OPPOSITION No B 3 011 106

Triscom Holding B.V., Zwolseweg 33, 8141 EB, Heino, the Netherlands (opponent), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Dairy Crest Limited, 5 The Heights Brooklands, KT13 0NY Weybridge, United Kingdom (applicant), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, M3 2JA Manchester, United Kingdom (professional representative).

On 24/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 011 106 is partially upheld, namely for the following contested goods:

Class 5: Dietary and nutritional supplements for humans; mineral food supplements and dietetic substances for humans; meal replacements, dietetic food and beverages, adapted for medicinal use; enzyme and vitamin preparations for medicinal use; dietary and nutritional supplements incorporating prebiotics, for example sugars such as oligosaccharides, for humans; dietary and nutritional supplements incorporating probiotics, such as preparations containing bifidobacterium and lactobacillus for humans; dietary and nutritional supplements incorporating synbiotics, being preparations containing both prebiotics and probiotics, for humans; dietetic foods for use in clinical nutrition; dietetic foods for use in sports nutrition; dietary and nutritional supplements for humans for weight loss; dietary and nutritional supplements for humans for reducing obesity; dietary and nutritional supplements for humans for improving the health of the elderly; health food supplements for persons with special dietary requirements; health food supplements made principally of probiotics; health food supplements made principally of prebiotics; nutritional supplements; nutritional supplements made principally of probiotics; nutritional supplements made principally of prebiotics.

Class 29: Milk and milk products; milk beverages; dairy products; yoghurts; milk and milk products containing probiotics; milk beverages containing probiotics; dairy products containing probiotics; yoghurts containing probiotics; milk and milk products containing prebiotics; milk beverages containing prebiotics; dairy products containing prebiotics; yoghurts containing prebiotics.

Class 32: Preparations for making beverages; preparations containing probiotics for making beverages; preparations containing prebiotics for making beverages.

2. European Union trade mark application No 17 537 119 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application, namely against some of the goods in Class 5 and against all of the goods in Classes 29, 30 and 32. The opposition is based on the following earlier marks:

- European Union trade mark application No 14 732 391 for the word mark ‘PRIMAVITA’.

- European Union trade mark registration No 11 185 261 for the word mark ‘PRIMAVITA’.

- Benelux trade mark registration No 559 137 for the word mark ‘PRIMAVITA’.

- International trade mark registration No 683 729 designating Italy for the word mark ‘PRIMAVITA’.

The opponent invoked Article 8(1)(b) EUTMR.

CEASING OF EXISTENCE OF THE EARLIER RIGHT – EUTMA No 14 732 391

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

According to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

On 19/12/2017, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, European Union trade mark application No 14 732 391 which was filed on 26/10/2015.

However, European Union trade mark application No 14 732 391 was refused in its entirety by decision No B 2 654 898 dated 01/06/2017, which is final.

As it is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must therefore be rejected as unfounded as far as it is based on this earlier right.

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 11 185 261 for the word mark ‘PRIMAVITA’, which is not subject of a request for proof of its use request.

1) Examination of the opposition in relation to European Union trade mark registration No 11 185 261 for the word mark ‘PRIMAVITA’

a) The goods

In the notice of opposition it is indicated that the opposition is based on dietetic substances adapted for medical use; food for babies; dietary supplements for medical use in Class 5.

However, food for babies has been rejected on 06/11/2013 in Opposition Decision No B 2 129 693 which is final.

Therefore, the goods on which the opposition is based are the following:

Class 5: Dietetic substances adapted for medical use; dietary supplements formedical use.

The contested goods are the following:

Class 5: Dietary and nutritional supplements for humans; mineral food supplements and dietetic substances for humans; meal replacements, dietetic food and beverages, adapted for medicinal use; enzyme and vitamin preparations for medicinal use; dietary and nutritional supplements incorporating prebiotics, for example sugars such as oligosaccharides, for humans; dietary and nutritional supplements incorporating probiotics, such as preparations containing bifidobacterium and lactobacillus for humans; dietary and nutritional supplements incorporating synbiotics, being preparations containing both prebiotics and probiotics, for humans; dietetic foods for use in clinical nutrition; dietetic foods for use in sports nutrition; dietary and nutritional supplements for humans for weight loss; dietary and nutritional supplements for humans for reducing obesity; dietary and nutritional supplements for humans for improving the health of the elderly; health food supplements for persons with special dietary requirements; health food supplements made principally of probiotics; health food supplements made principally of prebiotics; nutritional supplements; nutritional supplements made principally of probiotics; nutritional supplements made principally of prebiotics.

Class 29: Milk and milk products; milk beverages; dairy products; yoghurts; fruit-based snack foods; milk and milk products containing probiotics; milk beverages containing probiotics; dairy products containing probiotics; yoghurts containing probiotics; fruit-based snack foods containing probiotics; milk and milk products containing prebiotics; milk beverages containing prebiotics; dairy products containing prebiotics; yoghurts containing prebiotics; fruit-based snack foods containing prebiotics.

Class 30: Baked goods, confectionery, chocolate and desserts; cereal bars; energy bars; baked goods, confectionery, chocolate and desserts containing probiotics; cereal bars containing probiotics; energy bars containing probiotics; baked goods, confectionery, chocolate and desserts containing prebiotics; cereal bars containing prebiotics; energy bars containing prebiotics; breakfast cereals; breakfast cereals containing prebiotics.

