OPPOSITION No B 3 065 383

Takeda Pharmaceuticals International AG, Thurgauerstrasse 130, 8152 Glattpark-Opfikon (Zurich), Switzerland (opponent), represented by Arianna Lucheroni, Byk-Gulden-Str. 2, 78467 Konstanz, Germany (employee representative)

a g a i n s t

Dmytro Pichugin, Graf-Adolf-Str. 69, 40210 Düsseldorf, Germany (applicant).

On 22/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 383 is upheld for all the contested goods, namely

Class 5: Powdered fruit-flavored dietary supplement drink mix; dietary supplements consisting primarily of calcium; calcium tablets as a food supplement; medicated food supplements; mineral food supplements; mineral dietary supplements for humans; dietary supplemental drinks; nutritional supplements; herbal supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; mineral nutritional supplements; dietary supplements consisting of vitamins; dietary supplements for humans; dietary supplements for humans not for medical purposes; nutritional supplements; powdered nutritional supplement drink mix; dietary supplements consisting primarily of iron; nutritional supplements consisting primarily of calcium; dietary supplements consisting primarily of magnesium; nutritional supplements consisting primarily of magnesium; health food supplements made principally of vitamins.

2. European Union trade mark application No 17 895 918 is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 895 918 ‘VITUM MAN’ (word mark), namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 2 500 759 ‘VITRUM’ (word mark). 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.

a) The goods

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

Class 5: Pharmaceutical preparations, food supplements, except ophtalmological preparations.

The contested goods are the following:

Class 5: Powdered fruit-flavored dietary supplement drink mix; dietary supplements consisting primarily of calcium; calcium tablets as a food supplement; medicated food supplements; mineral food supplements; mineral dietary supplements for humans; dietary supplemental drinks; nutritional supplements; herbal supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; mineral nutritional supplements; dietary supplements consisting of vitamins; dietary supplements for humans; dietary supplements for humans not for medical purposes; nutritional supplements; powdered nutritional supplement drink mix; dietary supplements consisting primarily of iron; nutritional supplements consisting primarily of calcium; dietary supplements consisting primarily of magnesium; nutritional supplements consisting primarily of magnesium; health food supplements made principally of vitamins.

All the contested goods are identical to the opponent’s food supplements, except ophtalmological preparations, as included in, or at least overlapping with them, as in the case of herbal supplements which can also constitute a food supplement.

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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise (in dietetic or food supplements and pharmaceuticals). The degree of attention is considered to be higher than average, as these goods may affect the health of its users.

c) The signs and the distinctiveness of the earlier mark

VITRUM	VITUM MAN
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The second verbal element ‘MAN’ of the contested sign forms part of the basic English vocabulary and refers to an adult human male. Therefore, members of the relevant public that have a basic knowledge of English will understand this term (28/11/2013, T‑410/12, vitaminaqua, EU:T:2013:615, § 58). For this part of the relevant public, the element is devoid of distinctive character, contrary to the applicant’s arguments, because it will be understood as a reference to the target public of the goods at issue. Since this fact has an impact on the comparison of the signs, the Opposition Division will assess the signs from the perspective of the English-speaking public.

The contested sign’s first verbal element ‘VITUM’ does not have any meaning for the relevant public. However, taking into account that the relevant goods are different dietary supplements it is likely that at least a part of the relevant public perceives the three initial letters of this term, ‘VIT’, as alluding to the word ‘vitamin’ (22/10/2010, C‑84/10 P, Kids Vits, EU:C:2010:628, § 13), namely substances essential for the normal functioning of metabolism in the body. Accordingly, although the element ‘VITUM’ as a whole is meaningless, at least a part of the public will perceive it as weak stemming from its ‘VIT’ part.

The verbal element ‘VITRUM’ of the earlier mark will be perceived as meaningless by the relevant public. However, as in the case of the contested sign, the relevant public will identify the initial letters ‘VIT’ as referring to the word ‘vitamin’, which is also weak in relation to the relevant goods. Similarly, as with the contested sign, the relevant public will perceive ‘VITRUM’ as an invented word, alluding to vitamins.

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se, which in the present case is lower than normal due to its vitamin-related connotations.

Visually, the signs coincide in the string of letters ‘V-I-T-*-U-M’. The signs differ in the letter ‘R’ placed towards the middle of the earlier mark, and the second verbal element ‘MAN’ in the contested sign, which is non-distinctive. It is acknowledged that part of the coincidence in the signs rests with ‘VIT’, which carries weak associations. However, it is not only the ‘VIT’ part but also the common ending ‘UM’ in the signs that is identical. Therefore, consumers will be confronted with two signs featuring very similar meaningless words, created by identically placing the weak component ‘VIT’ at the beginning and the identical component ‘UM’ at the ending, the difference being in an additional middle consonant in the earlier mark.

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

Aurally, the signs coincide in the sound of the letters ‘V-I-T-*-U-M’, present identically in both signs. The pronunciation differs in the sound of the letter ‘R’ of the earlier mark, which due to its position towards the middle of the sign is almost imperceptible when comparing the sound of the endings ‘-TRUM’ of the earlier mark, and ‘-TUM’ of the first verbal element of the contested sign. The additional non-distinctive verbal element ‘MAN’, if pronounced, will have a very limited impact on the relevant public for the reasons mentioned above.

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

Conceptually, although the signs as a whole do not have any meaning for the relevant public, the initial letters ‘VIT’, included in both signs, will be associated with the meaning explained above, which has a weak distinctive character. The additional element ‘MAN’ is non-distinctive and therefore will have very limited impact on the relevant public. To that extent, 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 likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The goods are identical and target both the public at large and professionals with specific knowledge or expertise. The degree of attention is higher than average.

The earlier mark has a lower than normal degree of distinctiveness. However, the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, 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 high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the signs are similar to an average degree in all the three aspects of the comparison. Even though the initial coinciding part of the signs has a weak distinctive character, it should still be considered, especially when the signs only differ in one letter placed towards the middle and on an additional element ‘MAN’ in the contested sign that will be of very limited impact due to its descriptive nature. Consequently, in the Opposition Division’s view, these differences are clearly not sufficient to exclude the likelihood of confusion for the goods found identical, even where the attention of the relevant public is higher than average.

Indeed, not only the average consumer, but also those that pay a higher degree of attention, rarely have the chance to make a direct comparison between different marks, but must instead trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 500 759. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Teodora TSENOVA-PETROVA

Cristina SENERIO LLOVET

Alicia BLAYA ALGARRA

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.