OPPOSITION Nо B 3 093 148

Zplus Activline AG, Hasli, 8554 Müllheim-Wigoltingen, Switzerland (opponent), represented by Unit4 Ip Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Bakis Hilal, 1 Rue Des Champs De La Belle, Bavilliers, France (applicant)

On 15/10/2020, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 093 148 is upheld for all the contested goods.

2.	European Union trade mark application No 18 064 007 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of the European Union trade mark application No 18 064 007 ‘goldtslive’ (word mark), The opposition is based on international trade mark registration designating the European Union No 1 032 846, ‘GOLDLIFE’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and sanitary products for medical purposes; dietetic substances adapted for medical use; medicinal preparations for stimulating hair growth; nutritional supplements for medical use.

The contested goods are the following:

Class 5: Food supplements; protein dietary supplements; dietary and nutritional supplements; dietary supplements with a cosmetic effect; food supplements in liquid form; dietary supplements consisting of vitamins; dietary supplements and dietetic preparations; health food supplements made principally of vitamins; dietary supplements for humans.

The contested food supplements; protein dietary supplements; dietary and nutritional supplements; dietary supplements with a cosmetic effect; food supplements in liquid form; dietary supplements consisting of vitamins; dietary supplements and dietetic preparations; health food supplements made principally of vitamins; dietary supplements for humans are various kinds of nutritional supplements and dietetic substances for medical use. Therefore, they are included in the broad categories of, or overlap with, the opponent’s dietetic substances adapted for medical use; nutritional supplements for medical use. Therefore, they are identical.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical are directed at the public at large and at professionals with specific knowledge or expertise in the field of nutrition.

The level of attention of the public is above average insofar as those goods are health-related (24/01/2017, T-258/08, DIACOR / DIACOL, EU:T:2017:22, § 50; 02/12/2014, T-75/13, Momarid, EU:T:2014:1017, § 50; 10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 46; 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).

c) The distinctiveness of the earlier mark and the comparison of signs

GOLDLIFE	goldtslive
Earlier trade mark	Contested sign

The relevant territory is 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since some of the elements that make up the signs at issue are meaningful for the English-speaking public, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking public, since from the perspective of this part of the public the signs will have more relevant coincidences as further explained below.

Both signs are word marks formed by the verbal elements ‘GOLDLIFE’ and ‘goldtslive’ which are, as such and taken as a whole, meaningless for the relevant public.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements, which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).

In the present case, the common verbal element ‘GOLD-’ present at the beginning of both marks will be perceived by the relevant public as referring to ‘a yellow precious metal, the chemical element of atomic number 79, used especially in jewellery and decoration and to guarantee the value of currencies’ (information extracted from the Oxford English Dictionary on 07/10/2020 at https://www.lexico.com/definition/gold). It is a basic English word that is commonly used, and as such will be understood by the non-English-speakers. The word ‘GOLD’ is generally associated with a particular quality and for that reason the distinctive character of this element is low since it can be understood as an indication of the quality of the goods.

The verbal elements -‘LIFE’ and ‘-tslive’ of the earlier and contested sign are meaningless terms and therefore, they are distinctive for the goods at issue.

Taking into account that the earlier mark merely consists of one element, the Opposition Division finds it appropriate to examine its distinctive character within the comparison of signs, given that the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. It is relevant to note that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation and, 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 under assessment and, therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element of low distinctiveness in the mark, as stated above.

Visually, the signs coincide in the letters ‘GOLD**LI*E’ written in the same order in both signs. They differ in the letters ‘ts’ placed in the six and seventh position in the contested mark and in the letters ‘F’ vs. ‘V’ placed in seventh position in the earlier mark and in the ninth position in the contested mark.

It is important to note that 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.

Therefore, taking into account that the coincidence in the signs is focus in their beginnings, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GOLD-’. The pronunciation differs in the sound of the letters ‛ts’ placed in the middle of the contested mark, and in the letters ‘F’ and ‘V’ placed next-to-last in both marks. However, the pronunciation of ‘F’ in the earlier mark and ‘V’ in the contested sign is very close in the relevant languages and therefore, the sound of their endings (‘LIFE’ vs. ‘live’) will be very similar, if not almost identical.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The verbal element ‘GOLD’, included in both marks, will be perceived and associated with the meaning explained above by the relevant public, even though it has a low degree of distinctive character. As the remaining verbal elements ‘LIFE’ and ‘tslive’ are meaningless and the coinciding words have a low degree of distinctiveness. Consequently, the marks are conceptually similar to a low degree.

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

d) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

The goods are identical. The degree of attention of the relevant public is high on account of the specialised nature of the goods as explained in section b). They target the public at large, as well as a professional public. The earlier mark enjoys a normal degree of distinctiveness. The signs are visually similar to an average degree, aurally highly similar and conceptually similar to a low degree.

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 with 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).

Bearing in mind the consumer’s imperfect recollection and the fact that the visual differences between the marks (which are quite long: eight letters in the earlier mark and ten in the contested one) is limited solely to three of their letters, whereas the aural differences may go practically unnoticed as explained above, it is considered that those differences may be overlooked by the relevant public and are not sufficient to outweigh the similarities between them.

Considering all the above, there is a likelihood of confusion on the part of the non-English speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 032 846 ‘GOLDLIFE’. It follows that the contested trade mark must be rejected for all the contested goods.

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

Inés GARCIA LLEDO

Claudia SCHLIE

Helen Louise MOSBACK

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.