OPPOSITION Nо B 3 122 658

Hersill, S.L., Polígono Industrial Las Nieves Calle Puerto de Navacerrada, 3, 28935 Mostoles (Madrid), Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Ardeshir Ghiassi, Pestalozzistr. 18, 59423 Unna, Germany (applicant), represented by Christian Bourgeois, Dieselweg 29, 59379 Selm, Germany (professional representative).

On 13/07/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 122 658 is upheld for all the contested goods and services.
2.	European Union trade mark application No 18 207 806 is rejected in its entirety.

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

REASONS

On 28/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 207 806 for the figurative mark , which at that time included goods and services in Classes 5, 10 and 44. However, following a limitation of the goods and services by the applicant, the contested mark covers only goods and services in Classes 10 and 44. Therefore, the opposition is deemed to be filed against those goods and services. The opposition is based on European Union trade mark registration No 18 078 858 for the word mark ‘VITAE’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 06/03/2020. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the relevant goods, namely:

Class 10: Surgical and veterinary apparatus and instruments; medical apparatus and instruments, not for use in the dental field; therapeutic and assistance devices for disabled people; lung ventilators for medical use; emergency pulmonary respirators; respirators for medical purposes; powered respirators for artificial respiration; apparatus for the treatment of lung ailments; artificial heart-lung machines; cardiopulmonary resuscitation masks; artificial heart-lung oxygenators; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs.

The contested goods and services, after the limitation by the applicant, are the following:

Class 10: Electrically operated massagers; foot massagers; manual massage instruments; scalp massagers; body massagers; massage apparatus; massage chairs; medical apparatus for the relief of pain; neck massage apparatus; orthotic inserts for footwear; arch supports for footwear; vertebral orthopedic apparatus; back massage apparatus; vibromassage apparatus; therapeutic apparatus incorporating massaging facilities; deep heat massage apparatus; posterior spinal fixation devices for the correction of spinal defects.

Class 44: Fitting of orthopaedic devices; physician services; consultancy services relating to orthopaedic implants; advisory services relating to medical apparatus and instruments; medical assistance; dentistry; medical and healthcare clinics; conducting of medical examinations; massage; medical treatment services; deep tissue massage; issuing of medical reports; medical examination of individuals (provision of reports relating to the -); hygienic care for human beings; medical services in the field of treatment of chronic pain; medical and healthcare services; beauty care for human beings; sports medicine services; medical equipment rental; hiring of medical instruments; hiring of dental instruments.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept 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 consists, in particular, of the following documents:

 Annex 1: print-outs from the opponent’s website, which show that the opponent is a manufacturer of medical and surgical apparatus, one of which bears the sign ‘VITAE®40’.

 Annex 2: brochures containing the sign ‘VITAE 40’ in relation to a lung ventilator. Although the brochures are undated, they refer to the usage of the lung ventilator for treatment of Covid-19 patients. Bearing in mind that the Covid-19 pandemic started in December 2019, it is assumed that the brochures are dated after this period. This annex also contains press articles dated between 08/04/2020 and 11/06/2020, stating that the opponent manufactured ‘VITAE 40’ lung ventilators, which provided advanced respiratory support to Covid-19 patients, accompanied by photos of the apparatus.

 Annex 3: ten invoices in the period 30/06/2019 – 01/06/2020 issued by the opponent mainly to customers in Spain for the sale of ‘VITAE 40’ lung ventilators.

 Annex 4: a Full Quality Assurance System Approval Certificate, dated 27/07/2006, updated 20/06/2019 regarding opponent’s products, one of which is ‘VITAE 40’.

 Annex 5: press articles dated in the period 17/03 – 01/06/2020 in various Spanish media, including national ones (e.g. ‘El País’, ‘La Vanguardia’ and ‘La Razón’), stating that the opponent has become one of the keys to supplying the Spanish hospitals with ‘VITAE 40’ lung ventilators to face the Covid-19 pandemic as the Spanish government has put its trust in the opponent for their manufacture. Some of the articles show that the Spanish Prime Minister visited the opponent’s factory after the Spanish government signed an agreement for the production on a large scale of ‘VITAE 40’ ventilators.

 Annex 6: press articles and photos of the opponent’s participation in International fairs, such as, in Spain in October 2017, in Germany in November 2019, in Russia in December 2019 and in Dubai in January 2020, showing the earlier mark. This annex also contains screenshots from the opponent’s profiles in social media and YouTube channel with at least three videos containing in their titles the sign ‘VITAE 40’.

