OPPOSITION No B 2 875 774

Kutxabank, S.A., Gran Vía, 30-32, 48009 Bilbao (Bizkaia), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (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 08/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 875 774 is upheld for all the contested services, namely

Class 35: Business management services, namely, managing office functions in the nature of copying and printing for others; business marketing consulting services; brand imagery consulting services; advertising copywriting; writing of advertising and marketing text for others; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, digital signage, social media, and on-line medium; consulting services in the field of internet marketing; business advisory services in the field of transportation logistics.

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

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

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 35. The opposition is based on inter alia European Union trade mark registration No 11 381 985 ‘VITAL.NET’ (word mark). The opponent invoked Article 8(1)(b)

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 11 381 985 ‘VITAL.NET’ (word mark).

1. The services

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

Class 35: Advertising; Business management; Business administration; Office functions.

The contested services are the following:

Class 35: Business management services, namely, managing office functions in the nature of copying and printing for others; business marketing consulting services; brand imagery consulting services; advertising copywriting; writing of advertising and marketing text for others; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, digital signage, social media, and on-line medium; consulting services in the field of internet marketing; business advisory services in the field of transportation logistics.

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

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

The contested business management services, namely, managing office functions in the nature of copying and printing for others is included within the broader category of the opponent’s office functions. Therefore, they are identical.

The contested business advisory services in the field of transportation logistics is included within the broader category of, or overlaps with, the opponent’s business management. Therefore, they are identical.

The contested business marketing consulting services; brand imagery consulting services; advertising copywriting; writing of advertising and marketing text for others; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, digital signage, social media, and on-line medium; consulting services in the field of internet marketing are included within the broader category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

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 identical are directed at business customers with specific professional knowledge or expertise. The said public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services provided.

3. The signs

VITAL.NET
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 mark ‘VITAL.NET’ in which the words ‘VITAL’ and ‘NET’ are separated by a dot. This structure is typical of the structure of domain names, where the first part represents the actual domain name and the second part the top level domain. In this case ‘.NET’ is devoid of distinctive character of the services in question, as it merely inform the relevant consumer that the suffix ‘.net’ is a top level domain.

The word ‘VITAL’ is meaningful for the public under analysis as it means, inter alia, essential or of great importance (information taken from Collins English Dictionary on 04/06/2020 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 business and advertising services, 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: the specific business or advertising services in question are not normally described as being ‘vital’. The word ‘VITAL’ will be perceived, rather as being somewhat fanciful 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 35 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’ and as they are clearly separated, they do not form a conceptual unit. 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 first word of the earlier mark and being placed in the upper part of the contested sign, differing in the stylisation of the words comprising the contested sign, the figurative element of the contested sign, as well as the elements ‘.NET’ and the word ‘COMMUNICATIONS’ of the earlier mark and contested sign respectively.

Taking into account the above considerations regarding the distinctiveness and the visual impact of the signs’ various elements, the signs are considered to be visually similar to an average degree.

Aurally, the signs coincide in the sound of the word ‘VITAL’, differing in the sounds ‘DOT NET’ of the earlier mark, for the reasons explained above, and of the word ‘COMMUNICATIONS’ of the contested sign. Taking into account the non-distinctive nature of ‘DOT’ and ‘NET’ and the word ‘COMMUNICATIONS’ of the signs respectively, their impact on the respective sign’s aural assessment is reduced. On this basis, the signs are considered to be phonetically similar to at an average degree.

Conceptually, the signs coincide in the meaning of the word ‘VITAL’, differing in the meaning of ‘.NET’ of the earlier mark and 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 both the element ‘.NET’ of the earlier mark and the word ‘COMMUNICATIONS’ of the contested sign are non-distinctive for the public under analysis, neither is 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, as explained above, 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. 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

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).

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 an average degree and semantically highly similar; the services are identical, 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 first verbal element of the earlier mark – has been found to enjoy below average distinctive character, the remaining differentiating elements are either non distinctive (i.e. the elements ‘.NET’ of the earlier mark; the word ‘COMMUNICATIONS’ of the contested sign), 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 observations of 23/10/2019, 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 11 381 985 ‘VITAL.NET’. 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 identical to those of the earlier trade mark, including where the level of attention exercised may be higher than average.

As the earlier right European Union trade mark registration No 11 381 985 ‘VITAL.NET’ (word mark) leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Angela DI BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.