OPPOSITION No B 3 076 160

Farminveste - Investimentos, Participações e Gestão, S.A., Travessa de Santa Catarina 8, 1200-403 Lisboa, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Viva Nutritional Product LLC, 100 West 94th Street 17F, 10025 New York, United States of America (applicant), represented by Hirsch & Associés, 137 rue de l' Université, 75007 Paris, France (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 160 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 952 700 for the figurative mark . The opposition is based on Portuguese trade mark registration No 594 132 for the word mark ‘VIV NUTRI IMUN’, on European Union trade mark registration No 17 898 125 for the word mark ‘ViV Nutri Belibaby Amamentação’, on European Union trade mark registration No 17 898 110 for the word mark ‘ViV Nutri Belibaby Gotas’, and on European Union trade mark registration No 17 898 124 for the word mark ‘ViV Nutri Belibaby Pré-Natal’. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 594 132.

a) The goods

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

Class 5: Immunostimulant for the flu.

The contested goods are the following:

Class 5: Pharmaceutical preparations, namely, dietary and nutritional supplements, health food supplements, gummy vitamins, and nutritional supplements, namely, probiotic compositions.

Some of the contested goods are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at medical practitioners with specific professional knowledge or expertise in the medical and/or pharmaceutical field.

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.

The same line of reasoning can be applied for the goods at question. These are substances prepared for special medical or nutritional requirements with the purpose of treating or preventing a disease and can have important consequences on consumers’ health. Bearing in mind their purpose, it is to be expected that the level of attention by purchasing the goods will be high.

Given that the general public is more prone to confusion, the examination will proceed on this basis, which is the most advantageous scenario for the opponent.

c) The signs

VIV NUTRI IMUN
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark is a verbal mark consisting of three word elements, while the contested sign is figurative containing verbal elements.

The first verbal element ‘viv’ of the earlier mark is in principle meaningless for the Portuguese public and therefore normally distinctive. As to the applicant´s argument that this will be perceived or recognized as coming from the Latin word ‘viva’, the Opposition Division does not consider this scenario to be a likely one, given the shortness of the terms, which determines that a difference in a single letter changes significantly the perception of the whole and also bearing in mind that ‘VIV’ is not a known or used abbreviation of ‘VIVA’.

The word ‘viva’ is, however, the first verbal element of the contested sign. It has a concrete meaning in Portuguese, namely the feminine form of ‘alive’ and it is distinctive as such. The Opposition Division considers that there are no reasons for the Portuguese consumer to attach to this word any other secondary meanings. Therefore, it does not agree with the applicant that the verbal element ‘VIVA NUTRITION’ will be perceived as a slogan, because it is not a Portuguese expression. Even if the public understands an allusion to nutrition, this doesn’t mean that the whole expression conveys a clear univocal sense. Given the lack of any other context (e.g. an exclamation mark), VIVA is likely to be perceived as ‘alive’.

The Opposition Division does not share the opponent’s opinion that the second word element ‘nutri’ of the opponent´s mark is distinctive. This element is sufficiently close to the Portuguese verb ‘nutrir‘, or the noun ‘nutrição’, which mean accordingly ‘to nourish’ or ‘nutrition’ and the Portuguese consumer will at least guess this meaning. Considering the goods in question, this element is weak since it alludes to their function (characteristics), namely to nourish the organism.

The same line of reasoning could be applied to the element ‘nutrition’, contained in the opposed sign. This element, which will be also perceived with the above explained meaning due to its closeness with the Portuguese equivalent ‘nutrição’, is also considered to be weak.

The element ‘imun’ of the earlier mark will be immediately grasped by the Portuguese public as coming from the Portuguese word ‘imune’. Therefore, this element is also weak, since it alludes to the purpose of the goods, namely intended for the immune system.

The figurative element of the contested sign does not represent anything related to the goods and it is therefore distinctive. Even taking into account that in principle the public refers to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37), the said figurative device does contribute to a different visual perception and plays an independent role in the consumer´s overall perception of the sign.

The contested sign has no element that could be considered clearly more dominant than other elements.

