OPPOSITION Nо B 3 078 618

 

Mars GmbH, Eitzer Straße 215, 27283 Verden (Aller), Germany (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative) 

 

a g a i n s t

 

Nutrapet Systems Deutschland GmbH, Nürtinger Straße 62, 72667 Schlaitdorf, Germany (applicant), represented by Michael Stefan, Unter Den Linden 15, 72762 Reutlingen, Germany (professional representative).

On 29/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.

Opposition No B 3 078 618 is upheld for all the contested goods, namely all the goods in Classes 5 and 31 covered by the contested mark, which are the following: Class 5: Medicated animal feed; medicated additives for animal foods; food supplements for veterinary use; nutritional supplements for livestock feed; dietary supplements for pets; dietary pet supplements in the form of pet treats; mineral supplements for feeding livestock; mineral dietary supplements for animals; probiotic bacterial formulations; vitamins for animals; vitamin and mineral supplements for pets; protein supplements for animals; dietary supplements for animals; antibiotic food supplements for animals; pharmaceutical preparations for animals; trace element preparations for use by animals; feeding stimulants for animals; feeding stimulants for animals; pharmaceutical preparations for the treatment of worms in pets; dietary supplements for pets in the nature of a powdered drink mix. Class 31: Foodstuffs and fodder for animals; cereals preparations being food for animals; malt albumin for animal consumption [other than for medical use]; foodstuffs for animals; animal foodstuffs in the form of pieces; formula animal feed; mixed animal feed; foodstuffs for dogs; pet food; foodstuffs for cats; animal foodstuffs; animal foodstuffs for the weaning of animals; foodstuffs for animals containing botanical extracts; beverages for pets; edible treats for animals; edible chews for animals; pet food; edible pet treats; beverages for pets.

  

2.	European Union trade mark application No 17 984 109 is rejected for all the contested goods. It may proceed for the remaining goods and services.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 20/03/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 17 984 109 ‘NutraVital’ (word mark), namely against all the goods in Classes 5 and 31. The opposition is based on German trade mark registration No 1 147 175 ‘NUTRIVIT’ in relation to which the opponent invoked  Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

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 the trade mark on which the opposition is based, namely German trade mark registration No 1 147 175 ‘NUTRIVIT’.

 

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

 

The date of filing of the contested application is 13/11/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 13/11/2013 to 12/11/2018 inclusive.

 

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

 

Class 31:   Animal feed, in particular birdseed; non-medicated feed additives; pet litter, bird sand, drinks for birds.

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 20/11/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 25/01/2020 to submit evidence of use of the earlier trade mark, and this time limit was later extended until 25/03/2020. As explained to the applicant by letter of 7/08/2020, the DECISION No EX 20-3 of the Executive Director of the Office of 16 March 2020 concerning the extension of time limits and the subsequent DECISION No EX-20-4 of 29 April 2020 automatically extended the time limit set for the other party until 18/05/2020.

On 6/05/2020, within the time limit, the opponent submitted evidence of use.

 

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

 

The evidence to be taken into account is the following:

 Enclosure 1. Witness statement by the business manager of Mars Birdcare Australia. According to the opponent, this company forms part of Mars Incorporated´s group of companies, including the opponent Mars GmbH. The deponent/witness states that “The NUTRIVIT Mark is used by Mars for a line of bird food products containing a specially

formulated mix of vitamins and minerals. The NUTRIVIT range of products includes seed mixes and honey-sticks” and that “The NUTRIVIT Honey Sticks product is available in packs containing 2 and 3 bars (of 70g and 105g, respectively). The NUTRIVIT seed mixes for budgerigars (aka budgies) are offered in packs of 500g and 1kg. In Germany, this seed mix product is described under the German local title "Saaten-Vielfalt für Sittiche" (translation from German: Multiseed for Budgies).

