CANCELLATION DIVISION
CANCELLATION No 12 409 C (INVALIDITY)
Revital Limited, Unit D3, Braintree Road Industrial Estate, Braintree Road, HA4 0EJ
Ruislip, United Kingdom (applicant), represented by Trade Mark Consultants Co., 54
Hillbury Avenue, HA3 8EW Harrow, United Kingdom (professional representative)
a g a i n s t
Jorge Eugenio González Zapata, Rua Bras Cardoso, 93 – apt. 121, Vila Nova
Conceiçâo, Brazil (EUTM proprietor), represented by Juan Carlos Riera Blanco,
Avda. Concha Espina, 8 – 6º D, 28036 Madrid, Spain (professional representative).
On 28/11/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 14 014 302 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,
subject to certain transitional provisions. All the references in this decision to the
EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations
currently in force, except where expressly indicated otherwise.
REASONS
The applicant filed an application for a declaration of invalidity against all the services
of European Union trade mark No 14 014 302 , namely services in
Classes 42 and 44.
The application is based on European Union trade mark No 6 150 321 ‘REVITAL’. The
application was originally based also on United Kingdom trade mark No 2 462 684
‘REVITAL’, but after the proof of use request made by the EUTM proprietor the
applicant limited the basis of the application on the EUTM only. The applicant invoked
Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
Decision on Cancellation No 12 409 C Page 2 of 8
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion between the marks.
The EUTM proprietor requests proof of use of the marks on which the application was
based.
The applicant acknowledges that the invoked UK trade mark is under obligation of
proof of use and abandons this mark as a basis of the application. The application
should only proceed as far as it is based on the earlier EUTM which is not yet under
proof of use obligation. It insists that on account of the similarity of the services and the
marks in question, there is a likelihood of confusion between the marks.
The EUTM proprietor claims that the application was filed in bad faith because the
applicant did not file opposition against the contested mark, because it is not using the
earlier mark for services in Class 44 and it is only taking advantage of the fact that the
mark has not yet been registered for five years. As for the likelihood of confusion, the
EUTM proprietor points to the existence of several national trade marks containing the
elements ‘REVITAL’ or ‘REVITA’ effectively used on the respective markets for medical
services and it claims that since these marks can coexist peacefully with both the
earlier and the contested mark, so can the earlier and contested mark. The EUTM
proprietor submits some documents to prove use of those marks on the market.
Moreover, the EUTM proprietor emphasizes the differences between the marks and
argues that the stylisation of the contested mark is sufficient to exclude a likelihood of
confusion.
PROOF OF USE
According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of
the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish
proof that, during the five-year period preceding the date of the application for a
declaration of invalidity, 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 applicant cites as justification for its application, 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. If, on the date of publication of
the contested EUTM, the earlier mark had been registered for not less than five years,
the applicant must submit proof that, in addition, the conditions set out in Article 47(2)
EUTMR were satisfied on that date.
The same provision states that, in the absence of such proof, the application for a
declaration of invalidity shall be rejected.
The EUTM proprietor requested the applicant to submit proof of use of the trade marks
on which the application is based. The earlier UK mark is no longer invoked as an
earlier right. The only earlier right that remains is the EUTM No 6 150 321. This trade
mark was registered on 29/10/2013.
As stated above, according to Article 64(2) and (3) EUTMR, the earlier mark can only
be subject to the use obligation when it has been registered for not less than five years
on the date of the application for a declaration of invalidity.
Decision on Cancellation No 12 409 C Page 3 of 8
The present application for a declaration of invalidity was filed on 25/01/2016. As the
earlier EUTM was registered on 29/10/2013, that is, less than five years before the
filing of the application, the request for proof of use is inadmissible as regards this
earlier right.
LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION
WITH 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 services
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 services on which the application is based are the following:
Class 44: Medical services.
The contested services are the following:
Class 42: Scientific investigations for medical purposes.
Class 44: Medical services for the treatment of male sexual dysfunction.