The earlier mark is word mark and as such cannot have dominant elements.

From all the above it follows that the first verbal elements of the signs ‘viv’ and ‘viva’, together with the figurative device are the most distinctive ones within the signs and will have more weight in the overall comparison of the signs.

Visually and aurally, the signs coincide in the letters/sounds ‘VIV* NUTRI*’. However, they differ in the letters/sounds ‘a’ and ‘tion’ of the contested sign and ‘imun’ of the earlier mark. Visually, the signs also differ in the figurative element of the contested sign and its colour.

Considering the distinctiveness and the importance of each element addressed above, the Opposition Division finds the signs visually and aurally, contrary to the opponent’s opinion, similar to a low degree only.

The main argument of the Opponent is that the conflicting signs coincide in the letters ‘VIV’ and ‘NUTRI-’.

In this regard, it must be noted that the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

The fact that the signs coincide in some letters does not by itself lead to a finding of high visual similarity. Otherwise, similarity should be found whenever two signs share some letters — without taking into account the impact of this coincidence in the overall perception of the signs.

As seen above, the element ‘nutri’ has been found to be weak, while the element ‘viv’ is distinctive. Even if the latter is compared to the distinctive verbal element ‘viva’ of the contested sign, the comparison in this case would be restricted to a short sign and a relatively short sign. In short signs the difference in one letter/sound is sufficient to render them not similar. In the case at hand the additional letter/sound ‘a’ accounts for one more sound and a second syllable in the contested sign creating in this way different rhythms and intonations compared to the one syllable ‘viv’.

Conceptually, neither of the signs has a clear meaning as a whole. Although ‘nutri’ and ‘nutrition’ will be associated with the same meaning, these elements have been found to be weak. The attention of the relevant public will be attracted by the additional verbal elements, conveying different meanings or being meaningless. Therefore, the signs are conceptually similar to a low degree only.

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

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods are assumed to be identical. They target the public at large and professionals. In this decision the examination is focused on the general public, which is more prone to confusion. In any event the level of attention during the purchase of the goods is considered to be high due to their specialized nature.

The signs are visually, aurally and conceptually similar to a low degree only to the extent that they share some letters/sounds and weak concepts. The distinctiveness of the earlier mark is normal.

Even considering that 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), the fact that the conflicting marks have some letters in common is not sufficient in itself to conclude that these may be confused. As seen above, ‘VIV’ and ‘VIVA’ convey different concepts. It has been established by the case law that the conceptual differences between the signs can in certain circumstances counteract the visual and aural similarities between them. However, the general set-up of the elements of the signs results in a low visual similarity. The distinctive figurative element of the contested mark, which plays a role in the overall perception of the sign, together with the conjoint single verbal element, create a sufficient distance from the earlier verbal mark consisting of three clearly identifiable words

Considering also that the relevant public will be attentive when purchases the goods in question, even assuming that they are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the professional part of the public. This is because, as a result of its educational background and professional expertise that part of the public will be even more attentive when prescribing the goods at issue or will be even familiar with them.

The finding cannot be different in relation to the European Union trade mark registrations on which the Opposition is also based, even though these earlier rights cover a broader scope of protection, since the above assessment has been carried out on the assumption of the identity between all the goods. These rights contain in addition to the elements ‘Viv Nutri’ (analysed already for the Portuguese public), additional words, which are not included in the contested sign and set the signs even more apart.

The element ‘nutri’ of the European Union trade mark registrations will be associated with ‘nutrition’ by at least the English-speaking part of the public in the European Union, since ‘nutri’ forms the root of this word. For these consumers ‘nutri’ and ‘nutrition’ (contained in the contested sign) will have the same weak concept addressed above. For the rest of the public, that does not understand these elements or one of them, the signs will be even less similar since this public could not create a conceptual link between them.

A coincidence in a string of three letters (viv), even considering that these form the beginning of all marks, is insufficient for concluding a likelihood of confusion for marks consisting of long verbal elements.

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.

The Opposition Division

Sylvie ALBRECHT

Meglena BENOVA

Gueorgui IVANOV

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.