OPPOSITION No B 1 898 280

Recuperat-ion Electrolitos, S.L., Calle Craywinckel, 7, 08022 Barcelona, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Laboratoire Lescuyer (SAS), 10, rue Crillon, 75004 Paris, France (applicant), represented by Cabinet Smissaert, 22, quai Louis Durand, 17 000 La Rochelle, France (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 898 280 is upheld for all the contested goods.

2. European Union trade mark application No 9 962 507 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 9 962 507. The opposition is based on, inter alia, European Union trade mark registration No 8 859 746. 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 8 859 746.

1. The goods

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

Class 3: Soaps, perfumery, essential oils, cosmetics and hair lotions; dentifrices.

Class 5: Pharmaceutical preparations, dietetic substances adapted for medical use and dietetic substances for sportsmen and women adapted for medical use.

Class 32: Beers; isotonic beverages.

The contested goods are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food supplements for medical purposes; food supplements (not for medical purposes) for human consumption for the purpose of supplementing a normal diet, namely made from plants, weed extracts or mushrooms, vitamins, minerals, trace elements, amino acid and other substances for nutritional and/or physiological purposes; dietetic substances (not for medical purposes), namely made from plants, weed extracts or mushrooms, vitamins, minerals, trace elements, amino acid and other substances for nutritional and/or physiological purposes.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks, except non-alcoholic beverages containing malt flour and/or extract and/or malt-based flavour; fruit drinks and fruit juices; syrups and other preparations for making beverages, except preparations for beverages containing malt flour and/or extract and/or a malt-based flavour.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 3

Soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices are identically contained in both lists of goods.

Contested goods in Class 5

Pharmaceutical preparations; dietetic substances adapted for medical use are identically contained in both lists of goods.

A pharmaceutical preparation refers to any kind of medicine, i.e. a substance or combination of substances for treating or preventing diseases in human beings or animals. From this definition, it can be concluded that the contested veterinary preparations are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested food supplements for medical purposes are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested sanitary preparations are similar to a high degree to the opponent’s pharmaceutical preparations. They have the same purpose, distribution channels, producers and relevant public.

The contested food supplements (not for medical purposes) for human consumption for the purpose of supplementing a normal diet, namely made from plants, weed extracts or mushrooms, vitamins, minerals, trace elements, amino acid and other substances for nutritional and/or physiological purposes; dietetic substances (not for medical purposes), namely made from plants, weed extracts or mushrooms, vitamins, minerals, trace elements, amino acid and other substances for nutritional and/or physiological purposes are various substances prepared to meet special dietary requirements, with the purpose of providing nutrition to maintain a healthy body. Therefore, their purpose is similar to that of the opponent’s pharmaceutical preparations, insofar as they are used to improve a person’s medical condition. They also have the same relevant public and they generally have the same distribution channels (e.g. both pharmaceutical products and food/dietetic supplements may be sold in pharmacies). Therefore, these goods are considered similar.

Contested goods in Class 32

Beers are identically contained in both lists of goods.

Isotonic beverages are sports drinks, with the purpose of helping athletes to replace water, electrolytes and energy before and after training or competition. Although sports drinks are specifically designed to boost the drinkers’ energy levels and improve physical stamina, this does not make these drinks substantially different from water. Water and sports drinks are both consumed as refreshments and both have a re-energising effect.

The contested syrups and other preparations for making beverages, except preparations for beverages containing malt flour and/or extract and/or malt-based flavour are similar to a high degree to the opponent’s isotonic beverages. They have the same purpose, distribution channels and relevant public, and they are in competition.

The contested mineral and aerated waters are also highly similar to the opponent’s isotonic beverages. The goods have the same purpose, are distributed through the same channels, such as grocery stores and supermarkets, are usually displayed side by side or in close proximity to one another, and target the same consumers, for whom the goods are interchangeable.