Class 32: Sports drinks; protein enriched sports drinks; non-alcoholic beverages; fruit beverages and fruit juices; syrups and preparations for making beverages; sports drinks containing probiotics; protein enriched sports drinks containing probiotics; non-alcoholic beverages containing probiotics; fruit beverages and fruit juices containing probiotics; syrups and preparations containing probiotics for making beverages; sports drinks containing prebiotics; protein enriched sports drinks containing prebiotics; non-alcoholic beverages containing prebiotics; fruit beverages and fruit juices containing prebiotics; syrups and preparations containing prebiotics for making beverages.

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 meal replacements, dietetic food and beverages, adapted for medicinal use; dietetic foods for use in clinical nutrition; dietetic foods for use in sports nutrition are at least similar to the opponent's dietary supplements for medical use, as they usually have the same producers, relevant public and distribution channels. Moreover, they have a common purpose, namely to contribute to a better health condition of the recipients.

The contested enzymes are macromolecular biological catalysts. Enzymes accelerate chemical reactions. Almost all metabolic processes in the cell need enzymes in order to occur at rates fast enough to sustain life. Some enzymes are used commercially, for example, in the synthesis of antibiotics. Therefore, the contested enzyme and vitamin preparations for medicinal use have some relevant points in common with the opponent’s dietary supplements for medical use. These goods share some same general purposes such as to prevent or treat diseases and maintain the organism in a healthy condition. They may coincide in distribution channels, namely pharmacies, producers and end users. Therefore, they are considered to be similar.

The remaining contested goods are identical to the opponent’s dietary supplements for medical use, because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 29, 30 and 32

All the goods in Class 29, 30 and 32 belong to the food sector and to the general beverages sector. These goods are prepared for regular consumption and are non-medicated.

They do not have enough relevant commonalities with the opponent’s goods in Class 5, which are specified for medical use. Although some of the contested goods contain probiotics or are enriched with other ingredients, which can be defined as dietetic substances or ingredients of dietary supplements, this is not sufficient to find a similarity between the goods. The goods in question usually originate from different entities and are neither complementary nor in competition. The mere fact that some of the foodstuffs or beverages in Classes 29, 30 or 32 might be appropriate to enhance the results of taking dietetic substances and/or supplements does not lead to a strict complementarity. The goods under comparison have different specific intended purposes, namely medical, curative, therapeutic vs. nutritive and to quench thirst. It is not likely that these goods are distributed through the same channels or placed on the same shelves in supermarkets; indeed, the opponent’s goods are mainly sold in pharmacies, veterinary clinics and specialist health care shops as opposed to the applicant’s goods which are sold in supermarkets and other food outlets.

Moreover, the General Court held that ‘[t]he mere fact that such supplements (in Class 5) may have, in addition to their main function, which is a medical function in the broad sense of the term or one compensating for nutritional deficiencies, ordinary nutritional functions does not warrant such supplements being considered as 'beverages' in Class 32 (or food products in Classes 29 and 30 as the case may be). Those secondary aspects do not alter the fact that the average consumer does not consume nutritional supplements as ordinary food or to quench his thirst. (23/01/2014, T-221/12, Sun fresh, EU:T:2014:25, § 72).’ As a consequence, these goods are 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 are directed at the public at large and professionals in the medical or nutrition fields. As the goods at issue in Class 5 are intended to be used in relation to specific medical conditions, are expected to have an effect on the health and wellbeing of humans and are often used together with pharmaceuticals, the attention of the consumer upon selection and purchase is deemed to be relatively high.

c) The signs

PRIMAVITA	PROMOVITA
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.

As one of the other earlier rights for which proof of use was requested concern the Benelux, the Opposition Division will focus on the Dutch-speaking part of the public for purposes of consistency, as will be seen later on in this decision.

Both signs are word marks and as such they do not have dominant elements.

Although the signs are composed of one verbal element, the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). It is possible for the relevant consumer to break down a word mark even if only one of the elements making up that mark is familiar to him (22/05/2012, T585/10, Penteo, EU:T:2012:251, § 72; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

This is because, although consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they naturally look for a meaning when reading a word. Consequently, even though the elements ‘PRIMA’ and ‘PROMO’ are not visually separated from the remaining element, ‘VITA’, the relevant public will perceive both signs as a juxtaposition of ‘PRIMA’ and ‘VITA’ and ‘PROMO’ and ‘VITA’.

The common element ‘VITA’ does not exist as such in the Dutch language, neither is it a common abbreviation for any other word. Therefore, at least part of the average public will perceive it as fanciful. For another part of the public it might be allusive to the concept of ‘vital; vital, essential, full of live’ as the Dutch word ‘vitaal’ means the same (information extracted on 19/08/2020 at https://www.vandale.nl/gratis-woordenboek/nederlands/betekenis/vitaal#.Xz0fL0FS9PZ). Even if this could give way to the notion that the relevant goods may have positive effects on health and well being, there is still a substantial distance which requires some effort and supposition from consumers. Given this distance, the distinctiveness of this element is not materially affected thus remains average.

