OPPOSITION No B 2 571 621

 

Garmin Switzerland GmbH, Mühlentalstrasse 2, 8200 Schaffhausen, Switzerland (opponent), represented by Edwin Coe LLP, 2 Stone Buildings, Lincoln’s Inn, London WC2A 3TH, United Kingdom (professional representative)

 

a g a i n s t

 

Vivo Smart Medical Devices Limited, MediCity Nottingham D6 Building West, Thane Road, Nottingham, Nottinghamshire NG90 6BH, United Kingdom (applicant), represented by Adamsonjones, BioCity Nottingham Pennyfoot Street, Nottingham, Nottinghamshire NG1 1GF, United Kingdom (professional representative).

 

On 30/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 571 621 is upheld for all the contested goods and services, namely:

 

Class 9:                Handheld apparatus for imaging the eye for non-medical purposes; handheld apparatus for imaging the pupil for non-medical purposes; devices for measuring the eye for non-medical purposes; devices for measuring reactivity of the eye for non-medical purposes; devices for measuring pupillary reactivity to stimulus for non-medical purposes; devices for visualising and assessing the viscosity and thickness of liquids for non-medical purposes.

 

Class 10:        Handheld apparatus for imaging the eye; handheld apparatus for imaging the pupil; devices for measuring the eye; devices for measuring reactivity of the eye; devices for measuring pupillary reactivity to stimulus; devices for visualising and assessing the viscosity and thickness of liquids for medical purposes; physiotherapy and rehabilitation equipment.

 

Class 35:        Business advisory services relating to development of products and services.

 

Class 40:        Contract manufacturing services; manufacturing products for others.

 

Class 42:        Development services relating to products and medical services; research services relating to products and medical services; testing of products and medical services; trialling of products and medical services.

 

 

 

2.        European Union trade mark application No 13 601 505 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

 

3.        The applicant bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 601 505, namely against some of the services in Class 35 and against all the goods and services in Classes 9, 10, 40 and 42. The opposition is based on European Union trade mark registrations No 13 263 009 ‘VIVOACTIVE’, No 12 520 111 ‘VIVOSMART’ and No 12 520 052 ‘VIVOFIT’, and the United Kingdom and Irish non-registered trade marks ‘VIVOACTIVE’, ‘VIVOSMART’ and ‘VIVOFIT’. The opponent invoked Article 8(1)(b), Article 8(5) and Article 8(4) EUTMR for the non-registered trade marks.

 

 

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 European Union trade mark registration No 12 520 052.

 

 

1. The goods

 

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

 

Class 9:         Monitoring devices; tracking devices; monitoring devices not for medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise level goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns; apparatus or instruments for monitoring, tracking, recording or display purposes; and parts of and fittings for the aforesaid goods.

 

Class 10:         Monitoring devices for medical purposes; tracking devices for medical purposes; Monitoring devices for medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise level goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns; apparatus or instruments for medical use and being for monitoring, tracking, recording or display purposes; and parts of and fittings for the aforesaid goods

 

The contested goods and services are the following:

 

Class 9:        Handheld apparatus for imaging the eye for non-medical purposes; handheld apparatus for imaging the pupil for non-medical purposes; devices for measuring the eye for non-medical purposes; devices for measuring reactivity of the eye for non-medical purposes; devices for measuring pupillary reactivity to stimulus for non-medical purposes; devices for visualising and assessing the viscosity and thickness of liquids for non-medical purposes.

 

Class 10:        Handheld apparatus for imaging the eye; handheld apparatus for imaging the pupil; devices for measuring the eye; devices for measuring reactivity of the eye; devices for measuring pupillary reactivity to stimulus; devices for visualising and assessing the viscosity and thickness of liquids for medical purposes; physiotherapy and rehabilitation equipment.

 

Class 35:        Business advisory services relating to development of products and services.

 

Class 40:        Contract manufacturing services; manufacturing products for others.

 

Class 42:        Development services relating to products and medical services; research services relating to products and medical services; testing of products and medical services; trialling of products and medical services.

