OPPOSITION No B 2 631 888

Novartis AG, 4002 Basel, Switzerland (opponent), represented by Friedrich Graf Von Westphalen & Partner Mbb, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Vitality Corporate Services Limited, 3 More London Riverside, London  SE1 2AQ, United Kingdom (applicant), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place, 78 Cannon St., London  EC4N 6AF, United Kingdom (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 631 888 is partially upheld, namely for the following contested goods and services:

Class 9:         Downloadable software in the nature of mobile phone applications that provide access to information, advice, food and exercise databases and calculation tools in the fields of diet, fitness, and lifestyle wellness; wearable fitness devices namely sensors for monitoring, collecting and transmitting movement and other data and providing training instructions during exercise; software for use in conjunction with wearable fitness devices including sensors for monitoring, collecting and transmitting movement and other data.

Class 41:         Providing electronic publications; publication of health and fitness periodicals and printed texts, advice; providing information in the fields of fitness including via a global computer network.

Class 44:         Publication of health and fitness periodicals and printed texts, advice; providing information in the fields of fitness including via a global computer network; providing electronic publications.

2.        European Union trade mark application No 13 130 232 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 130 232, namely against all of the goods and services in Classes 9 and 44, and some of the services in Class 41. The opposition is based on European Union trade mark registration No 12 875 291. 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 and services

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

Class 9:         Downloadable mobile applications for use in disease management and tracking patient compliance with medical treatments.

Class 10:         Medical apparatus and instruments.

Class 44:         Medical services namely providing healthcare information.

The contested goods and services are the following:

Class 9:         Downloadable software in the nature of mobile phone applications that provide access to information, advice, food and exercise databases and calculation tools in the fields of diet, fitness, and lifestyle wellness; wearable fitness devices namely sensors for monitoring, collecting and transmitting movement and other data and providing training instructions during exercise; software for use in conjunction with wearable fitness devices including sensors for monitoring, collecting and transmitting movement and other data.

Class 41:         Education; entertainment; providing of training; education and entertainment provided on-line via the Internet, or other global communications network; providing electronic publications; publication of health and fitness periodicals and printed texts, advice; providing information in the fields of fitness including via a global computer network; fitness assessment services.

Class 44:         Providing information in the fields of health, nutrition, health care and medical care, including via a global computer network; health care and wellness programs; medical services; health care; dentistry services; nutrition and dietary services: health assessment services; health screening services; health assessment surveys and questionnaires; compilation of medical reports and reviews; virtual age calculation for health and fitness purposes; monitoring of patients; provision of a repeat prescription service; blood pressure monitoring services; blood glucose testing services; providing information for health plan members to inform them of health issues and other information relevant to health care; consultancy and advisory services relating to all the aforesaid services.

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

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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 applicant’s and opponent’s list of goods and services accordingly to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 downloadable software in the nature of mobile phone applications that provide access to information, advice, food and exercise databases and calculation tools in the fields of diet, fitness, and lifestyle wellness; software for use in conjunction with wearable fitness devices including sensors for monitoring, collecting and transmitting movement and other data are similar to the opponent’s downloadable mobile applications for use in disease management and tracking patient compliance with medical treatments. Even though the goods under comparison have specific purpose their fields of application are highly related. Therefore, the expertise needed to develop these types of goods is related and they might overlap in relevant public and distribution channels.

The contested sensors for monitoring, collecting and transmitting movement and other data and providing training instructions during exercise are instruments that monitor, collect and transmit for movement and, as such, are similar to the opponent’s downloadable mobile applications for use in disease management and tracking patient compliance with medical treatments, since such functions could also be performed on a mobile phone with an appropriate application software installed. They may, therefore, also coincide in their purpose and relevant public and may be in competition.

Contested services in Class 41

The contested publication of health and fitness periodicals and printed texts, advice; providing information in the fields of fitness including via a global computer network are highly similar to the opponent’s providing healthcare information in Class 44 as they have the same purpose. They can coincide in provider, end user and distribution channels.

The contested providing electronic publications is similar to a low degree to the opponent’s downloadable mobile applications for use in disease management and tracking patient compliance with medical treatments, as they may have the same purpose. They can coincide in producer and end user.

The contested education; entertainment; providing of training; education and entertainment provided on-line via the Internet, or other global communications network; fitness assessment services do not have the same purpose or method of use as the earlier mark’s goods and services. They do not share the same distribution channels and are not expected to be provided by the same undertakings as the contested goods and services. Furthermore, they are not in competition. Therefore, the Opposition Division considers that there is no sufficient point of contact between the goods and services concerned for a finding of a degree of similarity. As a result, the contested services are considered to be dissimilar to the opponent’s goods and services in Classes 9, 10 and 44.

