OPPOSITION No B 3 047 238

Maxi Di S.r.l., Viale del Lavoro, 20, 37050, Belfiore (VR), Italy (opponent), represented by Barzanò & Zanardo Roma S.p.A., Via del Commercio, 56, 36100, Vicenza, Italy (professional representative)

a g a i n s t

Vital-Life Europe GmbH, Wasserkuppenstraße 25, 36043, Fulda, Germany (applicant).

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 238 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 512 419 . The opposition is based on Italian trade mark registration No 1 437 769 . 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.

a) The goods and services

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

Class 5: Pharmaceutical and veterinary products; sanitary preparation for medical purposes; dietetic substances adapted for medical use, food for babies plasters, material for dressings, material for stopping teeth, dental wax, disinfectants, preparation for destroying vermin, fungicides, herbicides.

Class 29: Meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals; bread, pastries and confectionery; ices; honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces [condiments]; spices; ice.

Class 32: Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.

The contested goods and services are the following:

Class 3: Toiletries; cleaning and fragrancing preparations; animal grooming preparations; essential oils and aromatic extracts; all the aforesaid articles except those to be applied on hair and scalp.

Class 5: Dietary supplements and dietetic preparations; sanitary preparations and articles; pharmaceuticals and natural remedies; diagnostic preparations and materials; medicinal alcohol.

Class 35: Advertising, marketing and promotional services; mediation and conclusion of commercial transactions for others; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Contested goods in Class 3

The contested toiletries; animal grooming preparations are similar to the opponent’s broad category of sanitary preparation for medical purposes in Class 5, since they can have the same purpose and points of sale. They can target the same consumers and they frequently originate from the same kind of undertakings.

The contested cleaning and fragrancing preparations are similar to the opponent’s disinfectants in Class 5, since they can have the same nature, purpose and points of sale, can target the same consumers and can originate from the same kind of undertakings.

The contested essential oils and aromatic extracts are similar to a low degree to the opponent’s disinfectants in Class 5, since they can have the same purpose and method of use and can target the same consumers.

The limitation all the aforesaid articles except those to be applied on hair and scalp of the contested goods in Class 3 does not alter the abovementioned findings.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations; sanitary preparations and articles; pharmaceuticals and natural remedies; diagnostic preparations and materials; medicinal alcohol are identical to at least one of the goods covered by the opponent’s list of goods in Class 5, either because the opponent’s and the contested goods are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in or overlap with the contested goods.

Contested services in Class 35

The contested advertising, marketing and promotional services; mediation and conclusion of commercial transactions for others are dissimilar to all the goods of the earlier mark, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. This also applies to wholesale services.

Therefore, the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are similar to a low degree to the opponent’s pharmaceutical and veterinary products; sanitary preparation for medical purposes; material for dressings, material for stopping teeth (the latter goods being covered by the broad category of the contested medical supplies to which they are therefore considered identical).

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 and services found to be identical or similar (to various degrees) are in part directed at the public at large (e.g. toiletries), in part at professionals (e.g. material for dressings, material for stopping teeth) and in part at both the public at large and professionals (e.g. pharmaceuticals).

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.

Therefore, in the present case, and contrary to the opponent’s arguments, the degree of attention paid during the purchase of the relevant goods and services will vary from average, in relation to goods that are commonly purchased and are not expensive (e.g. toiletries), to higher than average (e.g. pharmaceuticals).

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

The earlier mark contains one verbal element, which does not exist as such in Italian. However, consumers will recognise in it two conceptually independent verbal elements (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), which will lead them to mentally dissect it into ‘vita’, which is the Italian word for ‘life’, and ‘libre’, which will be perceived as meaning ‘freedom’, due to its similarity to the Italian equivalent ‘libero’/‘libera’.

The word ‘VITAL’ in the contested sign will be understood by the relevant public as an adjective used to indicate that something/someone has vitality, due to the existence in Italian of the similar equivalent word ‘vitale’. The word ‘life’ will be understood by part of the public as the basic English word used to refer to the period in which someone/something is alive. However, the possibility that part of the public could perceive this word as meaningless cannot be excluded.

The verbal elements are accompanied by figurative elements that are of reduced impact, because they are either merely decorative simple shapes devoid of distinctiveness (i.e. the oval in the earlier mark and the curved line in the contested sign) or of lower than average distinctiveness (i.e. the depictions in both marks of a person who is practising sports or celebrating), being at least evocative of the positive experience/result obtained after using the relevant goods or the goods in relation to which the services are offered.

The degree of distinctiveness of the verbal elements perceived in the signs is, at most, lower than average, since they will be perceived as references to the positive experience/result obtained after using the relevant goods or the goods in relation to which the services are offered (e.g. that these goods can increase vitality). The exception to this is the word ‘life’ in the scenario in which it is perceived as meaningless and therefore of average distinctiveness.

As claimed by the opponent, 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. It is therefore relevant to note that the beginnings of the signs are formed by terms that are recognised as different terms, with different concepts (i.e. ‘vita’ and ‘Vital’)

The marks do not contain any elements that are more dominant (visually eye-catching) than any others.

Visually and aurally, the signs coincide in the sequences of letters ‘vita’ and ‘li*e’ (and their sounds). They differ in the letters ‘br’ of the earlier mark and in the double ‘l’ and the ‘f’ of the contested mark (and their sounds).

Visually, they also differ in their colours, typefaces and figurative elements (and their positions) and in the fact that the earlier mark contains one verbal element, whereas the contested mark contains two.

Taking into account the degree of distinctiveness of each of the elements, as described above, it is considered that the marks are visually and aurally similar to a low degree.

Conceptually, if the concept of ‘life’ of the contested sign is understood, since it is also found in ‘vita’ of the earlier mark, the marks coincide in concept. The marks also coincide in the concept conveyed by the depictions of a person, as described above.

The marks differ in the concepts of ‘libre’ and ‘vital’, as described above.

Taking into account the degree of distinctiveness of each of the elements, it is considered that the marks 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 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 distinctiveness of the earlier mark must be seen as normal, even though it comprises elements considered to have, at most, a lower than average degree of distinctiveness, as stated above in section c) of this decision. The normal degree of distinctiveness of the mark arises from the way in which the elements are positioned and combined (e.g. two independent elements are positioned together to create one single verbal element, and words from different languages are combined).

e) Global assessment, other arguments and conclusion

The signs are visually, aurally and conceptually similar to a low degree. The earlier mark has a normal degree of distinctiveness.

The goods and services found to be identical or similar (to various degrees) are of various types and target different kinds of consumers (see section b)) above), and the degree of attention paid by these consumers will vary from average to higher than average.

Reference is made to the conceptual analysis in section c) above. The marks coincide in the letters ‘vita’ at the beginning of each sign, which, despite their visual and aural commonalities, will clearly be perceived as forming conceptually different words in the earlier and contested signs (i.e. ‘vita’ versus ‘vital’). In addition, these words are of reduced impact, due to their lower than average degree of distinctiveness. The signs also coincide in the letters ‘li*e’ at their endings. However, once again, these letters will be perceived as being part of different words that have no concept in common (i.e. ‘libre’ versus ‘life’).

Accordingly, the commonalities between the marks are considered clearly insufficient to lead consumers to believe that the goods and services found to be identical or similar (to various degrees) come from the same undertaking or even from economically linked undertakings, not even by the part of the public paying the lower degree of attention considered above (i.e. average).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Francesca CANGERI SERRANO

María del Carmen SUCH SANCHEZ

María Clara IBÁÑEZ FIORILLO

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.