OPPOSITION No B 3 070 688

Vita Zahnfabrik H. Rauter GmbH & Co. KG, Spitalgasse 3, 79713 Bad Säckingen, Germany (opponent), represented by Dompatent von Kreisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Proto Global Gmbh, Grüner Weg 1, 15230 Frankfurt Oder, Germany (applicant), represented by Bartłomiej Henryk Tomaszewski, Ul. Eugeniusza Kwiatkowskiego 1 lok 12, 03-984 Warszawa, Poland (professional representative).

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 688 is upheld for all the contested goods, namely:

Class 5: Pharmaceutical preparations; medications.

2. European Union trade mark application No 17 896 502 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 896 502 (figurative mark), namely against some of the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 8 199 523 ‘VITA’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, including the European Union trade mark registration No 8 199 523 ‘VITA’.

For reasons of procedural economy, the Opposition Division will focus the analysis of the proof of use and later comparison of the signs on the earlier European Union trade mark registration No 8 199 523 ‘VITA’.

The date of filing of the contested application is 15/08/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/08/2013 to 14/08/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Goods relating to dentistry, namely: chemical preparations for dental purposes, chemicals and soldering agents for dental purposes, dental ceramic for making dentures, glass powder for making dentures, disinfectants for dental purposes and for cleaning medical instruments; material for stopping teeth, in particular material, of ceramic or metal, for stopping teeth and artificial resin material for stopping teeth and temporary material for stopping teeth, dental cement, impression material for dental and dental technical purposes, in particular impression plaster, impression wax and plastic impression materials; artificial resins for dental purposes, varnishes and lacquers for dental purposes, in particular dental lacquer; wax for dental purposes; modelling compounds and modelling goods for dental purposes, cement and plaster for dental purposes; dental prosthetic materials, in particular metal-ceramic, all-ceramic.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 23/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 28/10/2019 (and extended until 28/12/2019) to submit evidence of use of the earlier trade mark. On 26/12/2019, within the time limit, the opponent submitted evidence of use.

In addition, on 09/05/2019, within the time limit for substantiate and submit further material, the opponent submitted evidence to support its claim for reputation. As referred by the opponent in its observations, the Opposition Division will consider the initial evidence submitted for reputation as well in order to determine whether the earlier mark was put to genuine use.

Therefore, the evidence to be taken into account, except for Annexes 15 and 19, which only provide information relevant for the similarity of the goods or the meaning of part of the signs, is the following:

 Annex 1: Copy of a brochure dated 2012, entitled ‘50 years of VITA metal ceramics – VMK’. The document includes several references to the earlier mark , the history of the ‘VITA’ brand and promotes its dental product range, such as ‘VITA VMK’, the first metal ceramic veneering system that was launched on the market in 1962, ‘VITA OMEGA’ or ‘VITA 3D-MASTER shade system’.

 Annex 2: Copies of letters to traders of dental goods, dated out of the relevant period (1959 – 1961), in several languages (German, French, English, Italian), with advertising material showing the mark VITA in relation to dental products. Some translations of the notes explaining the content of the material sent are included.

 Annex 3: Copies of two product catalogues dated 2006 and 2013 entitled ‘VITA Kompendium’ including the opponent’s products offered under the mark ‘VITA’, accompanied by other specifications such as ‘VITA PHYSIODENS’, ‘VITA Easyshade’, ‘VITA OMEGA 900’ in German language, with some products including an English description. From the images, it can be deduced that the products are intended for dentistry, as for example:

In addition, there are copies of price lists for several years (1975, 1985, 1995, 2004), including January 2016, in German and with some products including the sign ‘VITA’.

 Annex 4: Printouts from the opponent’s webpage www.vita-zahfabrik.com extracted on 09/05/2019, in English, including the products available under the earlier mark, such as veneering materials, modelling liquids, ceramics, resins, luting, materials for dental laboratories, solutions for tooth shade determination and removable prosthetics. Some of the images of the opponent’s products include the ‘VITA’ mark, such as:

 Annex 5: Copy of the Judgment issued by the Cologne Superior Court (Germany), with English translation, dated May 2000, in which a reputation of the ‘VITA’ trade mark is found.

