OPPOSITION No B 2 501 552

Vitalia GmbH, Müller-zu-Bruck-Str. 3, 83052 Bruckmühl, Germany (opponent), represented by Zanker & Vorbuchner, Rechtsanwälte, Schertlinstr. 29, 86159 Augsburg, Germany (professional representative)

a g a i n s t

Inovaloreg, Moulin de Fourcon, 47 rue d'Aulnay, 91180 Saint Germain Les Arpajon, France (applicant), represented by Bourgeois Rezac Mignon, 17, boulevard Malesherbes, 75008 Paris, France (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 501 552 is partially upheld, namely for the following contested goods:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; meats; salted meats; crustaceans (not live); meat and fish preserves; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and cereal preparations, bread, pastries and confectioneries, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; sandwiches, pizzas; pizzas; cookies; cake dough; rusks; candy; chocolate; cocoa, coffee, chocolate or tea-based beverages; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives.

2.        European Union trade mark application No 13 594 973 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 594 973, namely against all the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 255 166. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 29:        Meat, fish, poultry and game; meat extracts; dried and cooked fruits and vegetables; meat, fish, fruit and vegetable jellies; eggs, milk and milk products, namely cheese, cream, yoghurt, milk powder for food; edible oils and fats, not including butter, spreads and margarines; meat and fish preserves.

Class 30:        Sugar, rice, tapioca, sago; flour and preparations made from cereals (except foodstuffs for animals); bread, yeast; salt, mustard, vinegar, sauces (including salad dressings); spices.

After a limitation received on 01/04/2015 and accepted by the Office, the contested goods are the following:

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; meats; salted meats; crustaceans (not live); meat and fish preserves; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and cereal preparations, bread, pastries and confectioneries, edible ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; sandwiches, pizzas; pizzas; cookies; cake dough; rusks; candy; chocolate; cocoa, coffee, chocolate or tea-based beverages; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives.

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

The term ‘including’, 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 (see the judgment of 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 with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

It must be also pointed out that the phrase all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives added at the end of the lists of the contested goods of Classes 29 and 30 are considered without effect on the scope of protection of some of the contested goods because it is evident that goods such as eggs; crustaceans (not live) of Class 29 or sugar, rice, tapioca, sago, yeast, baking−powder, salt or ice of Class 30 will not be composed of, or be derived from, goods originating from bees or beehives.

Additionally, 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 29

The contested meat, fish, poultry and game; meat extracts; dried and cooked fruits and vegetables; eggs; meats; salted meats; meat and fish preserves; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are included in the broad categories of, or overlap with, the opponent’s meat, fish, poultry and game; meat extracts; dried and cooked fruits and vegetables; eggs; meat; meat and fish preserves, respectively. Therefore, they are identical.

The contested preserved fruits and vegetables; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives include, as broader categories, or overlap with, the opponent’s dried and cooked fruits and vegetables. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested jellies; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives include, as a broader category, or overlap with, the opponent’s fruit and vegetable jellies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested crustaceans (not live); all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are included in the broad category of, or overlap with, the opponent’s fish. Therefore, they are identical.

The contested frozen fruits and vegetables; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to a high degree to the opponent’s cooked fruits and vegetables as they have the same nature, they can coincide in producers, end users and distribution channels. Furthermore, they are in competition.

The contested jams, compotes; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to a high degree to the opponent’s cooked fruits as they have the same nature, they can coincide in producers, end user and distribution channels. Furthermore, they are in competition.

Contested goods in Class 30

The contested sugar, rice, tapioca, sago, flour and cereal preparations, bread, yeast, salt, mustard; vinegar, sauces (condiments); spices; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are included in the broad categories of, or overlap with, the opponent’s sugar, rice, tapioca, sago; flour and preparations made from cereals (except foodstuffs for animals); bread, yeast; salt, mustard, vinegar, sauces (including salad dressings); spices, respectively. Therefore, they are identical.

The contested pastries; cookies; cake dough; rusks; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are included in the broad category of, or overlap with, the opponent’s preparations made from cereals (except foodstuffs for animals). Therefore, they are identical.

The contested edible ices; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to a high degree to the opponent’s yoghurt in Class 29 as they have the same purpose and nature. They can coincide in producers, end users and distribution channels. Furthermore, they are in competition.

The contested baking-powder is similar to a high degree to the opponent’s yeast as they have the same nature. They can coincide in producers, end users and distribution channels. Furthermore, they are in competition.

The contested coffee, tea, cocoa, artificial coffee; cocoa, coffee, chocolate or tea-based beverages; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to the opponent’s milk in Class 29 because they may coincide in producers, end users and distribution channels. Furthermore, they are in competition.

The contested confectioneries; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to the opponent’s preparations made from cereals (except foodstuffs for animals) because they have the same purpose, they may coincide in producers, end users and distribution channels. Furthermore, they are in competition.

The contested honey; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to the opponent’s sugar as they can coincide in end users and distribution channels. Furthermore, they are in competition.

The contested treacle; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives is any uncrystallised syrup made during the refining of sugar. It is a common sweetener and condiment in British cookery, found in such dishes as treacle tart and treacle sponge pudding. These goods are similar to the opponent’s sugar as they can coincide in end users and distribution channels. Furthermore, they are in competition.

The contested sandwiches; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to the opponent’s bread as they have the same nature and they can coincide in producers, end users and distribution channels.