The element ‘PRIMA’ of the earlier mark means ‘excellent’ (information extracted on 24/08/2020 from https://www.vandale.nl/gratis-woordenboek/nederlands/betekenis/prima#.Xz0fh0FS9PZ). Therefore, this element is of very weak distinctive character as it will be perceived by the relevant public as an indication for the high quality of the goods.

The element ‘PROMO’ of the contested sign is used in advertising to “promote” higher quantities of goods against a lower price and for the Dutch consumer it alludes to advantageous offers and bargains as it is close to the Dutch word ‘promotie’ (information extracted from https://www.vandale.nl/gratis-woordenboek/nederlands/betekenis/promotie#.X0Nqo0FS9EY on 24/08/2020). Therefore, the concept of this element is weak in relation to the goods in question.

Visually and aurally, the signs are one-component word marks with nine letters/sounds, which coincide in seven letters/sounds, positioned in the same sequence, namely ‘PR*M*VITA’. They differ in their third and fifth letters/sounds, which are the letters/sounds ‘O’ in both positions in the contested sign and ‘I’ in third place and ‘A’ in fifth place in the earlier one. It is considered that the identified differences in these two letters/sounds do not outweigh the coincidences in the number and positioning of the majority of letters/sounds and they do not have an impact on the fact that the signs share the same number of syllables, rhythm and intonation. Furthermore, the longer the signs are the less noticeable are the differences as consumers are not in the habit of isolating letters/sounds within a string such as in the case at hand.

Given the identity of seven out of nine letters/sounds, and the fact that they are positioned in the same places, the signs are visually and aurally similar to an average degree.

Conceptually, the earlier mark and the contested sign, taken as a whole, have no clear and direct meaning, per se, for the relevant public. However, as explained above, the relevant public will perceive the elements ‘PRIMA-’ and ‘PROMO-‘ of the corresponding signs as laudatory allusions to the characteristics of the goods.

Therefore, the signs are conceptually not similar. The common element ‘VITA’ will not be perceived as having a clear and concrete meaning.

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 marks 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods have been found partially identical, partially similar and partially dissimilar. The earlier mark is deemed to have a normal degree of distinctiveness.

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).

The signs have been found to be visually and aurally similar to an average degree, and it has been concluded that they are not conceptually similar. However, the differences between the signs, which are only two letters out of nine in the same order, do not, by themselves, introduce sufficient differences into the signs as they do not alter greatly the visual or aural similarity. Moreover, it is considered that even when the signs are conceptually not similar for the relevant public, the concepts behind the elements ‘PRIMA’ and ‘PROMO’ are not of such a nature as to create a sufficient conceptual difference between the signs that could assist the public in distinguishing between them. Moreover, the element ‘VITA’, common for both signs, is of normal distinctiveness.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part public and, therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 11 185 261.

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.

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.

Since the opposition was only partially successful on the basis of European Union trade mark registration No 11 185 261 for the word mark ‘PRIMAVITA’ with respect to Article 8(1)(b) EUTMR, the Opposition Division will continue with the examination of Article 8(1)(b) EUTMR on the basis of the other two earlier marks.

2) Examination of the opposition in relation to Benelux trade mark registration No 559 137 and International trade mark registration No 683 729 designating Italy for the word mark ‘PRIMAVITA’.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of two of the trade marks on which the opposition is based, namely the Benelux trade mark registration No 559 137 and international trade mark registration No 683 729 designating Italy, both for the word mark ‘PRIMAVITA’.

The date of priority of the contested application is 21/08/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Benelux countries and Italy from 21/08/2012 to 20/08/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Benelux trade mark registration No 559 137

Class 5: Dietetic substances for medical use; food for baby.

Class 29: Milk and milk products.

International trade mark registration No 683 729 designating Italy

Class 5: Dietetic substances for medical use; food for babies.

Class 29: Preserved, dried and cooked fruit and vegetables; jellies, jams, compotes, milk and dairy products.

Class 30: Flour and cereal preparations; edible ices; ice for refreshment; chocolate (beverages); gruel, with a milk base, for food.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 23/10/2018, in accordance with Article 10(2), the Office gave the opponent until 28/12/2018 to submit evidence of use of the earlier trade marks. At the opponent’s request, this time limit was further extended and expired on 28/02/2019. On 24/01/2019, within the time limit, the opponent submitted evidence of use.

Therefore, the evidence to be taken into account is, the following:

Enclosure 1-15: More than 150 invoices dated uniformly during the relevant period of time for goods indicated as ‘Primavita full cream goat milk powder’ or ‘Primavita full goat milk powder’; ‘Primavita infant formula’, ‘Follow-on-Formula’, ‘Primavita Formula’ followed or preceded by a number with which the different ages of babies or children is indicated and ‘Primavita HiCal milk powder product’. The language in the invoices is Dutch and English. The invoices are issued by the opponent and are directed to different private and legal persons mainly in the Netherlands, very few in Italy and one in Belgium. However, as far as the Opposition Division managed to identify there are also three invoices to Rwanda and one to Vietnam. The quantity in the invoices varies from a couple of units to hundreds or thousands of kilograms.

Enclosures 16a) and 16b): Witness statements from the general managers of the opponent’s company. The managers identify the turnover of the company per year for the period August 2011-August 2016 and September 2016-November 2017. The declared turnover is for the territories of the Benelux and Italy and the goods are specified as community class 5 and community class 29. It is not clear what goods are included in each of the categories, as the identification is only by class number.