 

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

 

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

 

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 9

 

The contested handheld apparatus for imaging the eye for non-medical purposes; handheld apparatus for imaging the pupil for non-medical purposes; devices for measuring the eye for non-medical purposes; devices for measuring reactivity of the eye for non-medical purposes; devices for measuring pupillary reactivity to stimulus for non-medical purposes; devices for visualising and assessing the viscosity and thickness of liquids for non-medical purposes overlap with the opponent’s apparatus or instruments for monitoring, display purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the opponent’s goods, they are considered identical to the opponent’s goods.

 

 

Contested goods in Class 10

 

The contested handheld apparatus for imaging the eye; handheld apparatus for imaging the pupil; devices for measuring the eye; devices for measuring reactivity of the eye; devices for measuring pupillary reactivity to stimulus; devices for visualising and assessing the viscosity and thickness of liquids for medical purposes; physiotherapy and rehabilitation equipment are included in the broad category of the opponent’s apparatus or instruments for monitoring, display purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

 

 

Contested services in Class 35

 

The contested services consist of providing others with assistance with the purpose of guaranteeing and/or enhancing the efficiency and quality of the development of products or services. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

 

The nature and purpose of these services are fundamentally different from the manufacture of goods. Therefore, the goods and services under comparison are considered dissimilar.

 

 

Contested services in Class 40

 

The contested services in Class 40 involve an activity sufficiently distant from the opponent’s goods to exclude a similarity between the opponent’s goods and the contested services in question. Moreover, their purposes and end users are different. These goods and services are therefore considered dissimilar.

 

 

Contested services in Class 42

 

Owing to their complementarity, a certain link between the contested services and the opponent’s goods in Classes 9 and 10 cannot be denied, as the opponent’s goods can be used in the process of evaluations and research in the field of medicine. However, the differences in their nature, and especially in their usual origin, clearly outweigh any similarities. The relevant public does not expect scientists to manufacture the opponent’s specific goods or that the manufacturers are involved in research or development activities provided to third parties. Therefore, the contested services and the opponent’s goods are dissimilar.

 

 

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 at business customers with specific professional knowledge or expertise. The degree of attention for the goods at issue will vary from average to high, depending on the kind of goods sold and their price.

 

 

3. The signs

 

 

 

VIVOFIT	VIVO
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. In the present case, since the element ‘FIT’ of the earlier mark has a meaning in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

 

The earlier mark is a word mark, ‘VIVOFIT’; the word as a whole has no meaning for the relevant public, but it will be dissected and the word ‘FIT’, with the meaning of, inter alia, ‘in good health, especially because of regular physical exercise’ (information extracted from Oxford Dictionaries on 26/10/2016 at https://en.oxforddictionaries.com/definition/fit), will be understood. This element is allusive for some of the relevant goods, namely apparatus or instruments for monitoring, display purposes, since they could monitor various health parameters, for example blood pressure. Therefore, the verbal element ‘vivo’ will be the most distinctive element in the earlier mark.

 

The contested sign is a word mark, ‘Vivo’; it has no meaning for the relevant public and is, therefore, distinctive.

 

Visually, the signs coincide in the letters ‘VIVO’, which compose the entirety of the contested mark. However, they differ in the second part of the earlier mark, ‘FIT’.

 

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

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VIVO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛FIT’ of the earlier sign, which, as explained above, is an allusive element for the relevant public and for the relevant goods.

 

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 element ‘FIT’, included in the earlier mark, will be associated with ‘in good health, especially because of regular physical exercise’. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

 

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.

 

According to the opponent, the earlier trade mark has a reputation among the relevant public in the European Union in connection with the goods for which it is registered, namely monitoring devices; tracking devices; monitoring devices not for medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise level goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns; apparatus or instruments for monitoring, tracking, recording or display purposes; and parts of and fittings for the aforesaid goods.

