OPPOSITION No B 2 201 245

Titania Fabrik GmbH, Fortunastr. 10-14, 42489 Wülfrath, Germany (opponent), represented by Buse Mentzel Ludewig, Kleiner Werth 34, 42275 Wuppertal, Germany (professional representative)

a g a i n s t

Hankintatukku Arno Latvus Oy, Museokatu 13 b, 00100 Helsinki, Finland (applicant), represented by Boco IP Oy Ab, Itämerenkatu 5, 00180 Helsinki, Finland (professional representative).

On 26/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 201 245 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 Community trade mark application No 11 637 121 for the word mark ‘VIVANIA’, namely against all the goods in Classes 3 and 5. The opposition is based on earlier international trade mark registration designating Bulgaria, Benelux, the Czech Republic, Spain, France, Italy, Latvia, Hungary, Poland, Romania and Slovakia No 836 469, and earlier German trade mark registrations No 39 804 560 and No 997 446, all for the word mark ‘TITANIA’. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARKS

On 01/04/2014, the Opposition Division rendered a decision, based on earlier international mark designating Spain No 836 469 and earlier German mark No 39 804 560, which resulted in the partial rejection of the contested Community trade mark application on the grounds that there was a likelihood of confusion because the signs were similar and the goods were partly identical and similar.

The decision was appealed and the Board of Appeal decided in case R 1377/2014‑2 on 12/05/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division erred in rejecting the applicant’s trade mark for the contested goods because there is no likelihood of confusion between, on the one hand, the trade mark applied for and, on the other hand, earlier German mark No 39 804 560 or international trade mark registration No 836 469 insofar as it designates Spain.

Consequently, the Opposition Division must assess the likelihood of confusion between the signs on the basis of international trade mark registration No 836 469 insofar as it designates all the other Member States except Spain, that is, Bulgaria, Benelux, the Czech Republic, France, Italy, Latvia, Hungary, Poland, Romania and Slovakia.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

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

Class 3: Pumice sponges, swabs, perfumery, cosmetics.

The contested goods are the following (after the applicant’s limitations submitted on 10/06/2013 and 28/07/2014):

Class 3: Bleaching preparations and other substances for laundry use; cosmetics, hair lotions.

Class 5: Pharmaceutical and veterinary preparations, excluding corn remedies; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals.

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

Cosmetics are identically contained in both lists of goods. Therefore, they are identical.

The contested hair lotions may be considered a cosmetic product (see Article 1.1 and 1.2 and Annex I of the Council Directive of 27 July 1976 as subsequently amended on the approximation of the laws of the Member States relating to cosmetic products, from which it follows that hair care products (including hairdressing products such as lotions) are cosmetic products). Taking this into account, the contested hair lotions are included in the general category cosmetics of the earlier mark. Therefore, they are identical.

The contested bleaching preparations and other substances for laundry use are for whitening and laundry use. Although they can be used for cleaning, like the opponent’s pumice sponges; swabs, this is not sufficient for a finding of similarity between them. Their nature and purpose are dissimilar. Furthermore, they target different consumers and are sold in different retail outlets or in different sections in supermarkets. Therefore, these goods are considered dissimilar. The same criteria apply when comparing these contested goods with the opponent’s perfumery, cosmetics.

Contested goods in Class 5

The contested pharmaceutical preparations, excluding corn remedies are characterised by their medical purpose. These are pharmaceutical products used to treat illnesses or to protect one’s health. They have the primary purpose of preventing, curing and relieving illnesses. The opponent’s cosmetics, on the other hand, are mainly used for beauty care or hygiene. Therefore, whereas the contested goods have a medical purpose, the opponent’s goods are intended to enhance beauty. However, numerous medical preparations have the additional purpose of beautifying, for example skin creams, and certain cosmetic goods may also alleviate the symptoms of a disease. Therefore, the line between cosmetics and pharmaceutical products cannot be easily drawn, as, in general terms, the opponent’s cosmetics may be used as ‘soft’ remedies, that is, as substitutes for various pharmaceutical products.

Furthermore, the contested goods are sold in pharmacies. This also applies to various goods that fall within the general category of cosmetics, even though in general terms their sales channels also include other commercial outlets, such as beauty shops or special areas of department stores. Furthermore, although both the contested goods and some of the opponent’s goods are sold in pharmacies, they are identified there as different categories of goods, medical and non-medical, respectively. As a consequence, cosmetics are generally placed, unlike pharmaceutical preparations, in an area that is accessible to the public. In addition, certain pharmaceutical companies also produce cosmetic preparations.

Therefore, the contested pharmaceutical preparations, excluding corn remedies and the opponent’s cosmetics can be considered similar.

However, the link between the contested veterinary preparations, excluding corn remedies and any of the goods covered by the earlier international mark is (practically) non-existent, as they are sold in different outlets, target different consumers, are not complementary or in competition, have different natures and purposes and are not manufactured by the same kind of undertaking. Therefore, these goods are dissimilar.

The contested dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals have nothing in common with the opponent’s goods. Although some of them may be found in the same outlets, this is not sufficient for a finding of similarity between them. They have different natures and purposes and target different users. They are not complementary or in competition. Therefore, these goods are dissimilar.

2. The signs

TITANIA	VIVANIA
Earlier trade mark	Contested sign

The relevant territories are Bulgaria, Benelux, the Czech Republic, France, Italy, Latvia, Hungary, Poland, Romania and Slovakia.