Enclosure 17: A table that is declared as originating from the opponent that contains information for sales in the period August 2011-August 2016. From the table it is evident that the opponent classifies some goods as Primavita 3 (order 1419, 22/03/2012) and prim. 1+gtm (order 1391, 25/10/2011) as belonging to Class 29.

Enclosure 18: Another table declared as originating from the opponent that is relevant for the sales in the period September 2016-November 2017. The table again indicates the sales divided by classes and countries but there is no mention of goods or of the trade mark. However, it also contains the indications B2B and B2C, which are commonly used abbreviation for Business to Business and Business to Clients sales or relationship.

E nclosure 19: Undated photograph representing a fair stand with PRIMAVITA and the name ‘Holland’. The opponent indicated that the stand had represented the Netherlands at the Dubai Alimentary Fair in 2015. In the photograph there are some advertising materials that can be seen as related to the ‘Primavita goat milk’ or ‘Primavita HiCal’ , and to milk cereals , as the same indication for the products used on the website (see the crops in encl. 25).

Enclosure 20: Undated photograph representing a fair stand with PRIMAVITA. Some of the company’s products are shown on the picture . The opponent indicated that the stand was at the Anuga Fair, Germany in 2015.

Enclosure 21: An invoice, dated 13/04/2015 addressed to Triscom Holding BV from a German company for an exhibition stand and structure for Anuga 2015 10-14.10.2015.

Enclosure 22: An invoice, dated 21/11/2014 addressed to Triscom Holding BV for services for Gulfood 2015- Dubai. The invoice is in Dutch, however it indicates that 315 Euro were paid for Internet listing and that another amount is paid for 9m2, from which it can be assumed that the amount is for the surface of an exhibition stand.

Enclosures 23, 24 and 27 (wrongly indicated as 18 on the picture): Undated photographs for which the opponent claims that they represent the stand of the company of the Shanghai Alimentary Fair for 2014 (encl. 23 and 27) and 2015 (encl. 24). The first and third pictures, beside the people, contain indications in - what looks like - Chinese logograms . It is reasonable to conclude that they present the name of the earlier mark ‘PRIMAVITA’ in Chinese and an indication for the period from which the festival is held. The encl. 23 also shows some of the products of the company. The other picture (encl.24), does not contain clear indications of the mark or of a date.

Enclosure 25 (translated into Exhibits 1-1 to 1-3): Printouts of the Italian and the Dutch version of the website,. However, the printouts also contain indications of the products in English. Most of the ‘PRIMAVITA’ goods are shown as follow:

However, the printouts are not dated.

Enclosure 26: An undated printout indicating promotional PRIMAVITA games and apps, which can be acquired through Google Play store. The apps are indicated as available for the Netherlands, Belgian and Italy.

Enclosure 28: Investigation report carried out in 2013 about the online use of the trade mark ‘PRIMAVITA’ in the European Union. The report concluded that the earlier mark is used for nutritional milk powder for adults only in the Netherlands and for food formulas for babies and children in the Netherlands, Belgium and Slovakia. There is no indication of the company that conducted the research, although it looks like it is provided by a company different from the opponent.

Enclosure 29: A printout of the Dutch website of the company, which bears only the date on which it is printed (1/23/2019). However, the site contains a description of the products, for example

Enclosure 30: A printout of the company’s webpage, dated 18/01/2017 which contains an announcement that the company will participate in the Gulfood fair 2017 (February-March; within the relevant period). It looks like the company will present its entire portfolio of products, which includes infant and diet’s formulas, including ‘Primavita goat milk powder’ , ‘Primavita Hical milkpowder’, which are products for adults and ‘Primavita rice cereal mixed fruits’ and ‘Primavita rice cereal vanilla’ in the section for babies and children

On 10/06/2019, the applicant commented that not all of the evidence is in the language of the proceedings, more particularly enclosure 25. Therefore on 08/07/2019 the Opponent provided a translation of encl. 25, indicated as exhibits 1-1, 1-2 and 1-3. Additionally the opponent, in relation to another comment made by the applicant regarding the pertinence of the goods to Class 5 attached an exhibit 1-4, which contains a list of goods named as ‘milk powder’ in Class 29. The exhibit 1-5 refers to the content of the infant formula for babies and is a printout of the website Healthchildren.org.

Assessment of the evidence

When assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as witness of statements (enclosures 16a and b) are concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, in the present case the statements (encl.16a) and 16b)) and also the tables (encl. 17 and 18) contain deficiencies which significantly decrease their reliability. More particularly, in the statements and in the tables, the goods are differentiated only as belonging to Class 5 or Class 29, which is not sufficient to identify the exact goods. Moreover, the table in encl. 17 shows that some goods that are milk products for babies, are considered as belonging to Class 29 and not to Class 5. Therefore, the differentiation only by class number is not sufficient to identify the goods on which the sales are based.

Additionally the opponent stated that the turnover for the relevant period is ‘immense’, which does not correspond in any way to the numbers indicated in the statements. Moreover, while in encl.17 the provided information shows that the amount of turnover is 127 454 euros and stems only from some sales orders for a certain period in 2015

the sum in the statement for the entire year 2014 is 74 459 euros, as is evident from here . Therefore the Opposition Division is of the opinion that these pieces of evidence lack clarity and precision and that they are not a reliable source of information in relation to the sales turnover indicated in them. Therefore, the information in them is of a low probative value.

