuve & Fils, 3, rue Florimond Desprez, 59242 Cappelle en Pévèle, France (opponent), represented by Cabinet Lepage, 848 Av. de la République, Bât. A - Appt 7D, 59700 Marcq-en-Baroeul, France (professional representative)
a g a i n s t
Guido Wagner, Friemarer Straße 12, 99867 Gotha, Germany (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 802 224 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 603 921 (figurative), namely against some of the goods in Class 34. The opposition is based on European Union trade mark registration No 11 879 831 (figurative). 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 goods
The goods on which the opposition is based are the following:
Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Seeds; Natural plants and flowers.
The contested goods are the following:
Class 34: Tobacco and tobacco products (including substitutes).
An interpretation of the wording of the list of goods is required to determine their scope of protection. The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 34
The opponent’s goods in Class 31 on which the opposition is based, cover the broad categories of grains and agricultural, horticultural and forestry products not included in other classes; seeds; natural plants and flowers. As a rule, these are land products not having been subjected to any form of preparation for consumption, i.e. unprocessed products and natural plants. The contested goods are the broad categories tobacco and tobacco products (including substitutes), which include tobacco (processed and unprocessed), tobacco-containing products (e.g. cigarettes, cigars. etc.) and substitutes of tobacco products (e.g. cigarettes containing tobacco substitutes).
The opponent submits that the contested goods are similar to its goods in Class 31 on argument that tobacco seeds are necessary for growing tobacco plants. The fact that tobacco seeds are necessary to grow tobacco plants, from which leaves tobacco is prepared, is unquestionable. However, this fact does not lead to a conclusion that there is similarity between seeds or more narrowly between tobacco seeds and tobacco and tobacco products.
A finding of similarity requires that the compared goods coincide in some of the relevant factors, as listed above. Such coincidence does not exist with respect to any of these factors. By analogy when raw and finished (transformed) products are compared, the seeds which are subject to a transformation process before they become a plant, which is then used to obtain the finished product, are essentially different from the resulting product, both by their nature and by their aim and intended purpose (9/04/2014, T- 288/12, Zytel, ECLI:EU:T:2014:196, § 43 and the case-law cited therein). In particular, while seeds are natural products for growing plants, tobacco is a product for producing tobacco-containing products and tobacco (processed), and tobacco products are products for smoking. The purpose of the former is growing of plants and of the latter – manufacture of tobacco products/ to serve as a smoking article.
Their method of use is apparently different, as well – growing of plants versus manufacture of tobacco products or smoking. The end users of seeds are farmers and owners of gardens, while of tobacco and tobacco products – tobacco products manufacturers and smokers. There is a significant difference in the distribution channels – seeds are sold at specialised shops and even when sold in general supermarkets, they are offered at the gardening department of the store. Tobacco and tobacco products are offered at different shops (supermarkets – offered at specialised sections of the shops, usually with restricted access due to applicable age limitations, shops for specialised goods like wine, alcohol, and tobacco products) and unprocessed tobacco is usually offered at specialised wholesale markets. Further, the fact that seeds are necessary to obtain tobacco does not mean that they are in a complementary relationship (see by analogy 13/04/2011, T-98/09, T Tumesa Tubos Del Mediterraneo S.A., § 49). The goods are not in competition, either.
None of the relevant factors is present when the rest of the goods of the opponent are compared to the contested ones, either. For the sake of completeness, it should be noted that the opponent’s agricultural, horticultural and forestry products not included in other classes does not include (unprocessed) tobacco, which falls under Class 34 and is therefore included in the list of the contested goods. Accordingly, no link at all exists between these goods of the opponent and the contested ones. Similarly, the remaining goods of the earlier mark, i.e. natural plants and flowers do not reveal coincidence of any of the relevant factors and hence – similarity- to the contested goods, either.
Substitutes of tobacco and tobacco products, which are part of the contested goods, are also dissimilar to the goods of the earlier mark, since their purpose, method of use and nature are completely different, they do not share end users or distribution channels, nor coincide with respect to any other of the relevant factors.
In view of the foregoing, the contested tobacco and tobacco products (including substitutes) are dissimilar to the earlier mark’s grains and agricultural, horticultural and forestry products not included in other classes; seeds; natural plants and flowers.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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
Eva Inés PÉREZ SANTONJA | Teodora TSENOVA-PETROVA | Vita VRONECKAITE |
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.