 

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

 

• Witness statement of Andrew R., Vice-President of Garmin Switzerland GmbH. In this affidavit, he refers to the following proof of reputation submitted for goods under the ‘VIVOFit’ trade mark in the United Kingdom:

 

• Exhibits ARE2 and ARE3: copies of invoices, dated 20/10/2014, sent from AMS Media Group to the Garmin Group member Garmin (Europe) Limited and dated 11/11/2014, detailing the costs of advertisements in the publications Metro, Shortlist, Stylist, Time Out and Sport for the trade marks ‘VIVOFit’ (and for another trade mark of the opponent, ‘VivoSmart’).
• Exhibit ARE4: copies of banner advertisements for the ‘VIVOFit’ activity tracker that appeared on the front cover of issues of the newspaper Metro dated 21/10/2014 and 12/11/2014. Metro is a national newspaper distributed free of charge throughout the United Kingdom. The estimated circulation of this publication is 1 345 727.
• Exhibit ARE5: copy of an advertisement for the ‘VIVOFit’ activity tracker in issues of Sport magazine dated 24/10/2014, 30/10/2014, 13/11/2014 and 20/11/2014.
• Exhibit ARE6: copies of advertisements for the ‘VIVOFit’ activity tracker in the magazine Time Out dated 28/10/2014. Time Out has an estimated circulation of 307 767 in London.
• Exhibit ARE7: copies of advertisements for goods (including the depiction of an activity tracker with the design of a watch) under the trade mark ‘VIVOFit’. These advertisements were placed in the magazine Shortlist on 23/10/2014, 30/10/2014 and 13/11/2014. Shortlist is circulated in Glasgow, Leeds, Manchester, Birmingham, London, Brighton, Edinburgh, Liverpool, Newcastle, Bristol, Nottingham, Cardiff and Plymouth, and has an estimated circulation of 535 505.
• Exhibit ARE8: copies of advertisements for goods (including the depiction of an activity tracker with the design of a watch) under the trade mark ‘VIVOFIT’ (and under another trade mark of the opponent, ‘VIVOSmart’) placed in the magazine Stylist on 22/10/2014, 29/10/2014, 12/11/2014 and 15/11/2014. Stylist is distributed in Glasgow, Leeds, Manchester, Birmingham, London, Brighton, Edinburgh, Liverpool, Newcastle, Bristol, Nottingham, Cardiff and Plymouth, and has an estimated circulation of 436 120.
• Exhibits ARE9, ARE10 and ARE11: copies of photographs of display stands at London Victoria and London Waterloo railway stations, advertising ‘VIVOFit’ (and also ‘VIVOSmart’), dated 12/11/2014 and 23/10/2014.
• Exhibits ARE12, ARE13 and ARE14: copies of photographs and of invoices for publicity costs for a poster campaign in 37 shopping centres in various locations in London, from 17/11/2014 to 30/11/2014, related to goods under the ‘VIVOFit’ trade mark (and also under the opponent’s trade mark ‘VIVOSmart’).
• Exhibits ARE15 and ARE16: copies of photographs and invoices for publicity costs for a poster campaign in 37 shopping centres in different locations in the United Kingdom, from 03/11/2014 to 26/10/2014, for goods under the trade mark ‘VIVOFit’.
• Exhibits ARE17, ARE18 and ARE19: copies of photographs and invoices for publicity costs for a panel campaign in 15 train and tube stations across London, from 20/10/2014 to 28/12/2014 and from 10/11/2014 to 16/11/2014, for goods under the trade mark ‘VIVOFit’.
• Exhibit ARE20: screenshots from the Garmin UK Facebook and Twitter web pages showing the trade mark ‘VIVOFit’. They are dated 24/10/2014, 12/11/2014 and 13/11/2014.
• Exhibit ARE21: copies of the advertisement banners depicting the ‘VIVOFit’ activity tracker that were used in an online advertising campaign conducted on websites of newspapers and magazines such as the Telegraph, Country Living , Good Housekeeping, Men’s Health, Cycling Weekly, Rugby World and Trusted Reviews between 20/10/2014 and 21/12/2014, with an estimated readership of 3 318 408.
• Exhibit ARE22: copies of documents with commercially sensitive or confidential information; these are sales order forms from suppliers and distributors in the United Kingdom and include:

• A purchase order from Halfords Limited for 100 000 ‘VIVOFIT’ units in a variety of colours, as well as bundles (the bundle includes the ‘VIVO’ product and a heart rate monitor or ‘HRM’). The order is dated 14/02/2014.
• Purchase orders from various Harvey Norman stores in Ireland for ‘VIVOFIT’ units and bundles, undated.
• A purchase order from Dalesman International Limited, which is based in Leyland, United Kingdom. The order, dated 16/01/2014, is for 360 ‘VIVOFIT’ units.
• A purchase order spreadsheet from an unidentified customer, dated 24/03/2014, for 800 ‘VIVOFIT’ units.
• A purchase order forecast from an unidentified customer, estimating the number of ‘VIVOFit’ units to be purchased between 20/10/2014 and 29/12/2014.

 

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market. Most importantly, it is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is known on the relevant market, where it enjoys a consolidated position, as has been attested by diverse independent sources. The copies of advertisements in magazines, the advertising campaigns conducted throughout the United Kingdom (in major train stations and commercial centres), the invoices showing the expenditure on advertising campaigns and the invoices from sales to different customers in the United Kingdom refer to the trade mark ‘VIVOFIT’ and they prove the reputation of the trade mark ‘VIVOFIT’ in the United Kingdom market for the following goods: monitoring devices not for medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise level goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns.

 

 

5. Global assessment, other arguments and conclusion

 

The goods are identical and the services are dissimilar.

 

The signs are word marks and are visually and aurally similar to an average degree. The word ‘VIVO’, of which the contested mark consists, is entirely contained in the earlier sign, and the earlier sign’s additional word, ‘FIT’, is allusive, as explained above.

 

Taking also into account the enhanced distinctiveness of the earlier mark for some of the relevant goods, the differences between the earlier mark and the contested sign are not sufficient to counteract the significant degree of similarity between them, even if the degree of attention is higher for some of the goods, and therefore there is a serious risk that the relevant public will confuse them and believe that they come from the same undertaking or from economically-linked undertakings.

In its observations, the applicant argues that it owns several registrations with the word ‘VIVO’ in the European Union, constituting a family of marks coexisting with the opponent’s earlier marks.

 

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

 

In this regard it should be noted that formal co-existence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

 

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.

 

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

 

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

 

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 520 052. 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.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

 

The contested 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.

 

 

REPUTATION – ARTICLE 8(5) EUTMR

 

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 12 520 052, for which the opponent claimed repute in the European Union.

 

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.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

• The signs must be either identical or similar.

 

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

 

1. The signs

 

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

 

2. Reputation of the earlier trade mark

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

 

 

3. The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are highly similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

∙        the degree of similarity between the signs;

 

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

∙        the strength of the earlier mark’s reputation;

 

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

∙        the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

 

Reference is made to the comparison of signs, which clearly illustrates the striking similarities between the signs. Indeed, the visual and aural similarities between the signs are so considerable that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 26 and, by analogy, preliminary ruling of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 44). Indeed, the evidence shows that the contested mark has a strong reputation for the following goods and, furthermore, it is inherently distinctive.

 

Class 9:        Monitoring devices not for medical purposes, namely, electronic monitor that monitors, records and displays physical activity levels, physical inactivity periods, steps walked or ran, distances covered in exercise, exercise levels achieved compared with exercise level goals, calories burned, exercise goal levels based on past exercise, quality of rest and sleep patterns.

 

The contested services that have been found dissimilar under Article 8(1)(b) EUTMR are:

 

Class 35:        Business advisory services relating to development of products and services.

 

Class 40:        Contract manufacturing services; manufacturing products for others.

 

Class 42:        Development services relating to products and medical services; research services relating to products and medical services; testing of products and medical services; trialling of products and medical services.

 

As to the earlier mark’s reputation, the public interested in the goods for which reputation has been shown overlaps, to a large extent, with the public interested in the services mentioned just above for which registration is sought.

 

As regards the services in Class 42, a clear link exists with the goods of the earlier mark for which reputation has been proven. Not only will the public interested be the same, but the public, when it sees ‘VIVO’ used in connection with these services, will immediately think that the company offering the goods of the earlier mark is now also offering these services.