As to the evidence provide on 10/06/2019, after the expiry on the time limit, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, but this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28).

According to Article 10(7) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late indications or evidence merely supplements, strengthens and clarifies the prior relevant evidence submitted within the time limit with the purpose of proving the same legal requirement laid down in Article 10(3) EUTMDR, namely, place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which opposition is based.

When exercising its discretionary power, the Office must take into account, in particular, the stage of the proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

In this regard, the Office considers that the opponent did submit relevant indications or evidence within the time limit initially set by the Office and, therefore, the later evidence, submitted as a further clarification of the applicant’s argument, can be considered to be supplementary. It is also important to note that the applicant had the opportunity to comment on these additional pieces of evidence, which it did on 21/04/2020.

Time of use

Regarding the time of use, most of the invoices, both to and from the opponent, are dated within the relevant period. Moreover, even if some of the pictures of the trade fairs are not dated, the other evidence related to those pictures, namely invoices, printouts of the webpage (encl.30) or even the pictures by themselves contain sufficient information for it to be concluded that the fairs were held through the relevant period. Therefore, taking into account all the evidence, the time of use is considered to be proven for the relevant period.

Place of use

The evidence, taken as a whole, shows that the goods originate from the Netherlands and that they are also offered on the Dutch market. This can be concluded from the information in the invoices, both as sender and recipient; by the currency (euro) mentioned in the invoices; the language used in the invoices and also in the Dutch version of the website. Additionally at the Dubai Alimentary Fair in 2015 the company’s stand is indicated with the sign ‘Holland’.

According to Article 18(1), second subparagraph, point (b), EUTMR, the following also constitutes use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes.

In the case of an earlier national trade mark, this provision needs to be applied by analogy. Consequently, and in accordance with Article 18(1), second subparagraph, point (b) EUTMR, the evidence of use contains indications concerning the place of use which can be concluded to be the Netherlands which is part of the Benelux. The unitary character of the Benelux trade mark means that use in at least part of the relevant territory suffices, thus, in view of the above, this requisite is fulfilled.

However, as concerns Italy, the designated territory of the earlier international registration, it is questionable whether or not this requisite has been fulfilled. Seven of the invoices (included in the encl. 4, 6, 9, 14-2 pieces and 15-2 pieces) indicate that the recipients of the products are in Italy. Moreover, the report for the use of the earlier mark (encl.28), the printout for promotional Primavita games (encl.26) and the printouts of the Primavita’s webpage indicate Italy and Belgium (exhibits 1-1) as countries where the earlier mark was shown. However, this evidence of use is significantly smaller than in the case of the Benelux territory and the evidence that supports it is much less and sporadic. The Opposition Division is of the opinion that this requisite has not been fulfilled as concerns Italy. However, given that the geographical dimension is just one of the aspects to be considered the Opposition Division will proceed to examine the extent.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of ‘genuine use’ entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It should be recalled that the purpose of proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the mark (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36-38). Use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 51). Even minimal use can therefore be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 21). Furthermore, genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.

At least as concerns the Netherlands, the invoices provided are numerous and distributed uniformly during the relevant period of time, they are related to the Primavita infant formulas, Primavita HiCal milk powdered product and Primavita powdered goat’s milk product which originate from the Netherlands and in their vast majority are intended for the same market.

The evidence concerning the trade fairs, as Dubai Alimentary Fair in 2015 and Gulfood fair 2017 (also in Dubai), and the invoices for delivers in Rwanda and Vietnam indicate that the mark ‘PRIMAVITA’ is used also abroad for the goods mentioned in the previous paragraph.

Therefore, the Opposition Division considers that the earlier mark has had a very constant use over time, and that the opponent has provided sufficient indications concerning the extent of use of the earlier Benelux mark for the territory of the Netherlands, which is part of the Benelux.

However, the same cannot be concluded for the territory of Italy.

There are only seven invoices that concern Italy for Primavita full cream goat milk and HiCal powdered milk. The Opposition Division could not identify invoices for food for babies or any other infant formula.

Additionally, although the witness statements, refer to the use of the mark in Italy it is not clear to which of the identified goods it refers and finally, although the internet webpage has its Italian version, it is not dated, and all products presented on this site are for babies, not for the goods indicated in the invoices. As can be seen from the listing of evidence, reference to Italy is scarce to say the least.

Therefore, considering that the goods covered by the evidence can be summarised in two separated groups, namely food for babies (Class 5) and powdered milk, (it may belong to Class 5, but it is different from food for babies, or to Class 29 milk and dairy products) the evidence that concerns each of them separately cannot be assembled together. Therefore, these seven invoices to one physical and one legal person, although spread through the entire period of use, contain insufficient indications concerning the extent of the use of the earlier mark in Italy. The information and evidence submitted by the opponent is not enough to show, beyond any reasonable doubt, that the earlier trade mark was genuinely used in the territory of Italy for any of these groups of goods.

Genuine use of a trade mark, cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgments of 30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 24 and of 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42).