The deponent/witness also explains that the earlier mark has been placed on “TRILL Honey Sticks and seed mix product packaging in the German market since 1 December 2014”, and submits the following images:

 Exhibit 1. 55 Invoices dated in 2018, all written in German. The invoices are issued by Mars GmbH (Verden) and EZHG mbH (Hamburg) to various customers in Germany, referred to in the witness statement as “German retailers and foreign retailers with presence in Germany, which sell pet food (among other goods) to end customers” and that “some of the above retailers are among the largest retailers in Germany” (See Exhibit 3). The invoices show sales of a product referred to in the product description column as “TriSaa500gSittich” and “TriSaa1KGSittich”. These references contain information of the weight of the package, which is 500g and 1Kg. Considering the prices of the goods as shown in the catalogues (see Exhibit 4), and taking into account the ‘total’ (in EUR) shown in the invoices for the purchase of the goods concerned, it can stated that the invoices show a significant amount of sales.

In the witness statement (Enclosure 1) it is explained that “the sales shown in these invoices comprise only a small proportion of the total sales of NUTRIVIT products in Germany and show exemplary sales of NUTRIVIT seed mixes in packages of 500g or 1kg (identified with the reference TriSaa500gSittich or TriSaa1KGSittich – which is the abbreviation of TRILL Saaten-Vielfalt für Sittiche)”, and the following images are included:

In the witness statement it is also explained that the product codes appearing in the invoices correspond to the goods referred to.

 Exhibit 2. Pictures of bird seed and bird honey sticks products. In the packaging the earlier mark is used together with other marks, and in figurative format, stylized as follows:

According to the information in the witness statement, the goods shown in the pictures are NUTRIVIT products supplied from 'Mars Bird Care Australia' to Germany. The information in the back part of the packaging refers to the opponent (Mars) and has the date 13/01/2021 specified.

 Exhibit 3. Wikipedia extracts about companies (Edeka, Fressnapf, Kaufland, Metro AG, REWE) that, according to the information in the witness statement, are retailers offering NUTRIVIT products in Germany. Some of the companies referred to appear in the invoices submitted and described above. The document is in English and the printing date is 3/04/2020. Wikipedia is a website which can be edited by anyone. The website time-stamps each entry and thus provides information relating to the history of modifications applied to it. In the present case, the pages were last edited in January or February 2020.

 Exhibit 4 contains various pieces of evidence.

o Extract from Drotax®, which is described in the document as “a pioneer concerning the development of the first price observation systems for drugstores”. The document contains the price variations of the ‘Trill Saaten Vielfalt 500’ and ‘Trill Saaten Vielfalt 1000’ products, from 2013 to 2018 and the indication of the different resellers.

o Catalogues of pet products, issued between 2015 and 2018 and published by German retailers. The catalogues are in German. In them, the earlier mark is used in relation to bird food, and shown in the packaging as described in previous exhibits, and also together with the mark ‘Trill’ referred to previously, for instance as follows:

 Exhibit 5. Price lists, according to the information in the witness statement, were “published by Mars and issued between 2015 and 2018 as well as the one valid for the current year 2020”. The date appearing in the document is 1/02/2020.

The document does not contain any reference to the earlier mark. It does however contain various references to “Trill”, namely the mark appearing also in the packaging where the earlier mark is used and referred to above. The mark “Trill” appears as the only trade mark used in relation to bird seed and honey sticks.

 Exhibit 6. Screenshot from www.amazon.de (German site of the online retailer Amazon) dated April 2021, in German. The screenshot shows products containing the earlier mark and that are available for sale. The earlier mark is used as described in previous pieces of evidence. The product review contains 6 customer comments in relation to the goods referred to, and these comments are dated in 2016 and 2019.

The applicant contests the evidence of use filed by the opponent on the following grounds:

“The evidence only shows the use of the trademark Trill, which has no relevance at all to this case”, “The trade mark Nutrivit is only ever used in relation to other trademarks – owned not by the opponent, but by Mars Inc.- such as Trill’.

