OPPOSITION No B 3 062 658

Vitae Natural Nutrition, S.L., Verneda del Congost, nº 5, Polígon Industrial del Circuit, 08160 Montmeló, Spain (opponent), represented by Garreta i Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative)

a g a i n s t

Dietmed - Produtos Dietéticos e Medicinais, S.A., Edifício Verde – Queimadas – Sernada, 3505-330 Viseu, Portugal (applicant).

On 17/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 658 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 898 409 for the word mark ‘ELIXIR ELVITAE’. The opposition is based on European Union trade mark registrations No 4 513 313 for the figurative mark , No 12 551 404 for the word mark ‘BASE VITAE’ and No 13 755 152 for the word mark ‘BUCO VITAE’, and Spanish trade mark registrations No 2 427 553 for the word mark ‘VITAE’ and No 2 615 959 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 and services on which the opposition is based are, inter alia, the following:

EUTM No 12 551 404 for the word mark ‘BASE VITAE’

Class 5: Dietetic substances adapted for medical use.

EUTM No 13 755 152 for the word mark ‘BUCO VITAE’

Class 5: Dietetic food and substances adapted for medical or veterinary use.

EUTM No 4 513 313 for the figurative mark

Class 3: Cosmetics.

Spanish trade marks No 2 427 553 for the word mark ‘VITAE’ and No 2 615 959 for the figurative mark

Class 39: Distribution services for the natural medical products.

The contested goods are the following:

Class 5: Dietetic substances adapted for medical use.

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.

Dietetic substances adapted for medical use are identically included in the earlier EUTMs No 13 755 152 and No 12 551 404.

In addition, the contested dietetic substances adapted for medical use are also similar to the opponent’s cosmetics of the earlier EUTM No 4 513 313. Cosmetics include goods such as tanning and slimming creams and dietary supplements and dietetic preparations also include goods which are primarily intended to have a cosmetic effect, such as tanning pills and slimming pills. Therefore, these broad categories of goods both include goods that can have the same intended purpose (tanning/slimming the consumers’ body). Furthermore, these goods may be directed at the same consumers, may be sold through the same distribution channels and can also be produced by the same undertakings.

However, as far as services in Class 39, namely distribution services for the natural medical products covered by the earlier Spanish trade marks No 2 427 553 and No 2 615 959, are concern, the contested goods are dissimilar to these services. The opponent’s services are provided by specialist companies whose business is not the manufacture and sale of the goods concerned. The goods and services at issue are different in terms of their nature, intended purpose and method of use; they are neither complementary nor in competition. The mere fact that they both relate to the medical and pharmaceutical sector is not a sufficient factor to conclude that they are similar for the purposes of Article 8(1)(b) EUTMR.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the contested goods and services of the earlier Spanish trade marks No 2 427 553 and No 2 615 959 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as based on these earlier marks.

The Opposition Division will continue with the examination of the opposition as based on the earlier EUTMs No 12 551 404, No 13 755 152 and No 4 513 313.

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 identical or similar goods are directed at the public at large and at the specialist public consisting of medical and pharmaceutical professionals. The level of attention may vary from average to high.

It is apparent from case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgments of 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and quoted case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Since the contested goods are substances for medical use, the above reasoning is applicable due to their possible impact on the consumer’s health.

c) The signs

The Opposition Division will focus the analysis on the opponent’s European Union trade mark No 4 513 313 for the figurative mark since it is a single element sign and this will be the best case scenario for the opponent.

	ELIXIR ELVITAE
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 element ‘VITAE’ of the earlier mark will be understood throughout the European Union as derived from the Latin word ‘vita’ which means ‘life’ (25/10/2012, T-552/10, Vital & Fit, EU:T:2012:576, § 59) and as such as a reference to ‘vital’ or ‘vitality’ (12/07/2006, T-277/04, VITACOAT, EU:T:2006:202, § 54; 08/11/2018, R 512/2018-4, Planta vitae / VITAE, § 39). Therefore, ‘VITAE’ is considered of a weak distinctive character for the goods at issue (cosmetics) as they may have vitalizing effect.