The contested candy; chocolate; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives are similar to the opponent’s preparations made from cereals (except foodstuffs for animals) because they have the same purpose and they may coincide in producers and distribution channels. Furthermore, they are in competition.

The contested pizzas; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives (listed twice) are similar to the opponent’s preparations made from cereals (except foodstuffs for animals) because they have the same purpose, they may coincide in producers and distribution channels. Furthermore, they are in competition.

The contested ice; all the aforesaid goods being partially or entirely composed of goods originating from bees or beehives, or being derived from goods originating from bees or beehives is to be understood as ice for refreshment, such as ice cubes. These goods have no sufficient connection with the opponent’s goods in Classes 29 and 30. They do not coincide in nature, purpose and method of use. Their producers and distribution channels are different. Furthermore, they are neither complementary nor in competition. These 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 or similar to different degrees are directed at the public at large. The degree of attention is considered low as regards cheap goods for daily consumption to average for the remaining goods.

3. The signs

	VITALIE
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 element ‘VITAL’ or ‘VITA’ of both signs will be associated by part of the relevant public with ‘life’ or ‘vitality’ because the word ‘vital’ exists as such in some languages like in French, Spanish or English for example. Moreover, ‘VITA’ is a Latin word meaning ‘life’. Finally, most of the consumers are used to see these components in the marks with the positive connotation of ‘healthy’. Bearing in mind that the relevant goods are essentially foodstuff, it is considered that this element is weak for all the relevant goods found to be identical or similar to varying degrees. Therefore, for part of the relevant public, its impact is limited when assessing the likelihood of confusion between the marks at issue. For another part of the relevant public, this element has no meaning and is therefore distinctive.

The heart depicted in the earlier mark will be perceived as one of the vital organs symbolizing 'health’ or ‘life’ and the black background is a banal and purely decorative element. These elements are lowly distinctive.

Conceptually, although the verbal element of the earlier mark and the contested sign as a whole do not have any meaning for the public in the relevant territory, the element ‘VITAL’ or ‘VITA’, included in both signs, is likely to be associated by some, such as the French-, Spanish-, Italian-, Portuguese, English- and German-speaking parts of the relevant public with the idea of ‘life’ or ‘vitality’. To that extent, the signs are conceptually similar to a low degree because this concept present in both signs is weak for the goods in question. For another part of the relevant public, such as the Hungarian−speaking consumers, the verbal elements of the signs have no particular meaning but they will nevertheless perceive the concept of a heart in the earlier mark. For those consumers, since only one of the signs has a meaning, the signs are considered conceptually not similar.

Visually and aurally, the first parts of the conflicting marks, namely the sequence of letters ‘VITALI’, and their corresponding sounds, coincide. Consumers generally tend to focus on the first part of a sign when being confronted with a trade mark. This is justified by the fact that 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. However, the signs differ in their last letter and in their sound, namely ‘A’ in the earlier mark and ‘E’ in the contested sign.

Visually, the signs also differ in the stylisation of the typeface in the earlier mark and other elements, namely the heart and the black background, considered lowly distinctive. Moreover, 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, taking into account the distinctiveness and the relevant impact of the different elements of the signs, the degree of similarity of the signs may vary for the consumers depending on whether or not they will perceive the meaning of the component ‘VITAL’: visually from average to above average and aurally from above average to high because the only phonetic difference between the signs lies on the sound of a sole letter.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

The goods are identical or similar to varying degrees. They target the public at large whose degree of attention may vary from low to average. The signs are similar, visually to an average or above average degree and aurally to an above average or high degree, depending on whether or not consumers will perceive the meaning of the weak component ‘VITA’ or ‘VITAL’, present in both signs. For the part of the relevant public that will understand its meaning, the signs are also conceptually similar to a low degree. The distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the sign.

Although the component ‘VITA’ or ‘VITAL’, present in both signs, is weak for some, this part of the relevant public will also perceive the verbal elements of the signs as a whole, both of which are meaningless as ‘VITALIA’ and ‘VITALIE’ do not exist as such. Therefore, as a whole, the signs have a normal degree of distinctiveness. Moreover, they have in common their first six out of seven letters, which contributes to creating an overall impression of similarity, even though the component ‘VITA’ or ‘VITAL’ is weak for some consumers.

The limited distinctive role of the component ‘VITA’ or ‘VITAL’ for the relevant goods does not prevent it from contributing to make the signs confusingly similar. In fact, the weak distinctive character of an element of a mark does not necessarily imply that that element will not be taken into account by the relevant public, if it has a significant impact on its dimension or position (10/07/2012, T-135/11, Cloralex, EU:T:2012:356, § 35, confirmed by  30/01/2014, C-422/12 P, Cloralex, EU:C:2014:57). In this case, it should be recalled that the weak component ‘VITA’ or ‘VITAL’ is in the initial part of the signs, which first catches consumers’ attention.

Furthermore, it should be stressed that, for some consumers, the signs in question have no weak elements that reduce the degree of similarity between the signs. For this part of the relevant public, the signs are similar visually to an above average degree and aurally to a high degree. For those consumers, the signs are not conceptually similar but this difference is due to the heart of the earlier mark which is lowly distinctive: therefore, its impact is very limited.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 255 166.

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

The rest of the contested goods 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 cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Boyana NAYDENOVA

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.