“when analizing the product photos submitted by the opponent (…) it is strikingly obvious that the trademark Trill clearly dominates due to its size and positioning. The word Nutrivit at most has a solely decorative character, which is also perceived as such by the relevant public circles”, “The product is consistently advertised as Trill, in advertising brochures as well as on popular shops – the word Nutrivit cannot be found at all”, “Nutrivit only ever appears as part of the product packaging, where it also only takes a minor spot”, “the word Nutrivit is only present on the packaging (…) easy to miss and absolutely dominated by the trademark Trill”. The applicant also claims the following:

First, as regards the fact that the earlier mark appears used together with marks owned by a different entity, the opponent has replied the following:

“the fact that the Earlier Mark is used as a sub-brand in conjunction with another mark and not as a self-standing brand does not alter its distinctive character as confirmed by the case-law of the Court cited above”

“it is obvious that Mars, Incorporated is not some random third party company. It is the Opponent’s parent company and the two economically linked undertakings have intra-group marketing agreements in place. The branding on the products at issue points to a single origin (that of the Mars group of companies)”

The Opposition Division notes that, as argued by the opponent, use of a mark in combination with third party trade marks, known as co-branding, may also be considered as genuine use.

In fact, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C-12/12, Colloseum Holding, EU:C:2013:253, § 36.)

The Opposition Division notes that, according to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225) Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded. To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

In addition, as claimed by the opponent, as confirmed by the First Board of Appeal, for the purposes of proving genuine use there is a presumption that companies falling in the same group have authorisation to use the trade mark owned by other members of the group (see Case R-1687/2008, 9 September 2010, GALILEO INTERNATIONAL, para. 42).

As regards the use of the earlier mark together with a mark that is not owned by the opponent, the Opposition Division dismisses the applicant´s argument based on the explanations above.

The documents submitted show that the place of use is ‘Germany’. This can be inferred from the language of the documents (German), the currency mentioned (Euro) and the addresses in the invoices. Therefore, the evidence relates to the relevant territory.

At least part of the evidence is dated within the relevant period of time (e.g. invoices, and customers´ comments in Amazon extract in Exhibit 6) or refers to it.

The earlier mark is considered to be used as a trade mark and in the form as registered, despite being in figurative format and despite being used in proximity to other signs in the packaging. The evidence is considered to show that the mark has been used in accordance with its function and as registered, since such variations do not alter the mark significantly, and can still be perceived by consumers as an indication of origin of the products.

 

The documents filed, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

 

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

 

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

 

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.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services 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 he 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 evidence proves use only for food for birds (despite being presented in bars or in 500g or 1000g formats). Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for food for birds  

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition. 

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

 

The goods on which the opposition is based and for which genuine use has been demonstrated are the following:

 

Class 31: Food for birds.

The contested goods are the following:

Class 5: Medicated animal feed; medicated additives for animal foods; food supplements for veterinary use; nutritional supplements for livestock feed; dietary supplements for pets; dietary pet supplements in the form of pet treats; mineral supplements for feeding livestock; mineral dietary supplements for animals; probiotic bacterial formulations; vitamins for animals; vitamin and mineral supplements for pets; protein supplements for animals; dietary supplements for animals; antibiotic food supplements for animals; pharmaceutical preparations for animals; trace element preparations for use by animals; feeding stimulants for animals; feeding stimulants for animals; pharmaceutical preparations for the treatment of worms in pets; dietary supplements for pets in the nature of a powdered drink mix.

Class 31: Foodstuffs and fodder for animals; cereals preparations being food for animals; malt albumin for animal consumption [other than for medical use]; foodstuffs for animals; animal foodstuffs in the form of pieces; formula animal feed; mixed animal feed; foodstuffs for dogs; pet food; foodstuffs for cats; animal foodstuffs; animal foodstuffs for the weaning of animals; foodstuffs for animals containing botanical extracts; beverages for pets; edible treats for animals; edible chews for animals; pet food; edible pet treats; beverages for pets.

 

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

  

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in class 5

The contested medicated animal feed; medicated additives for animal foods; food supplements for veterinary use; nutritional supplements for livestock feed; dietary supplements for pets; dietary pet supplements in the form of pet treats; mineral supplements for feeding livestock; mineral dietary supplements for animals; vitamins for animals; vitamin and mineral supplements for pets; protein supplements for animals; dietary supplements for animals; feeding stimulants for animals; pharmaceutical preparations for the treatment of worms in pets; dietary supplements for pets in the nature of a powdered drink mix; probiotic bacterial formulations; antibiotic food supplements for animals; pharmaceutical preparations for animals; trace element preparations for use by animals originate from specialized companies and, as a general rule, are distinct from animal food manufacturers. The goods under comparison coincide in the relevant public and distribution channels but, as a general rule, have distinct manufacturers. They also have a different nature and purpose. Consequently, the similarity between these goods has to be considered as low (see R2197/2015-5 paras 19-20). In this case two criteria, distribution channels and relevant public are sufficient to conclude that the contested goods in Class 5 are similar to a low degree to the opponent´s food for birds, because of the highly specialised public concerned.