 

As regards the services in Classes 35 and 40, although they do not appear to be directly and immediately linked to the opponent’s goods, there is a certain proximity and a link between them. They are related to the goods for which the reputation of the earlier mark has been shown, in the sense that these are services to which professionals will have recourse in the course of their business activities.

 

The strength of the mark’s reputation and the connection between the goods and services will undoubtedly lead the relevant public to perceive a link between the marks.

 

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

 

 

4. Risk of injury

 

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

∙        it is detrimental to the repute of the earlier mark;

 

∙        it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

 

The opponent claims the following:

 

The Garmin Group is noted as an innovator in the field in which it operates and actively seeks to take advantage of that reputation by expanding sales of goods to target consumers who are already familiar with their goods, or whose profiles meet those of their existing customers. Garmin’s existing customers are educated to see their goods in a new light, as development occurs. New customers may have heard of Garmin’s goods, but not previously encountered them. Therefore, goods and services to be marketed under the contested mark may target customers who are already familiar with goods marketed by Garmin under the Opponent’s Registered trade marks, or any of them (but in a different context), in which case use of the contested mark will take unfair advantage of the reputation of the opponent’s registered trademarks by transferring the image of them into the goods marketed under the contested mark target customers who may have heard of goods marketed by Garmin under the Opponent’s Registered Trade Marks, but not previously encountered them (making the likelihood of deception by imperfect recollection greater), in which case the use of the contested mark is likely to be detrimental to the Opponent’s registered trade marks by diluting their reputation among newly won customers, or among new customers whom, Garmin wishes to attract.

 

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of and be detrimental to the repute of the earlier trade mark. Reference is made to the services in question, as set out previously.

 

Unfair advantage (free-riding)

 

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

 

The opponent’s arguments have been reproduced above and it must therefore be determined whether or not, in the light of the link found between the signs, there is a risk that the use of the mark applied for would take unfair advantage of the repute of the earlier mark.

 

In that regard, in accordance with settled case-law, it is important to state that the concept of taking unfair advantage of the repute of the earlier mark, referred to as ‘parasitism’, relates not to the detriment caused to that earlier mark but to the advantage taken by the third party as a result of the use without due cause of the sign that is similar or identical to that mark. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.

 

The risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade mark occurs where the relevant public, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and will buy the product or service covered by it on the ground that it bears that mark, which is similar to an earlier mark with a reputation (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 42).

 

Furthermore, it has been pointed out in the case-law of the Court of Justice that, the more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark or is, or will be, detrimental to them (see, by analogy, 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67). In addition, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that harm has been caused to it (see, by analogy, previously cited ‘General Motors’ § 30). The General Court has stated that it is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment or of unfair advantage being taken by the mark applied for is so obvious that the opposing party does not need to put forward or prove any other fact to that end (see, to that effect, 27/11/2008, C-252/07, Intel, EU:C:2008:655). It has also stated that the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark. It just has to adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment (see, to that effect, 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 40 and 41). This is contrary to the applicant’s claim that the opponent did not establish that use of the contested mark would take unfair advantage of the earlier mark.

 

The marks are similar in as much as the signs are word marks and are visually and aurally similar to an average degree. The word ‘VIVO’, of which the contested mark consists, is entirely contained in the earlier sign, and the earlier sign’s additional word, ‘FIT’, is allusive, as explained above. Moreover, the goods and services are connected and in the UK the earlier mark has a very strong reputation. The link between the signs has been demonstrated previously and the Opposition Division considers it highly plausible that the contested mark would ride on the coat-tails of the reputed earlier mark to benefit from the power of attraction, reputation and prestige of the mark. As a consequence, it is likely that the image built up by the opponent over the years will be transferred to the applicant’s services with the result that the latter will take unfair advantage of the earlier mark’s reputation.

 

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

 

 

5. Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

 

Given that the opposition is entirely successful under Article 8(1)(b) and (5) EUTMR it is not necessary to examine the remaining ground and earlier rights on which the opposition was based.

 

 

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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

 

 

Ferenc GAZDA

Cristina CRESPO MOLTO

Irina SOTIROVA

 

 

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.