OPPOSITION No B 2 413 675

Triscom Holding B.V., Raalterweg 36, 7451 KX Holten, Netherlands (opponent), represented by Marks & Us, Marcas y Patentes, Licenciado Poza 52, 6ºB, 48013 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Primvital AG, Freigutstrasse 7, 8002 Zurich, Switzerland (applicant), represented by Agnieszka Siwko-Piotrowska, Wawozowa 28/44, 02-796 Warszawa, Poland and Tomasz Maciej Rychlicki, ul. Wąwozowa 28/44, 02-796 Warszawa, Poland (professional representatives).

On 17/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 413 675 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical and veterinary preparations; Dietetic foods and substances adapted for medicinal or veterinary use; Food for babies; Dietary supplements for humans and animals.

2. Community trade mark application No 12 805 008 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 12 805 008 for the word mark ‘PRIMVITAL’ namely against some of the goods in Classes 5, 30 and 31. The opposition is based on Community trade mark registration No 11 185 261 protected for goods in Class 5, Benelux trade mark registration No 559 137 protected for goods in Classes 5, 30 and 31, and international trade mark registration No 683 729 designating Italy, protected for goods in Classes 5, 29 and 30. All the earlier rights are for the word mark ‘PRIMAVITA’. The opponent invoked Article 8(1)(b) CTMR.

SUBSTANTIATION: Benelux trade mark registration No 559 137 and international trade mark registration No 683 729 designating Italy

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall 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) CTMIR, the Office shall 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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier Benelux trade mark and international trade mark registration on which the opposition is based.

On 12/12/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 17/04/2015.

The opponent did not submit any evidence concerning the substantiation of the above mentioned earlier trade marks.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on these earlier marks. The Opposition Division will proceed with the examination on the basis of the earlier right, namely Community trade mark registration No 11 185 261.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the Benelux trade mark registration No 559 137 and international trade mark registration No 683 729 designating Italy.

However, as the opponent failed to substantiate these earlier rights within the established time limit, the request for proof of use cannot be taken into account.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 5: Dietetic substances adapted for medical use; food for babies; dietary supplements for medical use.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic foods and substances adapted for medicinal or veterinary use; Food for babies; Dietary supplements for humans and animals.

Class 30: Flour and preparations made from cereals; Bread; Pastry and confectionery; Edible ices; Sugar; Treacle; Yeast; Baking powder.

Class 31: Grains and agricultural, horticultural and forestry products, and grains not included in other classes; Live animals; Fresh fruits and vegetables; Foodstuffs for animals.

As a preliminary remark, both parties made arguments regarding goods which did not appear in the opponent’s notice of opposition. In its submissions the applicant argues about the differences regarding uncontested goods in Class 5 such as plasters, material for stopping teeth, Class 30 such as coffee and tea and Class 31 such as natural plants and flowers. The opponent, in its reply to the applicant, argues about the similarities regarding uncontested goods in Class 31 such as seeds, natural plants and flowers.

The Opposition Division will only examine the opposition as far as it concerns the contested goods which appear in the opponent’s notice of opposition.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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

Dietetic substances adapted for medicinal use and food for babies are identically contained in both lists of goods and services.

The contested dietetic substances adapted for veterinary use; dietetic foods adapted for medicinal or veterinary use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease in humans or animals. All these goods are included in the broad category of the opponent’s dietetic substances adapted for medical use. The fact that the contested goods distinguish between human and animal use does not alter the comparison as the earlier right has protection for all dietetic substances adapted for medical use regardless of the final user. Therefore, they are considered identical.

The contested dietary supplements for humans and animals are included in the broad category of the opponent’s dietary supplements for medical use. Therefore, they are considered identical.

As regards the contested pharmaceutical and veterinary preparations, these goods are related to the healthcare of humans and animals, in the same way as the earlier right’s dietetic substances adapted for medical use. Medicinal and dietetic substances can equally be used to treat the human beings and animals. Although the nature of these goods may be different, these goods can be produced by the same or related undertakings. They are directed at the same public, be it the end-consumer or a professional. They are, therefore, similar.

The contested sanitary preparations for medical purposes serve hygienic purposes in the healthcare sector, in hospitals, consulting rooms, etc. As such, they have little in common with the earlier right’s dietetic substances adapted for medical use; food for babies; dietary supplements for medical use. Whilst the earlier right’s goods have medical and nutritional purposes the contested goods are sanitary preparations used to protect and promote health by providing a clean environment and stopping the spread of harmful agents such as bacteria through items such as soaps and disinfectants. Thus the origin, nature and intended purpose of the goods under comparison are different. They are not produced by the same or related undertakings and they are neither complementary nor in competition with each other. Consequently, the goods under comparison are considered to be dissimilar.

Contested goods in Class 30

The contested flour and preparations made from cereals; bread; pastry and confectionery; edible ices; sugar; treacle; yeast; baking powder are foodstuffs or ingredients for preparing food. The earlier dietetic substances adapted for medical use; dietary supplements for medical use have something in common with some of the contested goods in Classes 30, in that they may all be considered foodstuffs, but this is not sufficient to render them similar. The goods in question have different purposes (medical, curative, therapeutic vs. nutritive) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the opponent’s goods are mainly sold in pharmacies, veterinary clinics and specialist health care shops as opposed to the applicant’s goods which are sold in supermarkets and other food outlets. As a consequence, these goods are dissimilar.