Contested goods in class 31

The contested foodstuffs for animals; cereals preparations being food for animals; malt albumin for animal consumption [other than for medical use]; foodstuffs for animals; animal foodstuffs in the form of pieces; formula animal feed; mixed animal feed; pet food; animal foodstuffs; foodstuffs for animals containing botanical extracts; edible treats for animals; pet food; edible pet treats are identical to the opponent’s food for birds, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested fodder for animals; foodstuffs for dogs; foodstuffs for cats; animal foodstuffs for the weaning of animals; beverages for pets; edible chews for animals; beverages for pets are similar to at least an average degree to the opponent´s food for birds, since they coincide in nature and purpose, coincide in distribution channels/points of sale, they can originate from the same kind of undertakings and at least part of them (e.g. beverages for pets) can also be directed at the same consumers.

 

b)  Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods found to be identical or similar (to varying degrees) are directed in part at the public at large (e.g. foodstuffs for animals) who will display an average degree of attention during the purchase.

Another part of the goods referred to (e.g. food supplements for veterinary use; nutritional supplements for livestock feed) are directed not only at the public at large (e.g. consumers purchasing the products for their pets), but also at professionals in the farming field or in the veterinary field. These professional consumers will display a higher than average degree of attention during the purchase of these goods, as these affect their state of health of the animals being raised (e.g. cattle raising, poultry farms, etc.) or taken medical care of (i.e. veterinary use).

 

c)  The signs

 

NUTRIVIT	NutraVital
Earlier trade mark	Contested sign

 

 

The relevant territory is  Germany.

 

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).

Although both marks are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, 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)

Since the words forming the marks do not exist as such in German, it cannot be totally disregarded that at least part of the public could perceive them as meaningless terms, and therefore as being of average distinctive character.

However, at least part of the German-speaking consumers will perceive each of the signs as formed by two different elements, namely ‘NUTRI’ and ‘VIT’ in the earlier mark and ‘Nutra’ and ‘Vital’ in the contested sign. The reason for this is that they will attribute certain concepts to at least part of the elements forming them, which will help consumers to perceive the marks as formed by independent but linked terms.

The signs are word marks, and therefore the protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters. Nevertheless, where a word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), this must be taken into account. Pursuant to Article 3(2) EUTMIR, the representation of the trade mark defines the subject matter of the registration. The perception of the relevant public, which will not fail to notice the use of irregular capitalisation, also cannot be disregarded. The irregular capitalization of the word forming the contested mark will contribute to spotting two independent elements ‘Nutra’ and ‘Vital’.

The element ‘NUTRI’ in the earlier mark does not exist as such in German. However, taking into account the kind of goods involved, and the existence of the words ‘NUTRIMENT’ and ‘NUTRITION’ (with the same meaning as in English) and ‘NUTRITIV’ (meaning ‘nutritious’ in English) in German, it is likely that ‘NUTRI’ will be perceived by the relevant public as an abbreviated form of the word ‘nutrition’ or at least as meaning food-related. Although these German words are not frequently used nowadays, at least the professional public referred to above will be familiar with them and perceive ‘NUTRI’ as their abbreviation. The non-professional part of the relevant public could also be familiar with the English term ‘nutrition’, and therefore attribute to it the said concept.

The resulting part ‘VIT’, when used in relation to the kind of goods herein involved, is likely to be perceived as an abbreviated form of the German word ‘VITAMIN’ (with the same meaning as in English).

The element ‘Vital’ in the contested mark exists as such in German, and has the same meaning as in English (i.e. adjective used to refer to describe that something is related to or necessary to life or that something is energetic or lively, or of critical importance). The remaining element ‘Nutra’ does not exist as such in German. However, at least part of the public could perceive it as the beginning of the word ‘Nutramin’ (meaning ‘vitamin’), although it is a term not frequently used nowadays, or as having the concept of ‘nutrition’, due to the spelling similarities with such German equivalent described above or to the English knowledge that consumers may have.

