OPPOSITION No B 2 893 686

Vital Kogyo Kabushiki Kaisha, 2-2-9, Yasuda, Tsurumiku, Osaka, Japan (opponent), represented by VKK Patentanwälte Partg MBB, An der Alster 84, 20099, Hamburg, Germany (professional representative)

a g a i n s t

Vitali International Lifting Equipment Limited, 11/F, Tung Lee Building, 1043 Tung Chau West Street, Cheung Sha Wan, Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative).

On 30/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 893 686 is upheld for all the contested goods.

2. European Union trade mark application No 16 055 105 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 055 105 , namely against the goods in Classes 7 and 12. The opposition is based on, inter alia, European Union trade mark registration No 15 495 443 . 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 15 495 443.

a) The goods

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

Class 7: Chain blocks; motors and engines (except for land vehicles); machine couplings and belting (except for land vehicles); transmission components (except for land vehicles); agricultural implements; large size agricultural implements; incubators; lifting apparatus; hoists, winches, cranes; incubators for eggs; lifting gears including chain blocks, hoists, winches and cranes.

The contested goods are the following:

Class 7: Block and tackle; hoists; electric hoists; pneumatic hoists; ratchet hoist; steel hoists; rack hoists; wire hoists; spindle hoists; mechanical hoists; compressed air hoists; electric cable hoists; spur gear manual hoists; winches; jacks [machines]; lifting machines; clamping machines; safety manual hoists.

Class 12: Trolleys.

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 7

Hoists, winches and lifting machines are identically contained in both lists of goods (including synonyms).

The contested electric hoists; pneumatic hoists; ratchet hoist; steel hoists; rack hoists; wire hoists; spindle hoists; mechanical hoists; compressed air hoists; electric cable hoists; spur gear manual hoists; safety manual hoists are included in the broad category of the earlier hoists. Therefore, they are identical.

The contested block and tackle; jacks [machines] are included in the broad category of the earlier lifting apparatus. Therefore, they are identical.

The contested clamping machines are engines used to clasp for strengthening or holding things together. They can be parts of the opponent’s lifting apparatus. The contested clamping machines are similar to the earlier lifting apparatus because they have the same producers and relevant public. Furthermore, they are complementary.

Contested goods in Class 12

The contested trolleys are large metal baskets or frames on wheels, used for transporting heavy or large items. They are similar to a low degree to the earlier lifting apparatus because they can have the same producer and relevant public, they can be in competition and they can coincide in distribution channels.

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 or similar to various degrees are specialised goods directed at business customers with specific professional knowledge or expertise and for goods such as lifting machines, also to the general public.

The degree of attention will vary from average to high, considering the degree of specialisation and the cost of the relevant goods.

c) The signs

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 earlier mark is a figurative sign consisting of the word ‘VITAL’ in black bold upper typeface. The figurative element is a continuous line which partially surrounds and underlines the word. This figurative element is a purely decorative feature with no ability to function as a badge of origin.

The contested sign is a figurative sign consisting of the phrase ‘VITALI-INTL’ in standard orange italic upper typeface.

The element ‘VITAL’ of the earlier mark will be understood as ‘absolutely necessary; essential’ (information extracted from Oxford English Dictionary online on 23/11/2018 at https://en.oxforddictionaries.com/definition/vital) by part of the relevant public, such as English-, French-, Romanian- or Spanish-speakers. This element might be allusive to the indispensable condition of the goods and therefore is less distinctive.

For the rest of the public ‘VITAL’ has no meaning and is, therefore, distinctive.

The same reasoning applies to the element ‘VITALI’ of the contested sign as it is very close to ‘VITAL’.

The element ‘INTL’ of the contested sign will be associated with ‘international’, existing, occurring, or carried on between nations’ (information extracted from Oxford English Dictionary online on 23/11/2018 at https://en.oxforddictionaries.com/definition/international). This element is non-distinctive for all the relevant public as it describes the characteristic of the trading the goods across national borders.

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.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, French-, Romanian- or Spanish- non-speaking part of the public for which ‘VITAL’ is distinctive.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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 coincide in the initial string of letters ‘VITAL’, the only verbal element in the earlier mark, notwithstanding the different script of the letters. However, they differ in the additional last letter, ‘I’ in the word ‘VITALI’ and the non-distinctive word element ‘-INTL’, of the contested sign. The signs also differ in their figurative elements, the colours and stylisation of the lettering all of which have no mutual counterpart, but which have less of an impact.

Taking into account the coincidence in all the letters composing the only verbal element of the earlier mark and bearing in mind the non-distinctive character of the element ‘INTL’ in the contested sign and the limited impact of the stylisation, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘VITAL’, present identically at the beginning of both signs. The pronunciation differs in the sound of the last letter ‘I’ in ‘Vitali’ and of the non-distinctive word element ‘-INTL’, of the contested sign, which have no counterpart in the earlier mark.

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

Conceptually, the relevant public will only perceive the meaning of the element ‘INTL’ of the contested sign which is not distinctive, and therefore cannot be an indicator of origin for the goods. Consumers will focus on the remaining meaningless elements. Since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 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.

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 or similar to various degrees and target mainly professionals, which will have an average to high degree of attention. Furthermore, the earlier mark has a normal degree of distinctiveness for part of the relevant public.

The signs under comparison are visually and aurally similar to an average degree and, as a conceptual comparison is not possible, the conceptual aspect has no influence on the assessment of their similarity..

The letters making up the entire verbal element of the earlier mark are wholly included in the contested sign and they appear at its beginning, the part of the signs that first catches the public attention.

Taking into account all the circumstances of the case, there is a likelihood of confusion, including for the goods considered similar to a low degree, because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

Account is 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 applicant argues that many trade marks include the element ‘VITAL’. In support of its argument the applicant refers to several trade mark registrations in Europe.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘VITAL’. Under these circumstances, the applicant’s claims must be set aside.

The applicant argues that it holds several registered marks ‘VITALI-INTL’ in other registers and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant refers to a previous decision of the Supreme Court of 12/12/2003 (LACER v. LABER (fig)) to support its arguments on the similarity of signs. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings because the stylisation of the contested sign is more striking.

Considering all the above, there is a likelihood of confusion on the part of the non- speaking English, French, Romanian or Spanish 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 15 495 443. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 15 495 443 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), neither the proof of use relating to these other earlier marks.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Oana-Alina STURZA

Loreto URRACA LUQUE

Jessica LEWIS

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.