Moreover, there is no evidence in relation to following goods of international trade mark registration No 683 729 designating Italy:

Class 29: Preserved, dried and cooked fruit and vegetables; jellies, jams, compotes.

Class 30: Flour and cereal preparations; edible ices; ice for refreshment; chocolate (beverages); gruel, with a milk base, for food.

Although here and there the opponent mentioned ‘Primavita rice cereal mixed fruits’ and ‘Primavita rice cereal vanilla’ they are not goods that can be included in the definition gruel, with a milk base, for food as they are presented as foods for babies (the products can be given from the age of 6 months).

Therefore, the opponent failed to prove use in relation to the goods protected by international trade mark registration No 683 729 designating Italy. Consequently this mark must be set aside.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods and the opponent. All of the invoices submitted include the opponent’s earlier mark, ‘PRIMAVITA’, in the description of the goods. The mark also appears in a figurative form as shown above in enclosure 25 for example.

Article 18 EUTMR states that use of the mark in a form different from that registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

In the present case, the evidence shows that the earlier trade mark has been used as registered or in a various figurative forms such as . Therefore, considering that in the present case the figurative elements are limited mainly to the colour of the letters and/or background, these changes are of a decorative character and have no impact on the distinctive character of the marks as a whole.

The use of the earlier word mark ‘PRIMAVITA’ is clearly in line with the essential function, namely to indicate commercial origin of the goods. Therefore, the Opposition Division considers that the evidence shows that the mark has been used in accordance with its function and as registered.

As to the goods for which the earlier mark is used, they are identified on the basis of the evidence and as mentioned above are different kind of formula milk for babies; HiCal powdered milk and goat milk powder. The Opposition Division considers the identification HiCal as a description of the characteristics of the goods, namely that they have a high calcium content and not as an additional trade mark. However, even if HiCal is perceived as a trade mark by the relevant public, the Court has held that several signs may be used simultaneously without altering the distinctive character of the registered sign and that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it is used in conjunction with another mark (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 34 and 18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 36) which indeed is applicable to the case at hand.

The applicant disputes that the evidence submitted shows use for all the goods. It points out that baby milk formula and milk powder formula are all for special dietary use and thus in Class 5 since regular milk and milk products pertain to Class 29.

The applicant is of the opinion that HiCal powdered milk is a dietary supplement, intended for special dietary use, which is not for medical use, but nevertheless belong to the goods in Class 5. This assertion is based mainly on the description of the goods and on the statement regarding the produced goods provided by the opponent, namely:

‘Primavita HiCal is a milk powder product for people who need a high protein nutrition. It is characterized by high protein level and nearly no fat, so the energy value is low. The product contains a mixture of oligofructose and inuline. These ingredients may promote the growth of a healthy flora in the gut, such as Bifidobacterium. The product contains a high level of calcium, which contributes to bone health. A high level of iron and a high level of folic acid are characteristic for this Primavita HiCal formula’ (encl. 29).

‘We produce infant formula and dietetic milk powders. Triscom Holland is the world-wide supplier of nutritionally based milk powder formulations for infants, young children, adults and special target groups.’(emphasis added by the examiner; exhibit 1-1).

Firstly, it is clear that the milk and formula products for babies fall within the category food for baby in Class 5. Indeed, this is clearly indicated in the evidence. As to the HiCal powdered milk and the goat milk powder, the question arises as to whether or not these are in Class 5 or in Class 29. In this regard, it is important to note that food for human beings that is specifically for dietetic purposes is classified in Class 5 and the description of the goods should specify that it is for medical purposes. In order to be dietetic, the food must serve a specific medical requirement and usually be eaten under the supervision of a doctor. For example food for diabetics is a highly specialized food product eaten for medicinal purposes. However food that is lower in calories, sugar, fat or salt or fortified with vitamins and calcium for example, or without being specified for treatment of a medical condition and which can be purchased easily in any grocery store, cannot be classified in Class 5. If the good classified in Class 29 for example indicates a health related feature but does not include the language ‘for medical purposes’, the health impact of the food does not rise to the level of a dietetic food adapted for medical purposes.

The Opposition Division is of the opinion that the description of the goods produced by the opponent and in particular of the Primavita HiCal milk product do not lead to the finding that the goods are in Class 5 but that they are rather pertinent to Class 29. Although, considering the description, the goods have a positive impact on the flora in the gut and contain high protein level and nearly no fat; high level of calcium, which contributes to bone health; a high level of iron and a high level of folic acid they are neither for medical use or for a specific health condition, for example as diabetics or osteoporosis. Moreover, many foodstuff can be referred as ‘heathy’ due to a lower substance of undesirable ingredients and higher substance of useful elements and agents as described previously. Therefore, the opponent’s goods, although having higher levels of desired elements have to be considered as belonging to the category of milk and milk products in Class 29.

The applicant also refers to many registered trade marks that contain indications for ‘milk powder’ in the goods classified in Class 5. However, as stated by the applicant the decisive criteria to which class the goods belong depend upon the nature and purpose of the milk powder. Therefore, the fact that goods in other marks are included in Class 5 is not a reason for the same conclusion to be reached in the present case.

