OPPOSITION No B 2 044 645
Verla-Pharm Arzneimittel GmbH & Co. KG, Hauptstr. 98, 82327 Tutzing, Germany (opponent), represented by Gerstenberg Rechtsanwälte, Uhlandstrasse 2, 80336 München, Germany (professional representative)
a g a i n s t
Sequel Naturals ULC, 33 - 1833 Coast Meridian Road, Port Coquitlam British Columbia V3C 6G5, Canada (applicant), represented by Wildbore & Gibbons LLP, Sycamore House 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.
opponent filed an opposition against some of the goods of European
Union trade mark application No 10 666 618
The opposition is based on European Union trade mark registration No 3 748 654 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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 goods on which the opposition is based are the following:
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, dietetic foodstuffs for medical use; food supplements for medical purposes, with a base of the following components (singly or in any combination of two or more thereof); minerals, trace elements, vitamins, secondary plant substances, vegetable and/or animal oils, carbohydrates, fats, fatty acids, proteins in various chemical stages up to amino acids; food supplements for medical purposes, with a base of vitamins, proteins, enzymes, essential amino acids, minerals and trace elements, including in capsule, powder or juice form, included in class 5; food concentrates being prepared foodstuffs or for individual mixtures (included in class 5); dietetic food concentrates for daily food supplements for medical purposes; vitamins and vitamin preparations.
Class 29: Balanced diet foodstuffs for special nutrition during illnesses, namely dietetic foodstuffs or food supplements, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination, included in class 29; food supplements not for medical use with a base of protein; food concentrates in both solid and liquid form, for daily food supplements, namely food concentrates being prepared foodstuffs or for custom mixing, mainly consisting of powdered milk and/or animal and/or vegetable proteins, including with added vitamins, minerals and sugar; food concentrates in both solid and liquid form, being prepared foodstuffs or for custom mixing, mainly cosisting of animal or vegetable proteins; food concentrates in both solid and liquid form, being prepared foodstuffs or for custom mixing, mainly consisting of dried fruit.
Class 30: Balanced diet foodstuffs for special nutrition during illnesses, namely dietetic foodstuffs or food supplements, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination, included in class 30; food supplements not for medical use with a base of carbohydrates; food concentrates in both solid and liquid form, for daily food supplements, namely food concentrates being prepared foodstuffs or for custom mixing, mainly consisting of carbohydrates, including with added vitamins, minerals and sugar; food concentrates in both solid and liquid form, being prepared foodstuffs or for custom mixing, mainly consisting of carbohydrates and/or cereals; food concentrates in both solid and liquid form, being prepared foodstuffs or for custom mixing, mainly consisting of sugar.
Following the previous decision on Opposition No B 2 038 910 of 22/11/2013 as well as the applicant’s limitation of 06/02/2013 the specification of the contested goods reads as follows:
Class 5: Nutritional, dietary and food supplements for general health and well-being and to enhance physical and mental performance, nutritional supplements in gel form, protein powders for human consumption for use as a food additive, hemp protein, mineral supplements, vitamin supplements, vitamins and meal replacements namely drink mixes, meal replacement bars, powders, ready to drink meal replacement beverages, shake mixes and smoothies, sacha inchi protein/fibre powders; none of the aforesaid goods being for the treatment or prevention of illness or disease.
Class 30: Food flavourings and beverage and food fortification products derived from nuts, seeds and herbs.
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.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’ used in the opponent’s and the applicant’s lists of goods to show the relationship of individual goods with a broader category is exclusive and restricts the scope of protection only to the specifically listed goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).
Contested goods in Class 5
All the contested goods are similar to at least a high degree to the opponent’s dietetic substances adapted for medical use, dietetic foodstuffs for medical use; food supplements for medical purposes, with a base of the following components (singly or in any combination of two or more thereof); minerals, trace elements, vitamins, secondary plant substances, vegetable and/or animal oils, carbohydrates, fats, fatty acids, proteins in various chemical stages up to amino acids; food supplements for medical purposes, with a base of vitamins, proteins, enzymes, essential amino acids, minerals and trace elements, including in capsule, powder or juice form, included in class 5. Although the contested goods are limited to not being used ‘for the treatment or prevention of illness or disease’ while these earlier goods are explicitly mentioned to be for ‘medical purpose’, the goods at issue may coincide in particular in their nature, the relevant public and the distribution channels. In consequence, they are considered similar to at least a high degree.
Contested goods in Class 30
The contested beverage and food fortification products derived from nuts, seeds and herbs overlap with the opponent’s food supplements not for medical use with a base of carbohydrates; food concentrates in both solid and liquid form, for daily food supplements, namely food concentrates being prepared foodstuffs or for custom mixing, mainly consisting of carbohydrates, including with added vitamins, minerals and sugar. Therefore, they are identical.
The contested Food flavourings are products added to food in order to impart or modify odour and/or taste. They are dissimilar to the opponent’s goods in Classes 5, 29 and 30, since they differ in their nature, purpose, method of use and distribution channels. They satisfy different consumer needs and they are not complementary or in competition.
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 a high degree are directed at the specialist public in the field of medicine and at the public at large.
The degree of attention may vary from average to high, depending on in particular the specialised nature of the goods.
Earlier trade mark
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).