The evidence submitted, assessed in its entirety, shows that the earlier trade mark has been subject to intensive use in Spain at the filing date of the contested mark and is generally known in the relevant market, where it enjoys a consolidated position. The various references in the press, referring to the ‘VITAE 40’ lung ventilators as a vital support and an important element to the global fight against the Covid-19 pandemic, recognised by the Spanish government, unequivocally show that the mark enjoys a high degree of recognition among a significant part of the relevant public. In this context, a European Union trade mark ‘must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community’ (06/10/2009, C‑301/07, Pago, EU:C:2009:611). In view of the current circumstances, the Opposition Division considers that the reputation proven in Spain can be considered to constitute a substantial part of the European Union.

The press articles prove that there was a significant media coverage of the products marketed under the sign ‘VITAE 40’. It is noted that the articles are dated in the period 17/03 – 01/06/2020, whereas the filing date of the contested mark is 06/03/2020. However, the difference is just few days and is not considered significant. Although the reputation of an earlier mark must be established at the filing date of the contested mark, documents bearing a later date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, confirmed 10/05/2012, C-100/11 P, EU:C:2012:285, § 52).

Acknowledgement of a mark endures through time and cannot simply be switched on. Moreover, the press articles reflect the fact that the Spanish government has signed an agreement with the opponent for the production on a large scale of ‘VITAE 40’ ventilators to fight the Covid-19 pandemic. Bearing in mind the importance of such an agreement on the nation’s health and the fact that such agreements are not signed overnight and without prior existence of the product and approval of its qualities on a high (governmental) level, it is considered that these pieces of evidence are sufficient to prove that the mark had acquired a reputation on the relevant date.

Moreover, there are other pieces of evidence showing that the earlier mark was used in relation to lung ventilators prior to the relevant date, such as the brochures (Annex 2), the invoices (Annex 3), the certificate (Annex 4) and the documents showing the exposure of the earlier mark in international fairs (Annex 6).

The invoices prove the sale of lung ventilators bearing the sign ‘VITAE 40’ and are a strong means by which to measure the actual impact of the opponent’s goods on the perception of the public.

Contrary to the applicant’s arguments, a sufficient degree of reputation may be achieved in an exceptionally short period of time as it is the case at issue. In addition, the contested mark was already in use before the application was filed and has therefore had sufficient time to acquire a reputation, especially taking into account the special circumstances causing a drastic change of market conditions over a relatively short period of time.

Some evidence clearly shows the earlier mark as registered, namely ‘VITAE’ without any stylisation, however, in most of the documents, the sign is accompanied by the number ‘40’, which does not alter the distinctive character of the earlier mark. This is because numbers usually indicate the product line or model and, as such, are weak. Moreover, some pieces of evidence show the earlier mark accompanied by the registered trade mark symbol, ®, followed by the number ‘40’, namely ‘VITAE®40’. This shows that indeed the earlier mark ‘VITAE’ is the indicator of commercial origin and its distinctiveness is not altered by the addition of the number ‘40’.

Taken as a whole, the evidence submitted by the opponent is sufficient in itself to prove reputation of the earlier mark amongst the relevant public in the EU at least for lung ventilators for medical use; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs.

Therefore, the opposition will proceed in relation to these goods.

b) The signs

VITAE
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 common verbal element ‘VITAE’ 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). It may also convey such a meaning to consumers whose languages have similar words, such as ‘vida’ in Spanish, ‘vie’ in French, ‘vita’ in Italian, etc. Bearing in mind the relevant goods, it may be perceived, perhaps after some reflection, with an allusion to positive characteristics of the goods, i.e. that they may have a vitalising effect. Therefore, the common verbal element ‘VITAE’ is weak. However, it is on an equal footing in both signs regarding its distinctiveness.

The contested sign’s verbal element ‘CENTRUM’ will be understood by the relevant public as ‘center’, ‘a place at which an activity or complex of activities is carried on’. This is because this word forms a part of a lexicon of languages, such as Danish, Polish and Swedish, or it is very close to the equivalent word in the other languages in the relevant territory. Bearing in mind that the relevant goods and services are usually offered in (medical) centers, this verbal element is non-distinctive.

The contested sign’s figurative element resembles wings spread open. Since there is no link with the relevant goods and services, this figurative element is distinctive.