Additionally, the other product for which use is proven, namely goat’s milk powder, is not commented on by the applicant. In the evidence this product is define as “…can be a good alternative for cow’s milk. The product has a pleasant flavour and taste. It can be easily dissolved in water for a ready-to-use drink’. Therefore, the characteristics with which it is described are strictly organoleptic that are traditional for foodstuffs and do not refer to any impact that these goods may have on the human body by consumption.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

If a trade mark has been registered for a category of goods which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition. Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which it has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45 46).

In the present case, the earlier Benelux mark protects milk and milk products in Class 29 and as illustrated above, the opponent has shown use for milk powder which can be considered as a sub-category.

Further as indicated previously, the opponent has also proven use for food for babies in Class 5.

Therefore, the evidence, in its entirety, prove genuine use of the earlier Benelux trade mark registration No 559 137 for the following goods:

Class 5: Food for baby.

Class 29: Milk powder.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

In relation to Benelux trade mark registration No 559 137

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

The goods on which the opposition is based, following the above conclusion of the Proof of Use analysis, are the following:

Class 5: Food for baby.

Class 29: Milk powder.

The remaining contested goods are the following:

Class 29: Milk and milk products; milk beverages; dairy products; yoghurts; fruit-based snack foods; milk and milk products containing probiotics; milk beverages containing probiotics; dairy products containing probiotics; yoghurts containing probiotics; fruit-based snack foods containing probiotics; milk and milk products containing prebiotics; milk beverages containing prebiotics; dairy products containing prebiotics; yoghurts containing prebiotics; fruit-based snack foods containing prebiotics.

Class 30: Baked goods, confectionery, chocolate and desserts; cereal bars; energy bars; baked goods, confectionery, chocolate and desserts containing probiotics; cereal bars containing probiotics; energy bars containing probiotics; baked goods, confectionery, chocolate and desserts containing prebiotics; cereal bars containing prebiotics; energy bars containing prebiotics; breakfast cereals; breakfast cereals containing prebiotics.

Class 32: Sports drinks; protein enriched sports drinks; non-alcoholic beverages; fruit beverages and fruit juices; syrups and preparations for making beverages; sports drinks containing probiotics; protein enriched sports drinks containing probiotics; non-alcoholic beverages containing probiotics; fruit beverages and fruit juices containing probiotics; syrups and preparations containing probiotics for making beverages; sports drinks containing prebiotics; protein enriched sports drinks containing prebiotics; non-alcoholic beverages containing prebiotics; fruit beverages and fruit juices containing prebiotics; syrups and preparations containing prebiotics for making 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.

The opponent’s goods in Class 5

Food for baby and more specifically baby milk formula is a simulation of human milk and is intended for special dietary use for feeding infants who are unable to feed themselves physically. Regular milk (from cows, goats etc), or milk products (yoghurt or kefir etc) are not interchangeable with baby milk formula or any other baby food. These goods come from entirely different industries – adapted milk formula is synthesised in labs and approved by nutritionists and paediatricians. Milk and milk products are obtained from natural (agricultural) products. Whilst they have to comply with food safety standards, the manner and degree of controlling of the manufacture and circulation of milk products differs greatly from the manner and degree of controlling of the production and circulation of baby milk. The channels of distribution are different and the goods are not made available in the same sections in supermarkets; moreover, baby milk is often purchased in pharmacies. (19/01/2017, R 2319/2015-5, byba Baby (fig.) / BEBA, § 21-26). Therefore, although the category of food for baby is used for nutritional purposes the goods covered by it are strictly meant for infants/babies because they are physically incapable of eating any other type of food, or because it is a medical requirement that they eat this particular type of food.

On the contrary, the applicant’s goods are meant for general consumption (food and drinks) and do not serve the specific purpose of the contested goods, as they do not have the necessary content and specifics of the baby food and at the same time are usually rich in sugars. Even the presence of prebiotics and probiotics in some of the goods will not make them suitable for babies. Therefore, the consumer would not consider that the goods in comparison originate from the same manufacturer and even if they are found in the same large stores they would not be placed next to each other, but rather in different sections. Furthermore, they are neither complementary nor in competition. It is therefore concluded that all of the contested goods in Classes 29, 30 and 32 are dissimilar to the opponent’s food for baby in Class 5.

Contested goods in Class 29

The contested milk and milk products; milk beverages; dairy products; milk and milk products containing probiotics; milk beverages containing probiotics; dairy products containing probiotics; milk and milk products containing prebiotics; milk beverages containing prebiotics; dairy products containing prebiotics include, as broader categories,or at least overlap with, the opponent’s milk powder. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested yoghurts; yoghurts containing probiotics; yoghurts containing prebiotics have the same nature as the opponent’s goods in the sense that they derive from milk. They may have the same producers, distribution channels and relevant public. Therefore, they are similar to the opponent’s milk powder.

The contested fruit-based snack foods; fruit-based snack foods containing probiotics; fruit-based snack foods containing prebiotics do not have relevant points in common with the opponent’s goods. The mere fact that both group of goods belong to the category of foodstuffs is not sufficient for any similarity between them. It is not likely that a manufacturer of snack foods would also manufacture goat milk powder. The process of preserving and packaging of snack foods is not the same as milk processing and requires different plant installations and machinery. Moreover, the goods are neither in competition nor complementary, the relevant public is also different. Therefore, the goods are dissimilar.

