OPPOSITION No B 2 544 941

Christine Schreiber, Aspangstr. 45/1/15, 1030 Wien, Austria (opponent)

a g a i n s t

Actavis Group PTC ehf, Reykjavikurvegi 76-78, Hafnarfirdi  220, Iceland (applicant), represented by Arnason Faktor, Gudridarstig 2-4, Reykjavik  113, Iceland (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 544 941 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 665 831. The opposition is based on European Union trade mark registration No 9 355 363. The opponent invoked Articles 8(1)(a), 8(1)(b) and 8(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.

1. The goods

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

Class 3:        Bleaching preparations and other substances for laundry use; soaps; perfumery, essential oils, cosmetics, cosmetic preparations; hair lotions; dentifrices.

Class 5:        Pharmaceutical products; dietetic substances adapted for medical use, food supplements for medical purposes; vitamin preparations; preparations containing trace elements and amino acids for medical purposes; food for babies; food supplements not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements, either singly or in combination, included in class 30.

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, energy drinks.

Class 33:        Alcoholic drinks (except beer).

The contested goods are the following:

Class 5:        Pharmaceutical preparations, vitamins and mineral preparations, nutritional and dietary supplements.

Class 10:        Medical apparatus and instruments; diagnostic test apparatus for women's healthcare; ovulation test apparatus.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 are directed at the public at large and the professional public.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

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 earlier mark is a figurative mark consisting of a magenta coloured vertically aligned rectangle that contains the word elements ‘Vita’ and ‘Lady’, written in white italic type face and separated by a hyphen. These elements occupy the upper portion of the sign. Additionally, a green ‘Venus symbol’ device is located below the word elements, occupying the central and lower sections of the sign.

The contested sign is a figurative mark consisting of a pink coloured vertically aligned shape in the form of a shield that contains the word element ‘OVULATION’, written in white standard typeface, which occupies the upper portion of the sign. The central and lower sections of the sign are occupied by a large light pink coloured circle with a thin white border. This circle contains a pink ‘Venus symbol’ device with a white circular interior, which in turn contains a figurative element representing a stylized image of a calendar.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

It should be noted that the relevant public will attach little trade mark significance to the primary colours used in both the earlier mark and the contested sign, since magenta and pink are commonly used in commerce for the marketing and sales of goods and services targeted at female consumers.

Likewise, the ‘Venus symbol’ device found in both signs is commonly used and understood in the EU as alluding to the female sex. Therefore, this figurative element is weak for the relevant goods, as the relevant public will attach little trade mark significance to the device and instead perceive it as referring to the targeted market sector (female consumers).

The verbal element ‘Vita’ of the earlier mark will be recognized by a significant part of the relevant public as the prefix of Latin origin signifying ‘life’, since it is used in some languages like Portuguese, Spanish, French, Italian and English. Furthermore, this element is commonly used in commerce as a positive allusion to the ‘healthy’ characteristics of products and is therefore weak for this part of the public for the relevant goods. However, for the other part of the public that will not recognize the element in such a way, it has no meaning and is distinctive.

Furthermore, the verbal element ‘Lady’ of the earlier mark will also be recognized by a significant part of the relevant public as the English word signifying ‘a polite or formal way of referring to a woman’ (information extracted from Oxford Dictionaries on 08/05/2017 at https://en.oxforddictionaries.com/definition/lady). Therefore, for this part of the public, this element is weak for the relevant goods, as consumers will attach little trade mark significance to the word and instead perceive it as referring to the targeted market sector (female consumers), as is also the case with the previously described ‘Venus symbol’ device. However, for the other part of the public that will not recognize the element in such a way, it has no meaning and is distinctive.

Furthermore, the same logic applies to the juxtaposed word element ‘Vita-Lady’. A significant part of the relevant public will recognize the previously defined words and perceive the word element as alluding to ‘healthy products for women’. Therefore, for this part of the public, this element is weak for the relevant goods. However, for the other part of the public that will not recognize the element in such a way, it has no meaning and is distinctive.