The EUTM proprietor claims that the contested services are only those in Class 44 but
it is clearly indicated in the invalidity application that the application is directed against
all the services of the contested mark which is also repeated several times in the later
filed observations of the applicant. The applicant never limited the scope of the
application.
Contested services in Class 42
The contested scientific investigations for medical purposes are complementary to the
earlier mark’s medical services. These services also have the same nature. It is not
uncommon that the same entity provides services of scientific medical research and
medical services at the same time. Moreover, these services often use the same
distribution channels. Therefore, they are considered similar.
Contested services in Class 44
Decision on Cancellation No 12 409 C Page 4 of 8
The contested medical services for the treatment of male sexual dysfunction fall into
the applicant’s broad category of medical services. Therefore, these services are
identical.
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 services found to be identical or similar are directed at the
public at large (services in Class 44) and to business customers (services in Class 42).
The degree of attention will be higher than average because the services are
specialised services with potentially serious consequences to the customer’s health or
business.
c) The signs
REVITAL
Earlier trade mark Contested trade mark
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, bearing in mind their distinctive and
dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark consisting of a single element, REVITAL.
The contested mark is a figurative mark consisting of the element Revita represented in
fairly standard characters and of a simple abstract figurative element placed above the
word.
As for the elements REVITAL and Revita, although they as a whole do not have any
meaning from the perspective of the public in the relevant territory, it is very likely that
the vast majority of the relevant public will associate both elements with revitalise,
renew or regenerate as very similar words are used in this context across
the EU (revitalise in English, revitalisieren in German, revitalizar in Spanish,
rivitalizzare in Italian, revitaliser in French, revitalizovat in Czech and Slovak,
rewitalizowac in Polish etc.). Bearing in mind that the relevant services are medical
services and research related to medical field, these elements are not particularly
distinctive as they allude to one of the main purposes of such services.
Decision on Cancellation No 12 409 C Page 5 of 8
As regards the figurative element in the contested sign, it is rather simple and abstract
and it does not in any way stand out in the mark. Even considering that the
distinctiveness of the verbal element is not particularly high, it cannot be concluded that
the distinctiveness of this plainly decorative figurative element is higher than that of the
word.
Neither of the marks have any dominant elements.
Visually, the signs coincide in the string of letters ‘REVITA’. They differ in the last
additional letter of the earlier mark ‘L’ and in the figurative element of the contested
mark. As stated above, the figurative element is not of more importance than the verbal
element in terms of distinctiveness and, therefore, the general principle of the verbal
elements having more impact in signs consisting of both verbal and figurative elements
applies. Although the highly similar verbal elements are only weakly distinctive, this is
equally true for both of them and the difference in a merely one letter in words which
are not short is a rather insignificant difference, notwithstanding the low degree of
distinctiveness of those elements. Moreover, the simple figurative element does not
present a very striking difference. Therefore, it is concluded that the marks are visually
highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant
territory, the pronunciation of the signs coincides in the sound of the letters ‘REVITA’
and differs merely in the final sound of letter ‘L’ of the earlier mark. Even if the verbal
elements of the marks are not particularly distinctive, this is equally true for both of
them and the difference between them is rather insignificant. Therefore, the marks are
aurally similar to a high degree.
Conceptually, reference is made to the above statements. The public is likely to
associate the marks with revitalise, renew or regenerate. There is no other concept
present in either of the marks. Therefore, notwithstanding the low degree of
distinctiveness of this concept in relation to the relevant goods, the marks must be
considered to be conceptually identical.
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.
The applicant did not explicitly claim that its mark is particularly distinctive by virtue of
intensive use or reputation.
Consequently, assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, as stated above, the vast majority of the
public will associate the mark with revitalise, renew or regenerate. Since this is
one of the main purposes of the relevant medical services, the distinctiveness
of the earlier mark must be seen as below average.
