OPPOSITION No B 3 060 003

VMZ Trunk GmbH & Co. KG, Hagener Straße 261, 57223, Kreuztal, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538, München, Germany (professional representative)

a g a i n s t

Jose Maria Aycart Valdes, Edif. Parking Escalinata Avd. Virgen del Carmen s/n, 11201, Algeciras, Spain (applicant), represented by Consiangar S.L., Calle Albasanz, 72-1º 1, 28037, Madrid, Spain (professional representative).

On 16/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 003 is upheld for all the contested services.

2. European Union trade mark application No 17 881 116 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 and services of European Union trade mark application No 17 881 116 . The opposition is based on, inter alia, German trade mark registration No 305 465 856 ‘VITA’. The opponent invoked Article 8(1)(b) and (5) 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 German trade mark registration No 305 465 856.

a) The goods and services

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

Class 32: Malt beverages; malt beer.

Following a final decision in opposition No B 3 059 862, the contested services are the following:

Class 35: Retailing, wholesaling and sale via global computer networks of beers.

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.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing, wholesaling and sale via global computer networks of beers in Class 35 are similar to a low degree to the opponent’s malt beer in Class 32.

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 and services found to be similar to a low degree are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention is average.

c) The signs

VITA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

The earlier mark is solely composed of the word element ‘VITA’. The element ‘VITA’ will be understood by the relevant public as referring to the concept of ‘life and/or ‘vitality’ (14/01/2016, T-535/14, VITA+VERDE / VITAVIT, EU:T:2016:2, § 49; 04/07/2019, R 2592/2018-4, VitaFiber / Vitafiber § 26). The Board of Appeal recently found that this element was weak, in relation to ‘dietary supplements and fibre supplements’ (04/07/2019, R 2592/2018-4, VitaFiber / Vitafiber § 39).

In the present case, the word ‘VITA’ evokes a generally positive quality attributable to the goods in question (malt beer) (14/01/2016, T‑535/14, VITA+VERDE / VITAVIT, EU:T:2016:2, § 40) in particular that they may have a positive, revitalising effect.

Considering the foregoing, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

The contested sign is a figurative mark consisting of the word element ‘VITADRINK’ written within a red square background.

As regards the component ‘VITADRINK’ in the contested sign, it must be noted that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). However, the Court also holds that consumers, when perceiving a word sign, will break it down into word elements that, for them, have a concrete meaning or resemble words known to them (11/11/2009, T‑277/08, Citracal, EU:T:2009:433, § 55).

The element ‘VITA’ has already been analysed and defined above. In addition, the English word ‘DRINK’ will be perceived and understood by the relevant consumers as this word belongs to the basic English vocabulary. This element is non-distinctive for the relevant services (retailing and wholesaling of beer) as it indicates the nature of the goods being sold which are beverages.

The red frame and the rather standard stylisation of ‘VITADRINK’ of the contested sign are essentially merely decorative elements.

Furthermore, when 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).

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

The earlier mark ‘VITA’ is entirely included in the contested sign as first element. 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, the differences at the end of the contested sign have a limited impact, as they will not be readily perceived by the public.

Visually, the signs are similar in that they coincide in the sequence of letters ‘VITA’ at the beginning of the contested sign, which also forms the whole of the earlier mark. The signs differ in the ending ‘DRINK’ (which is non-distinctive), the stylisation of the verbal element ‘VITADRINK’ and the red frame, in the contested sign which are merely decorative.

Therefore, the signs are similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘VITA’, present identically in both signs. It differs in the sounds of the word ‘DRINK’ at the end of the contested sign which is non-distinctive.

Therefore, the signs are similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the word ‘DRINK’ of the contested sign will evoke a concept, this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the verbal element ‘VITA’ which is the only element of the earlier mark and it is the more distinctive element of the contested sign. Therefore, the signs are conceptually highly similar.

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

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).

In the present case, the conflicting signs are visually and aurally similar to at least an average degree and conceptually highly similar. In particular, the earlier mark is entirely included in the contested sign as its first element and it is its more distinctive element.

The goods and services are similar to a low degree. The degree of attention of the relevant public is average.

The earlier mark has a weaker degree of distinctiveness. In that context, it should be noted that, although the distinctive character of the earlier mark must be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (23/03/2012, T‑157/10, Alixir, EU:T:2012:148, § 27-28).

Moreover, 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).

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 305 465 856.

It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed a higher degree of distinctiveness.

As the earlier German trade mark registration No 305 465 856 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Riccardo RAPONI

Francesca CANGERI

Edith Elisabeth VAN DEN EEDE

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.