To the extent that the marks are perceived as formed by the elements described above, said elements (individually) are of a lower than average distinctive character, for being at least allusive of the characteristics of the goods herein involved (i.e. somehow related to nutrition and/or consisting of or containing vitamins and/or helping the final user of the goods, be it humans or animals, an increased feeling of vitality).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is therefore important to note that in the present case at least part of the coincidences are found at the beginning of the marks (i.e. ‘NUTR’/’Nutr’), although they are not the only ones.

 

 

Visually and aurally, the signs coincide in the sequence of letters ‘N-U-T-R’/’N-u-t-r’ and ‘V-I-T’/‘V-i-t’ and their pronunciation, and differ in the fifth letter ‘I’ of the earlier mark and in the letters ‘a’ and ‘al’ of the contested sign, and their pronunciation.

The differences are therefore found at their middle part, being these preceded and followed by coinciding letters/sounds, which will somehow dilute their impact. They also differ in their endings which, as explained above, are the parts on which the relevant public tends to focus less of its attention, being this also a factor that would lead to consider them of a somehow reduced impact.

For all of the above it is considered that the marks are visually and aurally similar to an average degree.

Conceptually, for the part of the public perceiving both marks as meaningless, invented terms, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public perceiving one/some/all the concepts described above, different scenarios are faced.

For consumers perceiving the concept of ‘nutrition’ or ‘food-related’ in the elements ‘NUTRI’ and ‘Nutra’, and since these elements are of lower than average distinctive character, the marks are considered to be conceptually similar to a low degree to this extent. This conclusion stands independently of the fact that the remaining parts of the marks, namely ‘VIT’ and ‘Vital’, are attributed a concept or not since, even if the signs present conceptual differences in relation to them, the similarity between ‘NUTRI’ and ‘Nutra’ described above is still enough to lead to a low degree of similarity between the marks.

If concepts of both ‘VIT’ and ‘Vital’ are perceived, and the beginnings ‘NUTRI’ and ‘Nutra’ are considered meaningless, the signs refer to different concepts.

Lastly, if only one of the marks is attributed a concept, whichever of the ones described above for the beginnings and endings forming the marks would be, whereas the other one is perceived as a meaningless invented term, the marks are not conceptually similar.

 

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

 

d)  Distinctiveness of the earlier mark

 

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

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection (Article 8(5) EUTMR has been invoked). However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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.

For the part of the public perceiving it as a meaningless term, the earlier mark is of average distinctive character.

Also, for the part of the public attributing it a concept at least in one of the elements resulting from the mental dissection referred to above, the distinctiveness of the earlier mark is normal, despite the fact that the concepts attributed to said element/s can be (when perceived individually) allusive of the characteristics of the goods involved, as stated above in section c) of this decision. The average distinctiveness of the earlier mark lies in the way in which such elements are positioned and combined, forming an invented term that, as a whole, does not give any clear information about the kind of goods concerned (See by analogy Board of Appeal Decision of 11/09/2019, R 80/2019-4, nutravita Healthy Mind, Body & Soul. (fig.) / NUTRIVITAL concerning the English-speaking consumers, who could perceive the concepts in an even more clear way)

 

 

e)  Global assessment, other arguments and conclusion

 

The goods compared are partly identical and partly similar (to varying degrees). They are directed in part at the public at large and in part at professionals. The degree of attention paid during the purchase of the goods will vary from average to higher than average, for the reasons described in section b) above.

The signs are visually and aurally similar to an average degree. Depending on the conceptual perspective that consumers may have, the signs are conceptually similar to a low degree, or have no concept in common.

As explained above, the aural and visual differences are in the middle part of the signs, preceded and followed by coinciding letters, including the coinciding beginning. The differences are therefore somehow diluted for being preceded and followed by coinciding letters/sounds, or at least of less impact than the coinciding beginnings (see section c) above).

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).

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 1 147 175. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR. 

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

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Kieran HENEGHAN

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.