Both marks are figurative marks, the earlier mark consists of the verbal element ‘VERLA’ written in upper stylised script against a hatched background within a rhombus shaped device with the letter ‘R’ of the greatest size, the letters ‘E’ and ‘L’ slightly smaller and the first and the last letters, ‘V’ and ‘A’, of the smallest size.
The contested sign is a figurative mark consisting of the word ‘VEGA’ written in bold lowercase typeface, except for the letter ‘G’ which is in uppercase. The first letter ‘V’ of the contested sign has a leaf in the upper part of its left line and it is separated. The device in the contested sign is in a lighter colour than the letters.
The earlier mark ‘VERLA’ may be understood by part of the relevant public (for example, Finnish) as a XIX century mill village in Finland and a UNESCO World Heritage Site since 1996. In particular, the Spanish part of the public will understand the earlier sign as meaning ‘see her’. Since this word in the above mentioned meanings has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, therefore, its distinctiveness is normal. For part of the relevant public that the term ‘VERLA’ has no meaning, its distinctiveness is average.
The word ‘VEGA’ in the contested sign will be perceived as ‘part of lowland, fertile and flat’ by part of the relevant public, for example the Spanish-speaking public. It may also be perceived as the brightest star in the constellation Lyra. Since this word in the above mentioned meanings has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, therefore, its distinctiveness is normal. For part of the relevant public that the term ‘VEGA’ has no meaning, its distinctiveness is average.
The figurative element in the shape of a leaf forming part of the letter ‘v’ will be perceived in the contested sign. Since it may be perceived as a reference to the plant origin of the goods covered by the contested sign, in particular Class 5 goods, it has a reduced distinctive character in relation to those goods.
Account must be taken that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in the signs at issue the verbal elements, ‘VERLA’ and ‘VEGA’ will be the parts of the signs by which the consumer will primarily identify the goods covered by the marks, respectively.
The marks at issue have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the marks are similar to the extent that they coincide in their first two letters, ‘VE*’, and the last letter, ‘A’, although they are stylised differently in both signs. The signs differ in the middle two letters, ‘RL’ of the earlier mark and in one letter, ‘G’ in the contested sign, the figurative elements and the stylisations of both signs.
Although the signs have the same two letters in their beginnings as well as the same letter in the end, given different arrangement of the letters in the earlier mark (the first and the last letters being of the smallest size, the second and the penultimate letters of an average size and the central letter (‘R’) of the greatest size), the signs can be considered visually similar only to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛V-E-*A’, present identically in both signs. The pronunciation differs in the sound of the middle letters of both signs, namely two letters ‘R-L’ in the earlier mark and one letter, ‘G’, of the contested sign. The differing ‘R’ is rhotic consonant and the letter ‘L’ is lateral consonant, while the pronunciation of ‘G’ in the contested sign before the letter ‘e’ is soft.
Therefore, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by part of the relevant public (for example, the Spanish speaking-public) with dissimilar meanings, the signs are conceptually not similar for this part of the public.
For part of the public that may perceive the meaning of one of the signs only, since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence within the established time limit, namely until 28/09/2014, in order to prove such a claim.
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.
Global assessment, other arguments and conclusion
The goods are partially identical, partially similar to a high degree and partially dissimilar.
The degree of attention of the relevant public is considered to vary from average to high. As regards the signs, they have been found visually similar to a low degree and aurally similar to an average degree. In addition, the signs are not conceptually similar or they are dissimilar.
The earlier mark’s level of inherent distinctive character is considered to be average.
The marks display a certain similarity given that they have the letters ‘VE*-A’ in common. However, the middle letters of the signs, namely two letters in the earlier mark and one letter in the contested sign are clearly different, both visually and phonetically (‘RL’ as opposed to ’G’). Contrary to the opponent’s allegations, these letters are phonetically not similar, including for the Spanish-speaking public. The sound of these letters is noticeably different and it will not go unnoticed, in particular taking into account the high degree of attentiveness of the part of the public. For the remaining public, the pronunciation of these letters is also clearly distinguishable.
Account should be taken of the fact that the letters forming the verbal component of the earlier mark are arranged in a fanciful manner, with the coinciding letters (‘V’, ‘E’ and ‘A’) being of the smallest (‘V’ and ‘A’) and a medium size (‘E’). The middle letters of the earlier sign, ‘R’ having the largest size and the letter ‘L’ of the medium size, have no counterpart in the contested sign. This original arrangement of letters in the earlier mark will attract the consumer’s attention and the fact the signs at issue coincide in their first and last letters, ‘VE’ and ‘A’, will not suffice to lead to similarity between the signs. The dissimilar letters in the signs are evidently different and easily distinguishable. The signs at issue are not particularly long (they include five and four letters, respectively) and this will make it easier for the public to notice all the differences between them. Additionally, for part of the public, the dissimilar concepts that the signs convey, will facilitate their differentiation.
Taking into account all the above, the Opposition Division is of the opinion that the differences between the signs will exclude the likelihood of confusion between the signs at issue. The arrangement of letters of the earlier mark plays an important differentiating role creating different overall impression of the signs.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.
The Opposition Division will continue with the examination of the opposition under 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.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 23/07/2012 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit has been subsequently extended and expired on 28/09/2014. Within this time limit, the opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
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
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.