The contested other non-alcoholic drinks, except non-alcoholic beverages containing malt flour and/or extract and/or malt-based flavour; fruit drinks and fruit juices are similar to the opponent’s isotonic beverages. They have the same purpose, distribution channels and relevant public, and they are in competition.

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 various degrees) are directed at the public at large and at specialists.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention is therefore considered to range from average to higher than average, depending on the goods in question; the goods in Class 5 will attract a higher degree of attention.

3. The signs

VIT-AMIN-T
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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘VIT-AMIN-T’.

The earlier mark ‘VIT-AMIN-T’ will be associated with ‘vitamin t’. However, it is an obsolete term for a mixture of growth-promoting substances (e.g. amino acids, DNA nucleotides, folac acid and vitamin B12) which promotes growth and wound-healing in yeasts and insects. Vitamin T is not a true vitamin (http://medical-dictionary.thefreedictionary.com/vitamin+T).

Bearing in mind that the relevant goods are, inter alia, cosmetics, pharmaceuticals and drinks, which all may contain vitamins, the earlier mark is allusive for some of the relevant goods, namely for essential oils, cosmetics and hair lotions; pharmaceutical preparations, dietetic substances adapted for medical use and dietetic substances for sportsmen and women adapted for medical use; isotonic beverages.

The contested mark is a figurative mark containing a word element, ‘VITAMINAT’, in a standard typeface and, above these letters, a depiction of three stars. The word as such has no meaning. The mark has no elements that are more distinctive or dominant than others.

Visually, the signs coincide in their first letters, ‘VITAMIN’, and in their last letter, T, and these letters constitute the allusive verbal element in the earlier mark. However, they differ in the two hyphens in the earlier mark and in the penultimate letter ‘A’ of the contested sign, as well as in its figurative elements and minor degree of stylisation. None of these differing elements has a counterpart in the opposing sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VITAMIN*T’, present identically in both signs. The pronunciation differs in the sound of the penultimate letter ‘A’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for some of the goods in question, namely essential oils, cosmetics and hair lotions in Class 3, pharmaceutical preparations, dietetic substances adapted for medical use and dietetic substances for sportsmen and women adapted for medical use, in Class 5 and isotonic beverages in Class 32. The mark has a normal degree of distinctiveness for the remaining goods, soaps, perfumery, dentifrices and beers, in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to various degrees to the opponent’s goods.

When a sign consists of both verbal and figurative components, as does the contested mark, the verbal elements of the sign usually have a stronger impact on the consumer than the figurative component. This is because the public will more readily refer to a sign by its verbal component, rather than by describing the elements of stylisation.

The signs are visually and aurally similar to an average degree, to the extent that they have the sequence of letters ‘VITAMIN*T’ in common, albeit hyphenated in the earlier mark.

Consumers generally tend to focus on the beginning of a sign, as is the case here, when they encounter a trade mark. This is because 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. In the present case, the differentiating element of the letter A comes at the end of the contested sign, which is usually the part of a sign that does not attract the primary attention of the consumer. Furthermore the differing element does not affect the concept conveyed by the contested sign. The stars will have a limited impact on the consumer’s perception.

The finding that part of a mark (earlier mark in the present case) has limited distinctive character in respect of some of the goods does not preclude a finding that there is a likelihood of confusion. As a whole, the earlier mark has a lower than average degree of distinctiveness for some of the goods. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services (13/12/2007, T‑134/06, ‘Pagesjaunes.com’, EU:T:2007:387, § 70).

It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be 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 Meyer, EU:C:1999:323).

Based on the principle of imperfect recollection, as well as the principle of interdependence between the relevant factors, that is, that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, and given the identity or similarity between the goods in question, it is considered that the established similarities between the signs are sufficient to cause the public to believe that that the identical or similar goods come from the same undertaking or economically linked undertakings.

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).

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 8 859 746. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark No 8 859 746 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 rights 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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Erkki MÜNTER

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.