OPPOSITION Nо B 3 061 659

 

WhiteWave Services, Inc., 12002 Airport Way, Broomfield, Colorado 80021, United States of America (opponent), represented by Ramberg Advokater KB, P.O. Box 3137 Jakobsbergsgatan 13, 6 tr, 103 62 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Copernicus-Trademarks Limited, 19 Leyden Street, E1 7LE London, United Kingdom (applicant), represented by Erich Auer, Trakia 12, 1504 Sofia, Bulgaria (professional representative).

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 061 659 is partially upheld, namely for the following contested goods:

 

	Class 5: Dietary supplements for sports and fitness; pharmaceuticals, medical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals. Class 30: Coffee, tea, cocoa and artificial coffee; preparations made from cereals; sugar; salt; spices.
2.	European Union trade mark application No 17 142 613 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 10/08/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 142 613 ‘VEGABOL’ (word mark). The opposition is based on, inter alia, EUTM registration No 10 666 881 ‘VEGA’. 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 EUTM No 10 666 881.

a)  The goods

 

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

Class 5: Nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance, nutritional supplements in gel form, protein powders for human consumption for use as a food additive, hemp protein, mineral supplements, vitamin supplements, vitamins and meal replacements namely drink mixes, meal replacement bars, powders, ready to drink meal replacement beverages, shake mixes and smoothies, sacha inchi protein/fibre powders; none of the aforesaid goods being for the treatment or prevention of illness or disease; none of the aforementioned being vitamins, minerals or omega 3 oils in tablet, capsule or spray formats or in liquid delivery formats to be taken in drop form or by the spoonful.

Class 30: Food flavourings and beverage and food fortification products derived from nuts, seeds and herbs.

 

The contested goods are the following:

 

Class 5: Dietary supplements for sports and fitness; pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; protein and energetic bars; pancakes, crepes, sandwiches, wraps and muffins enriched with protein.

Class 32: Non-alcoholic beverages.

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

  

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 5

The contested dietary supplements for sports and fitness, dietetic food and substances adapted for medical or veterinary use and dietary supplements for humans and animals overlap with the opponent’s nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance; none of the aforementioned being vitamins, minerals or omega 3 oils in tablet, capsule or spray formats or in liquid delivery formats to be taken in drop form or by the spoonful. Therefore, these goods are considered identical.

The contested food for babies has the same purpose as the opponent’s nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance; none of the aforementioned being vitamins, minerals or omega 3 oils in tablet, capsule or spray formats or in liquid delivery formats to be taken in drop form or by the spoonful. Moreover, these goods have the same producers and distribution channels. Consequently, they are similar.

The contested pharmaceuticals, medical and veterinary preparations have the same purpose as the opponent’s nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance; none of the aforementioned being vitamins, minerals or omega 3 oils in tablet, capsule or spray formats or in liquid delivery formats to be taken in drop form or by the spoonful, which can be used both in humans and animals to promote health and prevent disease. Furthermore, these goods have the same distribution channels and end users. Therefore, they are considered to be similar.

The remaining contested goods, on the other hand, namely sanitary preparations for medical purposes, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides and herbicides have little in common with the opponent’s goods. While the latter have nutritional purposes, the contested goods cover plasters, bandages, dental preparations and articles, as well as sanitary preparations and other substances used to protect and promote health by providing a clean environment and stopping the spread of harmful agents such as bacteria, fungi, pests and weeds through items such as soaps, disinfectants, antimycotics and pesticides. Thus the origin, nature and intended purpose of the goods under comparison are different. They are not produced by the same or related undertakings and they are neither complementary nor in competition with each other. The contested goods also have no points of contact under the abovementioned criteria with the opponent’s food flavourings and beverage and food fortification products in Class 30. Consequently, the goods under comparison are considered to be dissimilar.

Contested goods in Class 30

The contested preparations made from cereals and protein and energetic bars, insofar as they do not overlap with the opponent’s food fortification products derived from nuts, seeds and herbs and are, therefore identical to those goods, they are at least highly similar to them. They can have the same purpose, producers, distribution channels and end users and are, moreover, in competition with one another.

The opponent’s food flavourings are products (such as essences and extracts) not intended to be consumed as such, which are added to foodstuffs in order to impart or modify their taste. The contested sugar, which includes flavoured sugar (e.g. vanilla sugar) used to flavour desserts and confectionery products, salt, which includes flavoured salts (e.g. truffle-flavoured salt, fennel-flavoured salt) used to flavour foodstuffs, and spices all serve to alter or modify a given food’s flavour. Therefore, these goods have the same purpose as the opponent’s food flavourings. Moreover, these goods have the same methods of use and are offered through the same distribution channels to the same end users. Consequently, they are considered similar.

The opponent’s goods also cover coffee, tea and cocoa flavourings, which are used to give the respective flavour to other foodstuffs or beverages. Consequently, they can have the same purpose and methods of use as the contested coffee, tea, cocoa and artificial coffee and are, therefore, similar to a low degree to these goods.