Decision on Cancellation No 12 409 C Page 6 of 8
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of
the risk of confusion entails certain interdependence between the factors taken into
account and, in particular, between the similarity of the trademarks and the similarity of
the goods or services covered. Accordingly, a low degree of similarity between those
goods or services may be offset by a high degree of similarity between the marks, and
vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the services in question have been found partially identical and
partially similar while the signs are highly similar from the visual and aural perspective
and identical conceptually.
With regard to the comparison of the signs it has to be noted that consumers generally
tend to focus on the first part of a sign when being confronted with a trade mark, since
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. This principle is
applicable to the present case where the verbal elements of the marks are not short
and they completely coincide in their beginnings. In fact, the entire verbal element of
the contested mark is included at the beginning of the earlier mark which only has one
additional letter.
Considering that the signs coincide to a great extent the Cancellation Division finds that
the rather insignificant visual and phonetic difference is not sufficient to counterbalance
the similarities between the marks. Even taking into account the fact that the
distinctiveness of the verbal elements of the marks may be limited, the difference
between the marks consisting in one last additional letter and a rather simple, not very
significant figurative element, are so minor that likelihood of confusion cannot be
excluded, even if consumers are paying more attention than on average.
For the sake of completeness, the Cancellation Division notes that even if there was a
small part of the public that would perceive the verbal elements of the both marks as
meaningless, the above conclusions are also true for that part of the public since the
highly similar verbal components of the marks would be normally distinctive for such a
public.
The EUTM proprietor makes claims regarding the actions of the applicant. However,
these arguments must be dismissed. It is not the cancellation applicant’s duty to file
opposition against the contested mark before it is registered. The provisions of the
EUTMR regarding invalidity clearly foresee situations where for some reasons the
owner of an earlier right was not able or did not desire to file opposition before the mark
was registered. The obligation of a trade mark owner to file an opposition before it files
an invalidity request is not set by the relevant Regulations.
As regards the argument that the applicant takes advantage of the fact that the earlier
EUTM was not under use obligation at the time of filing of the application is yet another
Decision on Cancellation No 12 409 C Page 7 of 8
legitimate strategy of the applicant. It has to be emphasized that there are no
indications that the applicant is trying to avoid the use obligation by repeated filings of
the same trade mark. The fact that the EUTM was registered several years later than
the originally invoked UK trade mark was caused by a high number of oppositions filed
against the EUTM. Both marks were filed in the same year. Therefore, the late
registration date of the EUTM was caused by circumstances out of the applicant’s
control and the mark is not under use obligation in these proceedings. The fact that the
applicant decided to base the application solely on this trade mark is a legitimate right
of the applicant.
Finally, the EUTM proprietor claims that other marks containing the elements ‘REVITA’
or ‘REVITAL’ coexist on the market of medical services with the applicant’s mark so
that the contested mark can also coexist. It gives examples of several German trade
marks, a Hungarian mark and an Austrian one.
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 which the [Cancellation] Division and the Board of Appeal find
exists as 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 [proprietor of]
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 the present case, the marks are not identical. Even if it was considered that there are
considerable connecting points between the marks referred to by the EUTM proprietor
and the marks in question in the present proceedings, the EUTM proprietor failed to
show that there is not any actual confusion between those marks and the earlier mark
and, furthermore, the relevant territory in the present case comprises the entire EU,
whereas the alleged coexistence takes place in Germany, Austria and Hungary, which
leaves most of the relevant territory uncovered. Overall, this argument of the EUTM
proprietor has to be dismissed.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s European
Union trade mark registration No 6 150 321. It follows that the contested trade mark
must be declared invalid for all the contested services.
COSTS
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must
bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well
as the costs incurred by the applicant in the course of these proceedings.
Decision on Cancellation No 12 409 C Page 8 of 8
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs
to be paid to the applicant are the cancellation fee and the representation costs, which
are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
María Belén
IBARRA DE DIEGO
Michaela SIMANDLOVA Pierluigi M. VILLANI
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 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 Cancellation Division on request. According to Article 109(8) EUTMR, such a
request must be filed within one month of the date of notification of this fixation of costs
and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.