As regards the stylisation of the earlier sign, it is considered that it will be perceived by consumers essentially as a decorative feature. Furthermore, 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).

As regards the first word element, ‘ELIXIR’, of the contested sign, it will be perceived as meaning ‘a magical or medicinal potion; a preparation supposedly able to prolong life indefinitely; a particular type of medicinal solution’ (information extracted from Oxford English Dictionary at https://en.oxforddictionaries.com/definition/elixir on 01/07/2019) since it exists as such in some of the relevant languages (for example, Spanish, Portuguese, Romanian, Swedish, Slovenian) or is close to the equivalent in some of the respective languages (for example, in Italian ‘elisir’, in Danish and Polish ‘eliksir’, ‘Elixier’ in German, ‘elixer’ in Dutch, ‘elixír’ in Czech). For the goods at issue (dietetic substances adapted for medical use), this word is of a reduced distinctive character since it will be perceived as a particular type of medical solution.

The second element, ‘ELVITAE’, of the contested sign is an invented word and does not evoke any meaning. Therefore, its distinctiveness is normal.

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘VITAE’ constituting the sole verbal element of the earlier mark. The signs differ in the beginning of the contested sign, ‘ELIXIR EL*’. As is apparent from the case-law, consumers in general pay more attention to the first part of a mark, taking account of the fact that they read from left to right and that the beginning of a word sign is on the left (27/02/2008, T-325/04, Worldlink, EU:T:2008:51, § 82). The signs differ clearly in their length and structure (five letters and one word of the earlier mark vs. thirteen letters and two verbal elements in the contested sign). The signs also differ in the stylisation of the earlier sign, which however is not of a nature to prevent the consumers to see the verbal element in it.

Although the sole verbal element of the earlier mark is fully included in the contested sign, it is important to underline that it does not constitute an independent component in the contested mark and, furthermore, it is not separated in the way in which it is written (i.e. there is no use of a special character, hyphen or other punctuation mark), but forms the ending of the second verbal component (‘ELVITAE’). Indeed, consumers will not artificially dissect the overlapping letters in ‘ELVITAE’. The average consumer will have great difficulty in perceiving the coinciding part in the contested sign because he does not proceed to analyse the various details of the mark when making a purchase. It is the immediate impression created from the sign that is of relevance and not possible perception upon a detailed analysis.

Therefore, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛V-I-T-A-E’, present identically in the signs. The pronunciation differs in the sound of the letters ‘E-L-I-X-I-R E-L*’, placed at the beginning of the contested sign. The signs at issue have a clearly different rhythm of pronunciation.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are similar to a low degree on account of the life-related connotations of ‘elixir’ of the contested sign and ‘vitae’ of the earlier mark, both of reduced distinctive character.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question.

e) Global assessment, other arguments and conclusion

The goods are similar; they are directed at the public at large and at professionals. The level of attention of the relevant public may vary from average to high. Furthermore, the earlier mark has a low distinctive character.

The signs are visually, aurally and conceptually similar only to a low degree.

The coinciding element ‘VITAE’ does not constitute an independent component in the contested mark, but it forms the final part of the second word in the sign. The Opposition Division finds that in the case at issue the dissimilar arrangement of the signs plays an important differentiating role creating different overall impression and excluding a risk that the public might believe that the goods in question come from the same undertaking, or from economically-linked undertakings. Consequently, the coincidences between the signs as stated above are insufficient to create a likelihood of confusion between the marks.

The opponent has also based its opposition on the following earlier trade marks:

 EUTM No 12 551 404 for the word mark ‘BASE VITAE’ and

 EUTM No 13 755 152 for the word mark ‘BUCO VITAE’.

These earlier rights invoked by the opponent are even less similar to the contested mark. This is because they contain additional words placed in their beginnings, namely ‘BASE’ and ‘BUCO’, which are not present in the contested trade mark. These easily distinguishable and independent first words in the signs will rule out any similarity. Even if they were not distinctive, the outcome cannot be different since the element ‘VITAE’ is still weak as regards the relevant goods in Class 5. Therefore, there is no likelihood of confusion, even for identical goods.

Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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, 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

Teodora TSENOVA-PETROVA

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.