OPPOSITION No B 2 875 295

C & C IP UK Limited, C/O Matthew Clark, Whitchurch Lane, Whitchurch, Bristol BS14 JZ, United Kingdom (opponent), represented by F.R. Kelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Office Depot Inc., 6600 North Military Trail, 33496 Boca Raton, United States of America (applicant) represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative).

On 27/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 875 295 is partially upheld, namely for the following contested services:

Class 41: Animation production; video production; photography services.

2. European Union trade mark application No 16 151 921 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 16 151 921 , namely against all the services in Class 41. The opposition is based on European Union trade mark registration No 9 945 081 ‘VITAL’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opposition was filed by the company C & C IP SÀRL which was the name of the owner of the earlier right at the time of filing the opposition. However, during the opposition proceedings the earlier right was subject to a total transfer to the company C&C IP UK Limited the recordal of which was requested, such change having been recorded by the Office on 29/01/2020. As a consequence of the said transfer, and in the absence of notification to the contrary, C &C IP UK Limited substitutes the previous owner of the earlier right as the opponent in these proceedings.

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.

1. The services

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

Class 41: Arranging, organising, presentation and provision of music festivals, music concerts, cultural activities, live performances, exhibitions and shows.

The contested services are the following:

Class 41: Animation production; video production; photography services; desktop publishing; translation services.

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.

The contested animation production; video production; photography services are similar to the opponent’s provision of cultural activities and shows because they have the same general purpose of amusement or enjoyment. In addition, they may be expected to be rendered by the same undertaking or economically linked undertakings and may target the same relevant public.

Although, in its observations, the applicant submits that the customer circles differ (i.e. as between the services of the parties), the Office disagrees: while the contested terms animation production; video production; photography services are broad enough to encompass specialist-form services (as argued by the applicant), they are also broad enough to include such services that are provided to the general public (e.g. general entertainment or general cultural enjoyment), which is the same public as those at which the said services of the opponent are directed.

Desktop publishing is the creation of documents, normally using page layout software on a computer. It was first used almost exclusively for print publications, but now it also assists in the creation of various forms of online content.

Neither the contested desktop publishing nor the contested translation services shares relevant points of contact with the opponent’s services (which relate to services in the fields of entertainment and culture) to justify a finding of similarity: they have clearly different purposes and methods of use, being neither in competition nor complementary, having different distribution channels and providers. Therefore, they are dissimilar.

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 services found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise, for both of which the degree of attention is either average or above average, depending on factors such as, in particular, the price. For example, the relevant consumer is likely to exercise higher than average attention in relation to relatively expensive photography services such as for weddings or other special occasions.

3. The signs

VITAL
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

All the verbal elements are meaningful in certain territories, for example in those countries where the English language is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English language-speaking part of the public such as that in Ireland and Malta.

The earlier mark consists of the word ‘VITAL’. This word is meaningful for the public under analysis as it means, inter alia, essential or of great importance (information taken from Collins English Dictionary on 12/03/2020 at https://www.collinsdictionary.com/dictionary/english/vital). The usual meanings of this word normally convey, therefore, the idea of necessity.

As the services in question relate to entertainment or cultural events, the Opposition Division takes the view that the word ‘VITAL’ is not directly descriptive, because it does not exclusively describe a particular characteristic of such services: entertainment and cultural services are not normally described as being ‘vital’. The word ‘VITAL’ will be perceived, rather as being somewhat fanciful or even playful in relation to the services in question. That said, taking into account the clear allusion to the importance of the services in question, the word ‘VITAL’ enjoys below average distinctive character in relation to the said services.

The contested sign comprises the grey-coloured stylised word ‘VITAL’ (the horizontal bar of the letter ‘A’ of which is replaced with an inverted triangle), beneath which appears the grey-coloured slightly stylised word ‘COMMUNICATIONS’ in relatively very small letters, and to the left of which is placed an abstract figurative shape in shades of the colours purple, green and pink. The said stylisation of the words comprising the contested sign will be perceived as being merely decorative.

In its observations dated 23/10/2019, the applicant refers to the fact that a word mark EUTM application, No 15 918 063, to register the word combination ‘VITAL COMMUNICATIONS’ encountered a refusal notification by the EUIPO on the basis that the said word combination was laudatory of the goods and services applied for, including the relevant contested services in Class 41 at issue in the present proceedings.

The fact that the Office has previously held that the word combination ‘VITAL COMMUNICATIONS’ is devoid of distinctive character for the services in question does not thereby mean that each of the words ‘VITAL’ and COMMUNICATIONS’ forming part of the contested sign is devoid of distinctive character. The contested sign does not exclusively feature the word combination ‘VITAL COMMUNICATIONS’. As stated above, instead, it features a stylised word ‘VITAL’ placed above a much smaller slightly stylised representation of the word ‘COMMUNICATIONS’. The significance of the difference is that, in relation to the contested sign, each of these said words is (visually) perceived separately.

The said stylised word ‘VITAL’ of the contested sign will have the same meanings for the public under analysis as those stated above and will also, therefore, possess below average distinctive character in respect thereof. The word ‘COMMUNICATIONS’ is meaningful for the public under analysis, being plural of ‘communication’ defined as ‘the imparting or exchanging of information by speaking, writing, or using some other medium’, and is devoid of distinctive character for the relevant services as it merely describes the intended purpose of such services concerned, namely that they provide means for, or are related to, the imparting or exchanging of information. In any event, the word ‘COMMUNICATIONS’ has less impact than the other elements of the contested sign given its very small size.

The figurative element of the contested sign is abstract in nature. While it bears no reference to the relevant services and so enjoys normal distinctiveness, it should be borne in mind that 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).