 Annexes 6 – 10: Several excerpts from market surveys, with partial translations into English, regarding the reputation and distinctiveness of the earlier mark in Germany, conducted in 1991, 2002, 2007, 2012 and June 2017 by the market research institute GfK. The universe of the study were dentists (the major number), commercial dental laboratories, dental depots and competitors of the opponent’s company in Germany. The most recent survey of June 2017 demonstrates that 97.5% of the interviewed persons identified the sign ‘VITA’ in context with dentures or objects used in connection with dentures. In addition, 93.7% of the interviewed persons were able to link the mark ‘VITA’ with the opponent.

 Annex 11: Decision of the European Commission of 27/11/1985, 85/559/EEC, rendered in a procedure concerning artificial teeth. It is mentioned in the decision that ‘Vita Zahnfabrik’ is a ‘significant competitor’ in the ‘Community market for artificial teeth’.

 Annex 12: Decision of the German Federal Cartel Office, dated 2001 and with a partial translation into English, in which it is mentioned that, ‘on the market for artificial teeth […] Vita is the market leader with more than 30% [market share]’. In addition, it is mentioned in the decision that, on the market for veneering ceramics, the opponent’s market share was from 20% to 30%, in the period from 1998 to 2000.

 Annex 13: Presentation of the results of a market report ‘European Dental Market – Laboratory Products 2011-2012’, carried out by the research institute Key-Stone, dated April 2013. The presentation shows the opponent’s position in various EU Member States with respect to ‘color-related materials’, ‘artificial teeth’, ‘porcelain veneering materials’, ‘CAD-CAM frame material’ and ‘resin C&B materials’, covering manufacturers from all the European Union.

 Annex 14: Affidavit of the commercial editor of the opponent’s company dated November 2016, in German and with a translation into English, informing about the annual revenues per year in relation to ‘VITA’ products in Germany (around 20 million €) and the European Union, including Germany (around 30 million €) during the years 2006 until 2015. Declares that the opponent sells dental products addressed to dentists and dental laboratories.

 Annexes 16 – 17: Extracts of the opponent’s product catalogues entitled ‘VITA Kompendium’ dated October 2017, in German, and February 2018 in English. The catalogues include information of the opponent’s products under the mark ‘VITA’, such as ‘VITAVM’, ‘VITA Suprinity’, ‘VITABLOCKS’ or ‘VITA ADIVA’, also included in their packaging. These products relate to ceramic, resin or other materials for making dental restorations, for optimizing the shade of dental ceramic restorations, and full-adhesive luting system for conditioning tooth substance and restorative material.

 Annex 18: A big amount of invoices of the years 2016, 2017 and 2018, addressed to several clients from various countries of the European Union (Bulgaria, Denmark, Italy, Athens, Poland, The Netherlands, United Kingdom) expressed in euros. The unit prices and amounts have been omitted, but in the concept of the invoices there are several references to the quantity and products including the earlier mark ‘VITA’, such as ‘VITA Akzent’, ‘VITA VMK’ or ‘VITA ENAMIC’.

Assessment of genuine use — factors

Place of use

The evidence submitted shows that the place of use is the European Union. This can be inferred from the language of the documents (mainly in German), the currency mentioned (euros) and some addresses in several countries of the European Union (Annex 18). Therefore, the evidence relates to the relevant territory.

Time of use

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, some of the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period because it is close in time to the relevant period, as for example the market survey of Annex 12 carried out in 2012. In addition, there is sufficient evidence dated within the relevant period that shows genuine use of the earlier mark within the relevant period (Annexes 10, 16, 17, 18).

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed, namely the big number of invoices sent to several clients in different parts of the relevant territory during the last years (Annex 18), even though the amounts invoiced are not visible, demonstrate the frequency of use of the mark during the relevant period. In addition, the product catalogues (Annexes 3, 16, 17) and the level of recognition of the mark in Europe (including the survey carried out in 2017 in Annex 10), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Nature of use — use as a trade mark

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The evidence clearly shows that the earlier mark was used in relation to goods related to dentistry, mostly affixed on the products’ labels. Therefore, a link can be established between the sign and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s sign is registered as the word mark ‘VITA’. In the evidence, the sign appears as the registered word mark (e.g. in the invoices) and also as in the packaging of some products, or along with other marks such as ‘VITA Akzent’, ‘VITA VMK’ or ‘VITA ENAMIC’. The slight stylisation of the letters and the use of colours does not alter the distinctive character of the earlier word mark. The simultaneous use of several marks is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time; two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T 463/12, MB, EU:T:2014:935, § 43).