The contested honey and treacle, on the other hand, have sweetener properties but do not introduce any specific flavour to food. Substances which have exclusively a sweet, sour or salty taste are expressly excluded by the definition of flavouring substances also by EU Regulation No 1334/2008 on flavourings. Therefore, they are considered dissimilar to the opponent’s food flavourings and, a fortiori, to all the other of the opponent’s nutritional supplements, additives and meal replacements in Classes 5 and 30.

Similarly, although the contested mustard, vinegar and sauces (condiments) have their very own specific tastes and may be used to enhance the flavour of food, they cannot be deemed as having the same purpose as flavourings. These goods have different natures, producers, methods of use and distribution channels, and are neither in competition with nor complementary to the opponent’s goods in Classes 5 and 30. Therefore, they are also considered dissimilar.

The remaining contested goods in this class, namely rice, tapioca and sago, flour, bread, pastry and confectionery, edible ices, yeast, baking-powder, ice as well as pancakes, crepes, sandwiches, wraps and muffins enriched with protein cover basic ingredients to produce foodstuffs, bakery products and ready-made sweet and savoury meals, sweets and cooling ice. As such, they have a different nature and different purposes from the opponent’s goods in Classes 5 and 30. Moreover, these goods do not usually have the same producers or distribution channels. The goods at issue target different end users and are neither in competition with, nor complementary to each other. Consequently, they are considered dissimilar.

Contested goods in Class 32

The contested non-alcoholic beverages are liquids used to quench thirst, while the opponent’s goods in Classes 5 and 30 are nutritional supplements, additives and meal replacements, which serve nutritional purposes or to add flavour to food. The fact that they are all ingested, or that they can be used together or mixed with one another, does not render these goods similar. They have a different nature and different purposes. Moreover, they do not usually have the same producers or distribution channels. The goods target different end users and are neither in competition with, nor complementary to each other. Consequently, they are considered dissimilar.

 

 

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 directed both at the public at large and at professionals in the health care sector with particular knowledge or expertise.

 

The degree of attention may vary from low to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

In particular, 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). 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.

For the same reasons, consumers may also display a higher degree of attention when purchasing certain nutritional supplements.

With regard to cheap everyday consumer goods such as sugar, salt, coffee, tea or cocoa, on the other hand, the consumers’ degree of attention is expected to be rather low.

 

c)  The signs

 

VEGA	VEGABOL
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.

 

The common element ‘VEGA’ will be understood as meaning ‘a flat, fertile lowland’, i.e. a ‘floodplain’ or ‘meadow’, by the Spanish-speaking part of the public (https://dle.rae.es/vega). As it has no meaning in relation to the relevant goods, it is distinctive.

The element ‘BOL’ of the contested sign will be understood by the Spanish-speaking part of the public as meaning ‘a cup without handle, bowl’ (https://dle.rae.es/bol?m=form). It will be perceived in relation to some of the relevant goods as indicating that they are consumed from or added to a bowl (of food), in particular with regard to pharmaceuticals, nutritional supplements, additives and meal replacements. Although not all of the relevant goods are typically consumed from or added to a bowl, the fact remains that this type of recipient will be readily related to foodstuffs and drinks in general. Therefore, its distinctiveness is rather limited in any case.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). This holds true for the Spanish-speaking part of the public in the present case. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

 

Moreover, 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 and aurally, the earlier mark, ‘VEGA’, is entirely included at the beginning of the contested sign. The marks differ in the component ‘BOL’ of the contested sign.

  

Taking into account the above findings with regard to the distinctiveness of the element ‘BOL’, the signs are visually and aurally similar to at least an average degree. 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with a ‘floodplain, meadow’, whereas the element ‘BOL’ is of rather limited distinctiveness, the signs are conceptually highly similar.

  

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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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.

Moreover, 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 distinctiveness of the earlier mark is considered normal. The coinciding element will be given more weight by consumers than the other element of the contested mark. This results in the signs being visually and aurally similar to at least an average degree and conceptually highly similar.

It is highly conceivable that the relevant consumers will perceive the marks as variations of the same sign, merely referring to slightly different product ranges, but indicating the same commercial origin (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, consumers may be mistaken about the origin of the goods found to be identical or similar, notwithstanding the fact that the degree of attention may be high in relation to some of the goods at issue.

This also applies to those goods found to be similar to a low degree, which are all cheap everyday consumer goods, considering, in particular, that the consumers’ degree of attention when purchasing them is expected to be rather low.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 goods found to be identical or similar to those of the earlier trade mark, including those found to be similar to a low degree.

 

The rest of the contested goods 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 goods cannot be successful.

 

The opponent has also based its opposition on the following earlier EUTM registrations:

 

 No 10 666 527 ‘VEGA ONE’

 No 10 666 618 

 No 11 286 903 ‘VEGA SPORT’

 No 12 649 562 

 No 12 649 612 

 

Since these marks cover essentially the same or a narrower scope of goods, namely a variety of nutritional, dietary and food supplements in Class 5 and/or food flavourings (and some also beverage and food fortification products) derived from nuts, seeds and herbs in Class 30, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

 

 

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

Elena NICOLÁS GÓMEZ

Natascha GALPERIN

María Belén IBARRA DE DIEGO

 

 

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.