The verbal element ‘OVULATION’ of the earlier mark will be recognized by a significant part of the relevant public as the English word signifying ‘discharge of ova or ovules from the ovary’ (information extracted from Oxford Dictionaries on 08/05/2017 at https://en.oxforddictionaries.com/definition/ovulation), as well as the corresponding words in languages like Portuguese (ovulação), Spanish (ovulación), French (ovulation) and Italian (ovulazione), due to the semantic similarity of these terms, which all contain the prefix of Latin origin ‘ovula’, signifying ‘egg’. Therefore, for this part of the public, this element is weak for the relevant goods, as consumers will attach little trade mark significance to the word and instead perceive it as referring to the targeted market sector (female consumers), as is also the case with the previously described ‘Venus symbol’ device. However, for the other part of the public that will not recognize the element in such a way, it has no meaning and is distinctive.

Additionally, the part of the relevant public that will recognize ‘OVUALTION’ as a meaningful term will also perceive the stylized image of a calendar present in the contested sign as alluding to the menstrual cycle of women, given the additional reinforcing presence of the previously described ‘Venus symbol’ device. However, for the other part of the public that will not recognize the element in such a way, it will not be associated with any specific concepts and is therefore distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which the previously described verbal elements (‘Vita’, ‘Lady’, ‘Vita-lady’ and ‘OVULATION’) and figurative element (stylized image of a calendar) have no meaning and therefore have a normal degree of distinctiveness for the goods in question. This represents the best case scenario for the opponent.

Visually, the signs coincide in the presence of ‘Venus symbol’ devices (although these devices have different stylizations). Furthermore, their primary colours are highly similar (magenta in the earlier mark vs shades of pink in the contested sign). As was previous stated, these figurative elements are weak, since the relevant public will attach little trade mark significance to them.

The signs differ due to their different verbal elements (‘Vita-Lady’ in the earlier mark vs ‘OVULATION’ in the contested sign) and their remaining figurative elements.

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).

Therefore, the signs are similar to a very low degree.

Aurally, as the signs do not coincide in any verbal element, it is concluded that the signs are not aurally similar.

Conceptually, in relation to the part of the public for which the previously described verbal elements (‘Vita’, ‘Lady’, ‘Vita-lady’ and ‘OVULATION’) and figurative element (stylized image of a calendar) have no meanings, the signs in contention only coincide in the presence of weak figurative elements (differently stylized ‘Venus symbol’ devices and similar primary colours) with limited distinctiveness for the goods in question. Therefore, the signs are conceptually similar to a very 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, as was concluded above, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the part of the public in the relevant territory for which the respective verbal elements (‘Vita’, ‘Lady’ and ‘Vita-Lady’) have no meaning and therefore have a normal degree of distinctiveness. Therefore, the distinctiveness of the earlier mark must be seen as normal for this part of the public, despite the presence of weak elements in the mark, as was stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

As has been mentioned above, the contested goods are assumed to be identical to the opponent’s goods while the signs are visually and conceptually similar to a very low degree, while aurally they are not similar.

In the present case, the similarities between the signs concern weak figurative elements with limited distinctiveness for the goods in question. The signs differ in their verbal elements and remaining figurative elements. Therefore, in relation to the part of the public for which the previously described verbal elements (‘Vita’, ‘Lady’, ‘Vita-lady’ and ‘OVULATION’) and figurative element (stylized image of a calendar) have no meanings, these similarities are not sufficient to lead to a likelihood of confusion on the part of the public, as they are outweighed by their differences.

Furthermore, in relation to the the part of the public for which the verbal elements and figurative elements do convey meanings, the signs in contention are likewise sufficiently far apart as to safely exclude the possibility of likelihood of confusion. This is because, as a result of the previously described weak character and conceptual difference of the elements in question from the perspective of the part of the relevant public that will attach meanings to them, that part of the public will perceive the signs as being even less similar.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will 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) EUTMIR, the Office will 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)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 16/07/2015 the opponent was given two months, commencing after the end of the original cooling-off period, to submit the abovementioned material. This time limit expired on 28/11/2015.

Subsequently, an additional opponent who was originally included in the notice of opposition was removed from the opposition due to the non-indication of the relationship between the two opponents. The admissibility of the earlier mark was reanalysed by the Office and consequently, on 19/01/2016 the opponent was given a new two month period, commencing after the end of the new cooling-off period, to submit the abovementioned material. This time limit was due to expire on 31/05/2016.

After a technical error by the Office lead to the relevant periods and time limits of the opposition being erroneously notified to the applicant, on 29/01/2016 the opponent was given a revised two month period, commencing after the end of the revised cooling-off period, to submit the abovementioned material. This time limit expired on 12/06/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based during any of the above referenced time periods.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Liliya YORDANOVA

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Ewelina SLIWINSKA

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 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 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 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.