Regarding the opponent’s food for babies, there is a degree of similarity in their nature with the contested foodstuffs and ingredients for preparing food in that they are all items of food. However, the primary purpose of the opponent’s goods is to nourish babies, which differs from that of the opponent’s goods, none of which are adapted for babies. The opponent’s goods refer to a specialised product which is often sold in pharmacies or in specific sections in supermarkets, and it is not normally found near any of the contested goods. They are neither in competition nor complementary with any of the opponent’s products. Therefore, the applicant’s flour and preparations made from cereals; bread; pastry and confectionery; edible ices; sugar; treacle; yeast; baking powder are dissimilar to the opponent’s food for babies.

Contested goods in Class 31

The contested agricultural products are a result of the cultivation of soil, and farming. Though such products may include goods which are possibly intended for human consumption here they are in a raw, unprocessed form. Horticultural products include fruits, berries, nuts, vegetables, flowers, trees, shrubs and turf. Forestry products result from the art and science of managing forests, tree plantations and related natural resources. Grains and Grains not included in other classes are the edible components of the seeds of cultivated grasses, such as wheat and barley. The contested live animals are animals mostly purchased by farmers for commercial reasons. Fresh fruits and vegetables are parts of plants that are cultivated for sale as human food. The contested foodstuffs for animals refers to livestock fodder (as opposed to forage) for example hay, straw, silage, pellet feeds, etc.

The earlier right has protection for dietetic substances and supplements adapted for medical use and food for babies. These goods have either different purposes (medical, curative, therapeutic and specific nutrition for babies) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets. The fact that some of the contested goods may include goods which are possibly intended for human consumption is insufficient for finding similarity even with baby foods because these goods in Class 31 are in a raw, unprocessed form. As a consequence, these goods are dissimilar.

2. The signs

PRIMAVITA	PRIMVITAL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar in that they are both unitary word marks consisting of 9 letters and coinciding in 8 of these letters, all in the same order, but not all in the same position. The earlier sign has the shared letters ‘P-R-I-M-*-V-I-T-A’ whilst the contested sign has the shared letters ‘P-R-I-M-V-I-T-A-*’. Consequently, the signs differ in one letter each, an ‘A’ as the fifth letter of the earlier mark and an ‘L’ as the ninth letter of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘P-R-I-M’ and ‘V-I-T-A’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the ‘A’ as the fifth letter of the earlier mark and the ‘L’ as the ninth letter of the contested sign.

Conceptually, neither of the signs has a clear and direct meaning, per se, for the public in the relevant territory. However, a part of the public may see some concepts. For example Italian consumers may see ‘prima’ and ‘vita’ as meaning ‘before’ and ‘life’, but then would see no clear concept in the contested sign. English speakers might see ‘prim’ and ‘vital’ as meaning ‘prudish’ and ‘extremely important; needed by your body in order to keep living’, but then would see no concept in the earlier mark. For the part of the public where neither of the signs has a meaning (for example German speakers) the conceptual aspect does not influence the assessment of the similarity of the signs.

The Opposition Division does not share the applicant’s argument that ‘VIT’ will be understood as an abbreviation for ‘vitamin’ in English and many other languages. Firstly, no evidence was filled to support this claim and, secondly, consumers tend to perceive the signs as a whole and commonly do not proceed to dissect them, particularly as in the signs under comparison there are no graphical elements that would break them down into separate components.

However, for the part of the public who might see one sign as having meaning attached to its individual elements, then since one of the signs will not be associated with any meaning, the signs are not conceptually similar (for example some Italian or English speakers).

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 are directed at the public at large and at professionals in the field of medicine or dietetics.

It is apparent from the case-law that, so far as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgment of 15/12/2010, T-331/09, ‘Tolposan’, paragraph 26; and judgment of 15/03/2012, T-288/08, ‘Zydus’, paragraph 36 and quoted case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher than average degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.

For some of the other goods, such as food for babies, for example, the degree of attention might vary from average to high, depending on the exact nature and purpose of the goods.

6. Global assessment, other arguments and conclusion

The contested goods have been found partially identical, partially similar and partially dissimilar. The earlier mark is deemed to have a normal degree of distinctiveness.

In the present case the signs are both unitary word marks and share 8 letters out of a total of 9, all in the same order, but not all in the same position. The only difference between the signs is the presence of an ‘A’ as the earlier marks fifth letter and the ‘L’ which is the last letter of the contested sign. The signs have no graphical elements or clearly assigned concepts to assist consumers in differentiating between them, at least for a part of the relevant consumers in the relevant territory, for example in Germany.

The differences are located in the middle or at the end of the signs, and these are areas where consumers generally tend to focus less when being confronted by a trade mark. Furthermore, the differences in these two letters do not, by themselves, introduce sufficient differences into the signs as they neither alter greatly the visual or aural comparison, nor does it create a conceptual difference between the signs that could assist the public in distinguishing between them.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect recollection of them that they have kept in their minds. In addition, consumers tend to remember similarities rather than dissimilarities between signs.

Considering all the above, and especially bearing in mind the lack of differentiating elements in the signs, the Opposition Division finds that there is a likelihood of confusion on the part public and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 11 185 261.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vita VORONECKAITĖ

Ric WASLEY

Gailė SAKALAITĖ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.