OPPOSITION No B 2 498 163

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte Part GmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

Vitae Natural Nutrition S.L., Calle Vallès 96-102, Local G29, 08172 Sant Cugat del Vallès (Barcelona), Spain (applicant), represented by Garreta i Associats Agència de la Propietat Industrial S.L., Gran Via de les Corts Catalanes 669 bis, 1º 2ª, 08013 Barcelona, Spain (professional representative).

On 22/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 498 163 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals.

2. European Union trade mark application No 13 523 923 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 523 923. The opposition is based on German trade mark registration No 2 099 762 and international trade mark registration designating the Czech Republic, France and Austria No 853 744. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating France No 853 744.

1. The goods and services

The goods on which the opposition is based, after the cancellation of the earlier mark for some of the goods in Class 5 and all the goods in Classes 29 and 30, are the following:

Class 5: Vitamins, vitamin preparations, also in the form of compressed tablets for human consumption, wheat bran tablets, silica, preparations consisting of mineral salts, respectively for use as medicines.

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals.

Class 39: Transport; packaging and storage of goods; distribution of pharmaceutical and veterinary preparations, and sanitary preparations for medical purposes; distribution of dietetic food and substances adapted for medical or veterinary use, food for babies; distribution of dietary supplements for humans and animals.

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 dietetic substances adapted for medical or veterinary use; dietary supplements for humans and animals include, as broader categories, the opponent’s vitamins, vitamin preparations for use as medicines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested dietetic food adapted for medical or veterinary use; food for babies are foodstuffs, the former specially prepared for people or animals with special dietary requirements and the latter for infants. They have the same purpose as vitamins, vitamin preparations, since these goods are all substances for providing the body with essential sustenance. They may have the same producers, and they have the same relevant public and distribution channels. Therefore, they are similar.

The contested pharmaceutical and veterinary preparations are compounds used for treating or preventing diseases in people and animals, respectively. These goods and the opponent’s vitamins, also in the form of compressed tablets for human consumption have the same purpose, that of preserving the health of the user; they may have the same end users and distribution channels. Therefore, pharmaceutical and veterinary preparations are similar to the opponent’s goods in Class 5.

The contested sanitary preparations for medical purposes are used for sterilising and disinfecting. They do not have the same nature, method of use or purpose as vitamins, vitamin preparations or the opponent’s other goods in Class 5. Moreover, they are not in competition or complementary and their producers are not usually the same. Therefore, sanitary preparations for medical purposes are dissimilar to the opponent’s goods.

Contested services in Class 39

Distribution and transport services are not considered similar to the goods in Class 5. These services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, the contested transport; distribution of pharmaceutical and veterinary preparations, and sanitary preparations for medical purposes; distribution of dietetic food and substances adapted for medical or veterinary use, food for babies; distribution of dietary supplements for humans and animals are dissimilar to the opponent’s goods in Class 5.

Similarly, packaging and storage services merely refer to services whereby a company’s or a person’s goods are packed and kept in a particular place for a fee. Those services are not similar to any kind of goods, including any of the goods that may be packaged and stored (07/02/2006, T‑202/03, Comp USA, EU:T:2006:44; 22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 32; and 07/01/2013, R 1006/2012-G, PIONONO, § 38). Therefore, the contested packaging and storage of goods are dissimilar to the opponent’s goods in Class 5.

2. 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 as well as professionals working in the fields of medicine and nutrition. The relevant professionals have a high degree of attention when prescribing pharmaceutical or dietetic substances. The degree of attention of the non-professional consumers is also likely to be relatively high, since these goods, even though some of them are sold without prescription, can affect the state of their health or that of their pets.

3. The signs

Vitafit	VITAFTA
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is a word mark, ‘Vitafit’.

The contested sign is a word mark, ‘VITAFTA’.

The element ‘VITA’, present in both signs, will be associated by the relevant public with ‘vitality’ or ‘vitamins’. Bearing in mind that the relevant goods are either vitamins or other health-related goods, this element is weak.

Neither the earlier mark nor the contested sign has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘VITAF*T’ in the earlier mark and ‘VITAFT*’ in the contested sign. Furthermore, the marks have the same length, since both are composed of seven letters, of which the first five are the same letters in the same positions; they have in common a sixth letter, the letter ‘T’, although it appears in different positions in the marks. The only differences lie in the differing letters, namely ‘I’ in the earlier mark and ‘A’ in the contested sign (neither of which has a counterpart in the other mark), and in the different positions of the letter ‘T’, which is the seventh letter in the earlier mark and the sixth letter in the contested sign.

In word marks, the words themselves are protected and not the way in which they are presented. Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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, the signs are visually highly similar.

Aurally, for part of the public, the pronunciation of the signs coincides in the sound of the letters /VITAF*T/, present identically in both signs. However, part of the French public will not pronounce the final letter ‘T’ of the earlier mark; therefore, for this part of the public, the pronunciation coincides in the sound of the letters ‘VITAF’. The length of the two marks is the same, since they are both pronounced in three syllables. The marks also have the same intonation and rhythm. The pronunciation differs in the sound of the letters ‘I’ in the earlier sign and ‘A’ in the contested mark, neither of which has a counterpart in the other mark. Moreover, there is a difference in the additional sound of the letter ‘T’ in the contested mark (if that letter is silent in the earlier mark), or (if it is pronounced) in the position of the letter ‘T’, which comes after the letter ‘F’ in the contested sign, while it is the last letter in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the first component, ‘VITA’, included in both signs, could be dissected and associated with the concept of ‘vitality’ or ‘vitamins’. Since this component is weak for the goods at issue, the signs 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark for the relevant public must be seen as normal, despite the presence of the weak component ‘VITA’.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa (20/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 et seq.).

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, 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. 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 (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).

The goods are partly identical or similar and partly dissimilar. The signs are similar, since they have in common the sequence of letters ‘VITAF’ and the letter ‘T’, although it appears in different positions, as the sixth letter in the contested sign, and as the seventh letter in the earlier mark. Therefore, the signs coincide in six of their seven letters and have the same length, number of syllables, rhythm and intonation, which, all together, results in the two marks creating similar overall impressions. The only two differences lie in the differing letters, namely ‘I’ in the earlier mark and ‘A’ in the contested sign, and in the differing positions of the letter ‘T’ in the marks. These differences are not sufficient to exclude the likelihood of confusion between the signs. As stated in section c) of this decision, the first part, ‘VITA’, of the signs is weak in relation to the relevant goods and its impact when assessing the likelihood of confusion between the marks is limited. However, the similarity is not limited to ‘VITA’ but encompasses the next letter, ‘F’; the marks also have in common the letter ‘T’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating France No 853 744.

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

The opponent has also based its opposition on the following earlier trade marks:

German trade mark registration No 2 099 762 for the word mark ‘Vitafit’ and international trade mark registration designating the Czech Republic and Austria No 853 744 for the word mark ‘Vitafit’.

Since these marks cover the same scope of goods, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Niccoló PETRINA

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall 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 720 has been paid.