The figurative element and the word ‘VITAL’ are the co-dominant elements of the contested sign.

Visually, the signs coincide in the word ‘VITAL’, being the entirety of the earlier mark, differing in the stylisation of the words comprising the contested sign, the figurative element of the contested sign, as well as the word ‘COMMUNICATIONS’ thereof. Taking due account of the lesser visual impact enjoyed by the said stylised elements, the fact that the word ‘VITAL’ has greater impact than the figurative element of the contested sign as stated above, and the fact that the word ‘COMMUNICATIONS’ is non distinctive for the relevant services, the signs are considered to be visually similar to at least an average degree.

Aurally, the signs coincide in the sound of the word ‘VITAL’, differing in the sound of the word ‘COMMUNICATIONS’ of the contested sign. Taking into account the non-distinctive nature of the word ‘COMMUNICATIONS’, its impact on the aural assessment is reduced. On this basis, the signs are considered to be phonetically similar to at least an average degree.

Conceptually, the signs coincide in the meaning of the word ‘VITAL’, differing in the meaning of the word ‘COMMUNICATIONS’ of the contested sign. As stated above, the figurative element of the contested sign is abstract and so conveys no clear meaning. As the word ‘COMMUNICATIONS’ is non distinctive for the public under analysis, it is not capable of indicating commercial origin. On this basis, the signs are considered to be semantically similar to a high degree.

Although the applicant in its said observations submits that the additional word ‘COMMUNICATIONS’ changes the meaning of the contested sign, this submission ignores the fact that the addition of the word ‘COMMUNICATIONS’ does not change the meaning of the coinciding word ‘VITAL’, which meaning remains essentially the same either as it appears in the earlier mark or in the contested sign. This is so even if it may be perceived by some of the relevant consumers as performing a different grammatical function therein (e.g. as a noun in the earlier mark and as an adjective in the contested sign). Therefore, this argument of the applicant must be set aside.

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 below average for the services in question.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The signs have been found to be visually and phonetically similar to at least an average degree and semantically highly similar; the services are partly similar and partly dissimilar, the level of attention is either average or above average, and the earlier mark enjoys below average distinctive character.

While the coinciding word ‘VITAL’ – comprising the entirety of the earlier mark – has been found to enjoy below average distinctive character, the remaining differentiating elements of the contested sign are either non distinctive (i.e. the word ‘COMMUNICATIONS’), merely decorative (i.e. the stylisation of the words), or have less impact on the impression created by the contested sign (i.e. the figurative element and the word ‘COMMUNICATIONS’). As a consequence, the Office considers that the said differences between the signs are insufficient to outweigh the similarities due to the said coinciding word ‘VITAL’ by which the relevant consumers are likely to refer to the signs.

Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In its said observations, the applicant submits that, given the refusal notification of the above-mentioned word mark application ‘VITAL COMMUNICATIONS’, ‘it is the additional parts [of the contested sign] that render the mark distinctive and registrable. Simultaneously, these parts must be sufficient to exclude likelihood of confusion, as they form the dominant parts’.

The Office cannot agree with this argument of the applicant. As found above, at section c), for the public under analysis the stylised word ‘VITAL’ enjoys below average distinctiveness while the stylised word ‘COMMUNICATIONS’ lacks distinctive character. Therefore, it is not correct to submit that it is the ‘additional parts’ of the contested sign that render the sign distinctive and registrable.

On the same basis, it is incorrect to contend that such ‘additional parts’ must be regarded as being sufficient to exclude a likelihood of confusion. Not only does the coinciding word ‘VITAL’ enjoy distinctive character, albeit to a below average degree, but the said ‘additional parts’ – the figurative element and the stylisation of the words of the contested sign - are not sufficient to avoid confusion as has been found by the Office above.

Turning then to the section entitled ‘Summary’ on pages four and five of the applicant’s said observations, for the reasons stated above, the applicant is incorrect to submit, firstly, that the signs ‘coincide solely in the descriptive parts’. Rather, they coincide in a word (‘VITAL’) which enjoys below average distinctive character. The second such argument of the applicant in its said ‘Summary’ has been addressed already above at section c) of this decision.

The third point of the applicant is the argument that there is no likelihood of confusion given that the word ‘VITAL’ is alleged not to play an independent role. This is argued on the basis that word ‘VITAL’ forms a distinct conceptual unit with the word ‘COMMUNICATIONS’. With respect to this argument, the applicant cites in particular the judgment of the General Court in BADTORO (figurative mark) (20/09/2017, T‑350/13, BADTORO figurative, ECLI:EU:T:2017:633).

The Office considers that the judgment of the general Court in BADTORO (figurative) is distinguishable. The verbal element of the contested sign in the said judgment comprised the verbal element ‘BADTORO’ in respect of which the Court held that the consumer would not perceive the element ‘TORO’ apart from ‘BADTORO’. In contrast, the verbal elements of the contested sign in the present proceedings clearly consist of two separate and distinct words – ‘VITAL’ and ‘COMMUNICATIONS’ – depicted on separate lines and where the word ‘VITAL’ is depicted in a much bigger size than the word ‘COMMUNICATIONS’. Therefore, unlike the verbal element ‘BADTORO’ in the said judgment, the word ‘VITAL’ retains an independent distinctive role within the contested sign. Consequently, these submissions of the applicant must be set aside as not being well-founded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public in the relevant territory, such as that in Ireland and Malta and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 945 081 ‘VITAL’. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark, including where the level of attention exercised may be higher than average.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Begoña URIARTE VALIENTE

Martin MITURA

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.