CANCELLATION No 42 845 C (INVALIDITY)

U.G.A. Nutraceuticals Srl, Via L. Pavoni, 1, 20900 Monza, Italy (applicant), represented by Legance Avvocati Associati, Via Broletto, 20, 20121 Milan, Italy (professional representative)

a g a i n s t

Vitae Health Innovation, S.L., Verneda del Congost, nº 5 Polígon Industrial del Circuit, 08160 Montmeló, Spain (EUTM proprietor), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Pau Claris, 108 1º 1ª, 08009 Barcelona, Spain (professional representative).

On 03/05/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 14 496 509 is declared invalid for all the contested goods, namely:

Class 5: Pharmaceutical preparations, dietetic substances for medical use.

3. The European Union trade mark remains registered for all the uncontested services, namely:

Class 39: Distribution of natural medicinal products.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 08/04/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 14 496 509 ‘VITANADH’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 5. The application is based on Italian trade mark registration No 1 245 500 ‘VITADHA’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant refers to decision dated 30/09/2019 rendered in opposition proceedings No B 2 984 956 between the same parties (copy submitted in Annex 2), considering that there was a likelihood of confusion between the marks ‘VITANADH’ and ‘VITADHA’. The applicant further argues that the earlier mark enjoys a substantial reputation and goodwill among the relevant consumers and that there is a likelihood of confusion because of the identity of the goods and the similarity of the signs.

The EUTM proprietor argues that it owns several ‘VITANADH’ marks that are prior to the applicant’s Italian trade mark No 1 245 500 (filed on 09/11/2007), namely EUTM No 4 513 305, filed on 25/07/2005, and Spanish trade mark registration No 2 603 444, filed on 24/06/2004, and that these marks have been in use since 2004. It submits, as Annexes 1 and 2, the registration and renewal certificates of the Spanish mark and the partial renewal of the EUTM. It also claims that its ‘VITANADH’ trade marks have been used for several years and submits the following evidence to support its observations:

 Annexes 3 and 4: brochures in Spanish (partly translated into English), dated in 2011 and 2013, for ‘Vitanadh’ (a dietetic supplement).

 Annexes 5 and 6: technical data sheets for ‘Vitanadh’, dated in 2015 and 2016.

 Annex 7: advertising banner, dated July 2017, for ‘Vitanadh’.

The EUTM proprietor further argues that the applicant’s arguments are contradictory to those submitted in opposition proceedings 30/09/2019, No B 2 984 956.

In reply, the applicant argues that the marks invoked by the EUTM proprietor are not part of the present proceedings, the evidence of use submitted by the EUTM proprietor is irrelevant and the EUTM invoked (EUTM No 4 513 305) covers different goods and services in Classes 3, 39 and 44.

In its final observations, the EUTM proprietor reiterates its arguments about its prior rights, their use in the market since 2004 and the applicant’s contradictory arguments in different procedures (opposition/cancellation proceedings).

LIKELIHOOD OF CONFUSION – ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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.

a) The goods

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

Class 5: Pharmaceutical and veterinary products; dietetic substances for medical use; dietetic food products and supplements for medical use.

The contested goods are the following:

Class 5: Pharmaceutical preparations, dietetic substances for medical use.

Pharmaceutical preparations, dietetic substances for medical use are identically contained in both lists of goods (including synonyms).

b) 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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the medical or nutritional field.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

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. This also applies to dietetic substances for medical use (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

VITADHA	VITANADH
Earlier trade mark	Contested sign

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Although the relevant consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The component ‘VITA’, in both signs, means ‘life’ in Italian and will be associated with the words ‘vital’ or ‘vitality’. It strongly alludes to the relevant goods, conveying the message that the goods are healthy or increase vitality. Therefore, it has a weak distinctive character.

The general public will not attribute any meaning to the components ‘DHA’ and ‘NADH’ (15/01/2021, R 2719/2019‑4, Vitadha / Vitanadh, § 32). Therefore, they are distinctive to an average degree.

Consumers generally tend to focus on the beginning of a sign 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.

Visually, the signs are approximately the same length, they coincide in their beginnings, ‘VITA’, and in their last three letters ‘D’, ‘H’, ‘A’, albeit in a different order. They differ in the additional letter ‘N’ of the contested mark, which has no counterpart in the earlier mark. Considering that the first part of a trade mark normally has a greater impact (20/11/2017, T‑403/16, Immunostad / ImmunoStim, EU:T:2017:824, § 31), even though their beginnings, ‘VITA’, is weak, the signs are considered visually similar to an above-average degree.

Aurally, both signs have three syllables, ‘vi-tad-ha’ or ‘vi-ta-dha’ as opposed to ‘vi-ta-nadh’. They have identical vowel sequences and their rhythms and intonation are similar. They coincide in the sounds of the initial letters ‘VITA’. Despite the differences in the endings and the additional letter ‘N’ within the contested mark, their degree of similarity is above average.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘VITA’, included in both signs, will be associated with ‘life’, as explained above. Given the weak character of this coinciding element, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 applicant claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence to prove this claim.

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 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a weak element in the mark as stated above in section c) of this decision.

e) 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).

The goods are identical. The degree of attention of the public is higher than average and the distinctiveness of the earlier mark is normal.

The degree of visual and aural similarity between the marks is above average. The signs are conceptually similar to a low degree.

In the Cancellation Division’s view, the similarities between the signs clearly outweigh the differences, which are the additional letter ‘N’ in the middle part of the contested mark and the different order of the letters in their respective endings, ‘DHA’/‘ADH’.

In this regard, account must 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, 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 its observations, the EUTM proprietor argues that it owns several ‘VITANADH’ marks that are prior to the applicant’s Italian trade mark No 1 245 500 (filed on 09/11/2007), namely EUTM No 4 513 305, filed on 25/07/2005, and Spanish trade mark registration No 2 603 444, filed on 24/06/2004, and that these marks have been used since 2004.

The prior rights invoked by the EUTM proprietor are irrelevant to the present proceedings. Although the Cancellation Division must ascertain the existence and validity of the earlier right invoked in support of the application for invalidity on the basis of evidence that the applicant is obliged to provide, it is not responsible for ruling on a conflict between that mark and another mark at a national level. This type of conflict falls within the competence of the national authorities.

Furthermore, as stated by the EUTM proprietor, EUTM No 4 513 305 was not renewed for goods in Class 5. Regarding the use of the marks invoked by the EUTM proprietor, the evidence submitted by the EUTM proprietor dated 2011-2017 does not prove that the products were in fact on the market and that a substantial part of the public knew that the contested sign was used for the goods in Class 5. The argument of coexistence fails as the EUTM proprietor has not shown that the relevant public has encountered both the contested and the earlier trade mark on the market (02/10/2013, T‑285/12, Boomerang, EU:T:2013:520, § 54-60).

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the EUTM proprietor duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that coexistence is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Cancellation Division consider evidence of the coexistence of other marks in the market (and possibly in the register, which is not the case here) at national/Union level as an indication of ‘dilution’ of the distinctive character of the applicant’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the EUTM proprietor must be rejected as unfounded.

Conclusion

Considering all the above, there is a likelihood of confusion on the part of the relevant public, that is the general public, even taking into account its high degree of attention.

Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested mark, there is no need to analyse the remaining part of the public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69).

Therefore, the application is well founded on the basis of the applicant’s Italian trade mark registration No 1 245 500. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ioana MOISESCU

Frédérique SULPICE

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.