Therefore, the use of the earlier mark in these ways clearly does not alter the distinctive character of the mark. Therefore, the signs above show use of the mark as registered, or in a form essentially the same as that registered, and this use, therefore, constitutes use of the earlier mark under Article 18(1), second subparagraph, point (a) EUTMR.

Use in relation to the registered goods and services

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145; 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 5: Goods relating to dentistry, namely: dental ceramic for making dentures; modelling compounds for dental purposes.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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: Goods relating to dentistry, namely: dental ceramic for making dentures; modelling compounds for dental purposes.

The contested goods are the following:

Class 5: Pharmaceutical preparations; medications.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, 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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

The opponent’s modelling compounds for dental purposes are very specific goods consisting in thermoplastic material (softens with heat) used for dental impressions and for temporarily attaching items together. It is sold through specialised distribution channels aiming at professionals, namely dentists. The contested pharmaceutical preparations; medications are general categories which cover very specialised medicines used by dentists in their daily work, in particular, antiseptics, sedative drugs used for intravenous sedation during dental procedures. Such pharmaceuticals are also aimed at dentists. While it is possible that both types of goods are distributed through separate distribution channels, often the same distribution channels are used for these goods. Therefore, they are similar to a low degree.

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 contested goods found to be similar to a low degree are directed at both the public at large and a professional public (pharmaceutical preparations; medications) while the opponent’s goods target business customers only with specific professional knowledge or expertise in the field of dentistry.

Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines.

In relation to the opponent’s goods, the degree of attention is also high, because the specialist public pays an increased level of attention when selecting goods that can have serious, long-term consequences for the patients (for instance dental ceramic for making dentures), or with respect to articles that are expensive or purchased infrequently.

c) The signs

VITA
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 verbal element ‘VITA’ that constitutes the earlier mark is a word of Latin origin meaning ‘life’ (25/10/2012, T‑552/10, Vital & Fit, EU:T:2012:576, § 59). In view of the relevant public, which is composed of professionals in the field of dentistry and medicine with at least a basic knowledge of Latin, it is likely that the relevant consumers from the medical field are aware of this meaning.. Therefore, it is likely that the relevant public links the meaning of ‘VITA’ to ‘life, life-related’ or ‘lively’. Even though it can create somewhat positive associations, this verbal element has an average degree of distinctive character for the goods at issue (27/05/2013, R-569/2012-4 - HERZVITAL / VITA, § 20).

Although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break them down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will dissect the contested sign in ‘VITA’ (with the meaning mentioned above) and ‘PROTEIN’.

The element ‘PROTEIN’ of the contested sign will be understood by the relevant public as the designation for the substance usually contained in food, but also in some medical preparations. As mentioned by the opponent, this substance can be also used in some dental treatments or materials. Therefore, this element is descriptive for the nature of the goods at issue, or at least of one of their components, and it is non-distinctive.

The figurative element placed at the beginning of the contested sign has a normal degree of distinctiveness. However, it should be considered 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).

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

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.

Visually, the signs coincide in the verbal element ‘VITA’, which is the only element of the earlier mark and the element placed at the beginning of the contested sign. However, they differ in the figurative element and the non-distinctive element ‘PROTEIN’ of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the element ‘VITA’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive element ‘PROTEIN’ of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, 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) 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.

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. 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.

e) Global assessment, other arguments and conclusion

The goods are similar to a low degree and are directed at the professional public with specific knowledge in the medical field, whose degree of attention is high. The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually and aurally similar to an above-average degree and conceptually highly similar. The earlier mark is entirely reproduced at the beginning of the contested sign. Even though the signs differ in the figurative element of the contested sign, this element has less impact on the consumer as mentioned above. Therefore, the differences between the signs are limited to non-distinctive elements or figurative elements with less impact, which are not sufficient to differentiate the signs in dispute.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Even though the goods are similar to a low degree only, it must be kept in mind that 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 assessed degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between the goods, despite the high degree of attention paid by the relevant public.

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 European Union trade mark registration No 8 199 523. It follows that the contested trade mark must be rejected for all the contested goods.

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 an enhanced degree of distinctiveness.

As the earlier right ‘VITA’ 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 right 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

Francesca DRAGOSTIN

Cristina SENERIO LLOVET

Manuela RUSEVA

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.