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

The earlier mark is a word mark, therefore, contrary to the opponent’s arguments, the element ‘VITAE’ is not dominant (visually outstanding). This is because word marks have no dominant elements since by definition they are written in standard typeface.

Visually and aurally, the signs coincide in the element ‘VITAE’, which, although weak, still plays an important role in the overall impression created by the signs. This is because the common element is the only element of the earlier mark and the contested sign’s additional verbal element ‘CENTRUM’ is non-distinctive.

The signs differ visually in the contested sign’s figurative element. However, it has a weaker impact because 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).

Therefore, contrary to the applicant’s arguments, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of their common element ‘VITAE’. Therefore, and taking into account the concept conveyed by the contested sign’s figurative element and the verbal element ‘CENTRUM’, which is non-distinctive and cannot indicate the commercial origin, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

 the strength of the earlier mark’s reputation;

 

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The signs are visually, aurally and conceptually similar to an average degree as they share the verbal element ‘VITAE’, which is the earlier mark’s sole element and is included in the contested sign as an independent element. Furthermore, the contested sign’s additional verbal and figurative elements have a weaker impact.

The earlier mark is reputed on account of intensive use and it is generally known in the European Union at least for lung ventilators for medical use; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs, where it enjoys a consolidated position, as has been attested by independent and diverse sources.

The contested goods and services have a certain connection with the opponent’s lung ventilators for medical use; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs.

Although the opponent’s goods have a more specific field of application than the contested goods in Class 10, they are all medical apparatus and as such have at least the same origin and distribution channels and target the same public (specialists in the healthcare field). Moreover, as seen from the opponent’s website and brochures, the opponent offers other medical apparatus for sale, in addition to the lung ventilators.

Regarding the contested services in Class 44, they are similar to the opponent’s goods insofar as they serve the same purpose (to restore and maintain human’s health) and there is a complementarity between some of them.

Therefore, the contested goods and services could be seen as coming from the opponent.

Consequently, the signs will operate in the same market and will have at least the same origin. The reputation of the earlier mark is sufficiently strong to trigger an association between the opponent’s lung ventilators for medical use; all of the above excluding orthopedic and rehabilitation articles, in particular wheelchairs and the contested closely related goods and services.

Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested sign, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

 it is detrimental to the repute of the earlier mark;

 

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark in the form of free-riding.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent claimed that the contested sign would benefit from the reputation of the earlier trade mark, the qualities of the opponent’s goods could be attributed to the contested goods and services and the customers would wrongly understand that the contested goods and services have the guarantees of the opponent’s goods. Therefore, the consumer would presume that the contested goods and services belong to the opponent as a mere extension or complementation of its goods.

According to the opponent, the use of the contested sign will give the applicant a jumpstart when offering the contested goods and services and will thus benefit from the earlier mark’s reputation and image.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In view of the exposure of the relevant public to the opponent’s earlier reputed mark in relation to the goods for which a reputation has been found and insofar as the existence of the ‘link’ with the contested goods and services has been established, there exists a probability that the use without due cause of the contested sign may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character and the repute of the earlier trade mark.

As seen from the evidence submitted, especially from the press articles, the earlier mark is associated with high quality and is praised as a vital support and an important element to the global fight against the Covid-19 pandemic. Moreover, it was recognised by the Spanish government. Therefore, there is a risk of transferring the image of the earlier reputed mark and the positive characteristics projected by it to the goods and services covered by the contested mark, thus facilitating the marketing of those goods and services through association with the earlier mark with reputation.

The consumer, because of the transfer of positive associations projected by the image of the earlier mark, would be inclined to purchase the contested goods and services in the expectation of finding similar qualities.

Moreover, in view of its special importance, the earlier mark may be exploited even outside its natural market sector, for example, by licensing or merchandising. In such a case, when the applicant uses a sign that is similar to the earlier mark for goods and services for which the latter is already exploited, it will obviously profit from its value in that sector.

Furthermore, because the opponent also offers other medical apparatus for sale, the contested goods and services can be seen as coming from the opponent, as explained above, thus exploiting the reputation of the earlier mark built through the efforts of the opponent. Upon encountering the contested mark, the relevant consumer would inevitably make a mental connection with the earlier sign and the goods it offers, on account of the reputation of the earlier mark. This would give the applicant a competitive advantage since its goods and services would benefit from the extra attractiveness they would gain from the association with the earlier mark.

On the basis of the above, it is concluded that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground on which the opposition was based.

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

Christian STEUDTNER

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.