Visually, the signs are similar to the extent that they coincide in the letters ‘*I*ANIA’. However, they differ in the letters ‘T*T*’ of the earlier mark and ‘V*V*’ of the contested sign. The differing letters appear twice.

Aurally, irrespective of the different pronunciation rules in the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘*I*ANIA’, present identically in both signs, and to that extent the signs are aurally similar. The sequence of vowels, number of syllables, rhythm and intonation of the signs are identical in both marks. The pronunciation differs in the sound of the letters ‘T*T*’ of the earlier mark and ‘V*V*’ of the contested sign.

Conceptually, the earlier mark, ‘TITANIA’, closely resembles the words for ‘TITANIUM’ in the relevant languages, namely ‘ТИТАНИУМ/TITANIUM’ (Bulgarian), ‘TITANE’ (French), ‘TITANIUM’ (Dutch), ‘TITAN’ (Czech), ‘TITANIO’ (Italian), ‘TITĀNS’ (Latvian), ‘TITÁNIUM’ (Hungarian), ‘TYTAN’ (Polish), ‘TITAN’ (Romanian) and ‘TITÁN’ (Slovak). Furthermore, the beginning of the earlier mark, ‘TITAN’, will be associated with a person or thing of very great strength, intellect or importance by consumers speaking the relevant languages, as this element or a similar equivalent exists in those languages: ‘ТИТАН/TITAN’ (Bulgarian), ‘TITAN’ (French), ‘TITAN’ (Dutch), ‘TITÁN’ (Czech), ‘TITANO’ (Italian), ‘TITĀNS’ (Latvian), ‘TITÁN’ (Hungarian), ‘TYTAN’ (Polish), ‘TITAN’ (Romanian) and ‘TITAN’ (Slovak).

The beginning of the contested sign, ‘VIVA’, is likely to be understood, at least by the French- and Italian-speaking parts of the public, as evoking the idea of vitality or something that is full of life. For the rest of the public, the contested sign has no meaning.

Therefore, for the part of the public for which only the earlier mark has a meaning, since the contested sign will not be associated with any meaning, the signs are not conceptually similar. For the part of the public for which both signs have a meaning, since the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

Despite the fact that the beginnings of the marks under comparison have a low degree of distinctive character for part of the relevant public, it must be noted that, as a whole, they have a normal degree of distinctive character for the goods in question.

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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 are directed at the public at large as well as professionals in the pharmaceutical and medical sectors. The professional public, by definition, has a higher level of attention than the average consumer (judgment of 12/01/2006, T‑147/03, ‘Quantum’, paragraph 62). However, in cases involving two groups of consumers with different degrees of attention, the group with the lesser degree shall be considered (judgment of 15/02/2011, T‑213/09, ‘Yorma’s’, paragraph 25).

As for the health-related nature of the contested goods in Class 5, it should be pointed out that, according to case-law, first, medical professionals display a high degree of attentiveness when prescribing medicines and, second, with regard to end consumers, it can be assumed, where pharmaceutical products are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even supposing a medical prescription to be mandatory, consumers are likely to display a high degree of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical products. Accordingly, medical products, whether or not acquired on prescription, may be regarded as products to which consumers, who are reasonably well-informed and reasonably observant and circumspect, pay a high degree of attention. Therefore, in the circumstances, the relevant public should on any view be regarded as likely to display a higher than average degree of attentiveness, even with regard to pharmaceutical products that can be purchased without prescription (judgment of 10/12/2014, T‑605/11, ‘BIOCERT’, paragraphs 20-21 and the case-law cited therein).

As for the contested cosmetics, including hair lotions, in Class 3, the General Court has found it probable that considerable care will be taken in acquiring the goods in question (judgment of 18/10/2011, T‑304/10, ‘Caldea’, paragraph 58) and that consumers of the Class 3 goods at issue will tend to pay more attention to their purchase than they would to common everyday goods (see also judgment of 29/09/2011, T‑107/10, ‘Naturaviva’, paragraph 24).

Consequently, in the present case, the relevant public’s degree of attention will be higher than normal.

6. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. The signs are visually similar to a low degree and aurally similar to an average degree. The signs have five letters in common out of seven and the differing letters are placed in the first and third positions. This means that the beginnings of the marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the fact that the beginnings of the marks at issue are different has to be taken into account when assessing the likelihood of confusion between the marks. Furthermore, from the visual point of view, the fact that the differing letters are repeated in both signs strengthens the differences between them. On the other hand, from the aural point of view, the signs have the same number of syllables and the same sequence of consonants and vowels, with the result that they have the same rhythm and intonation and are aurally similar to a certain degree.

However, the visual and phonetic similarities between marks may be counteracted by conceptual differences. For there to be such a counteraction at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (judgment of 06/05/2008, T‑246/06, ‘Reverie’, paragraph 34 and the case-law cited therein).

Taking into account all of the above, the relevant public in the relevant territories will perceive the meaning of the words ‘TITAN’/‘TITANIUM’ in the earlier mark, ‘TITANIA’, and the concept of ‘vitality’ in the contested sign, ‘VIVANIA’. Therefore, the Opposition Division considers that the conceptual differences counteract the visual and aural similarities.

Therefore, the relevant public, which has a high degree of attention, will not be misled into thinking that the goods bearing the contested mark and the earlier mark come from the same undertaking or, as the case may be, from undertakings that are economically linked. This is true even for the goods that are identical or similar.

Considering all the above, there is no likelihood of confusion on the part of the relevant public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Isabel DE ALFONSETI

Juan Antonio MORALES PAREDES

Maria Luce CAPOSTAGNO

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.