Contested goods in Class 30

The goods in Class 30 are bakery goods, cereal bars, desserts and confectionery. They, as the above snack-foods from class 29, do not have relevant points of common with the opponent’s goods. They are neither complementary nor in competition. Moreover, they require different production processes and it is therefore unlikely that they have the same producers. The relevant public and distribution channels are also not the same. The mere fact that they are foodstuffs and as such can be found in grocery stores or in the foodstuffs section of big supermarkets is not sufficient to render them similar. Therefore, the goods are dissimilar.

Contested goods in Class 32

The contested preparations for making beverages; preparations containing probiotics for making beverages; preparations containing prebiotics for making beverages are – at least similar to a low degree to the opponent’s milk powder. Both groups of goods can exist in the same form, namely powder and they have the same method of use as water is added to them to make a drinkable liquid. Moreover, there exists both probiotic and prebiotic milk powder and thus the contested goods would be in competition with the opponents goods as they would also have the same purpose (enhance digestion) and they can be sold at the same places and target the same end user.

The opponent’s goods are very specific products, as they are milk powder. Although milk in powdered form can ultimately quench thirst, its main purpose is nutritional and this is one of the reasons that it is classified in Class 29 and not in Class 32 where drinks are classified. The opponent’s goods and the contested goods are produced through different manufacturing processes, it is not likely the manufacturer is the same, neither the relevant public. Moreover, they are not provided in the same section of big stores, although they are all substances for human consumption. The mere fact that the compared goods may include identical ingredients as pre- or probiotics is not sufficient for similarity as many products contain the same ingredients. Unlike the previous comparison, here the compared goods are in different forms, namely powder v liquid, are usually sold in different packaging, namely cans or packages v bottles and have different methods of use as the contested goods are for direct consumption or are in liquid form, whereas the opponent’s milk powder should be dissolved in water, in the usual case boiled or at least hot. Therefore, the set of reasons that lead to similarity between the preparations for making beverages; preparations containing probiotics for making beverages; preparations containing prebiotics for making beverages and milk powder is not the same in the comparison between sports drinks; protein enriched sports drinks; non-alcoholic beverages; fruit beverages and fruit juices; syrups sports drinks containing probiotics; protein enriched sports drinks containing probiotics; non-alcoholic beverages containing probiotics; fruit beverages and fruit juices containing probiotics; syrups containing probiotics for making beverages; sports drinks containing prebiotics; protein enriched sports drinks containing prebiotics; non-alcoholic beverages containing prebiotics; fruit beverages and fruit juices containing prebiotics; syrups containing prebiotics for making beverages and milk powder. Therefore, the goods are dissimilar.

f) 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 at least a low degree are directed at the public at large. The degree of attention is average.

g) The signs and the distinctiveness of the earlier mark

PRIMAVITA	PROMOVITA
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36). In this regard, the previous comparison of signs already focused on the Dutch speaking part of the public and indeed, the Opposition Division finds it expedient to rely on that same approach and those findings. Consequently, reference is made to sections c) and d) which found respectively the signs are visually and aurally similar to an average degree and conceptually not similar for the relevant public.

The distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

h) Global assessment, other arguments and conclusion

The contested goods have been found partially identical, partially similar to at least a low degree and partially dissimilar. The earlier mark is deemed to have a normal degree of distinctiveness.

The assessments and conclusions reached in the comparison between the earlier mark and the earlier EUTM No 11 185 261 for the word mark ‘PRIMAVITA’ are entirely valid to the present case as the compared signs are identical and the relevant public is the same, namely the Dutch-speaking public. Moreover, when the degree of attention is average, as it is in the case with the goods in Class 29, this is an additional circumstance that can further enhance the likelihood of confusion in comparison when the degree of attention of the public is higher than average.

The applicant and the opponent refer to previous decisions of the Office to support their arguments. 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.

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The applicant refers to the case Septifast v Sensifast (B 1 938 615, 31/01/2013). 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.

However, the Opposition Division is of the opinion that the concepts of the elements ‘Septi’ and ‘Sensi’ are rather descriptive for the goods that were relevant to the case, while the concepts behind the elements Prima-’ and ‘Promo-’ are laudatory in the present case. Additionally, the difference in the elements ‘Septi’ and ‘Sensi’ is in two consecutive letters, ‘pt’ v ‘ns’, contrary to the present case . More importantly the common element of the signs ‘Fast’ is defined as a weak element, which is not the case here. Therefore, due to these circumstances it is reasonable that the outcome is different.

The applicant also refers to the case Primavita v Primavital (B 2413675, 17/11/2015 ) and to various Board of Appeal and General Court decisions that the goods in Class 5 from one side and those in Classes 29, 30 and 32 from another are dissimilar. The Opposition Division does not argue these conclusions, but the fact remains that the goods found identical or similar in this case are not found dissimilar in the cited decisions and therefore the cited decisions are not applicable to the present case.

Therefore, considering the similarities between the signs and the identity and similarities between the goods, as well as the conclusions reached above in section e) of the decision, the Opposition Division finds that there is a likelihood of confusion on the part of Dutch-speaking public and, therefore, the opposition is partially well founded on the basis of the opponent’s Benelux trade mark registration No 559 137. As stated above in sections g) of this decision, a likelihood of confusion for only part of the relevant public 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.

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.

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

Vanessa PAGE

Maria SLAVOVA

Cynthia DEN DEKKER

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.