Contested services in Class 44

The contested providing information in the fields of health, nutrition, health care and medical care, including via a global computer network; providing information for health plan members to inform them of health issues and other information relevant to health care; consultancy and advisory services relating to all the aforesaid services are included in the broad category of the opponent’s providing healthcare information in Class 44. Therefore, they are identical.

The contested medical services and health care include as broader categories the opponent’s providing healthcare information. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services in Class 44.

The contested health care and wellness programmes; dentistry services; nutrition and dietary services; health assessment services; health screening services; health assessment surveys and questionnaires; compilation of medical reports and reviews; virtual age calculation for health and fitness purposes; monitoring of patients; provision of a repeat prescription service; blood pressure monitoring services; blood glucose testing services overlap with the opponent’s providing healthcare information in Class 44. Therefore, they are identical.

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 and services found to be identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the price of the relevant goods and services and the consequences for the consumers’/users’ appearance or health.

3. The signs

VIDELITY	VITALITY
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 has no meaning for the relevant public and is, therefore, distinctive.

The element ‘VITALITY’ of the contested sign, as acknowledged by the Office in the notice of grounds for refusal for the contested application at stake dated 18/09/2014, will be understood by the English-speaking part of the public as either the state of being strong and active; energy or reference to one’s life, life force, health, youth, or availability to live. The remaining part of the public might associate the prefix ‘VITA(L)’ as a reference to ‘life’, because the word ‘vital’ exists as such in some languages like in French, Italian, Spanish or English, for example. Moreover, ‘VITA’ is a Latin word meaning ‘life’. Finally, the consumers are used to seeing such components in marks with the positive connotation of ‘healthy’. In light of the foregoing, the Opposition Division concurs with the applicant’s finding that this element is of dubious distinctiveness at least for some goods and services concerned. Therefore, for part of the relevant public, its impact is limited when assessing the likelihood of confusion between the marks at issue. Nonetheless, for another part of the relevant public (e.g. the EU public speaking Finno-Ugric languages), it cannot be dismissed that this element has no meaning and is, therefore, distinctive.

Visually, in the first place, it must be pointed out that both are word signs consisting of a single word. Each of the words consists of eight letters. Six of the eight letters of which the signs consist are identical and appear in the same order, i.e. ‘VI**LITY’. The elements of similarity between the signs at issue prevail over the elements of dissimilarity arising from the middle letters, namely ‘DE’ vs ‘TA’. Due to the same length of the signs, the consumers are less likely to notice differences in the middle and indeed the identical letters give way to a similar overall impression meaning that different letters are not as clearly perceived. Whilst considering the previous assertions regarding the distinctiveness of the elements, it is still true that the contested sign is highly similar to the earlier mark and the slight differences in the middle cannot overcome the finding of a high degree of similarity between the signs.

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 first and the last syllables, namely ‘VI-**-LI-TY’. The pronunciation differs in the sound of the middle syllable ‘DE’ vs ‘TA’ where the consumer usually focuses less. Therefore, the signs are highly similar in their rhythms and intonations, only differing in the sound of middle two letters. Even though, as argued by the applicant, the letter ‘D’ is a voiced consonant, whereas the letter ‘T’ is a voiceless consonant, the signs are aurally similar to a high degree.

Conceptually, although the contested sign ‘VITALITY’ as such might be understood by part of the public or for some its element ‘VITA(L)-’ will evoke a concept, as referred to above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the remaining part of the public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As it has been concluded, the goods and services at stake are partly identical, partly similar to different degrees and partly dissimilar. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and professionals whose level of attention varies from average to high.

The signs are visually and aurally similar to a high degree, whereas conceptually the signs are not similar or the conceptual comparison remains neutral.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, in the case at hand, the similarity of the marks offsets the low degree of similarity between part of the services in Class 41.

Therefore, the Opposition Division considers that the signs are sufficiently similar to lead to a likelihood of confusion, even taking into account the higher degree of attention and even though some of the services were found to be similar to a low degree only.

Consequently, there is a likelihood of confusion with respect to identical and similar to different degrees goods and services.

For the sake of completeness, the Opposition Division would like to draw the applicant’s attention to the fact that the allegations concerning the acquired distinctiveness of the contested sign due to its extensive use which have been accompanied by the abundant amount of evidence are considered irrelevant as they cannot be the subject of the present proceedings. The same holds true insofar as the applicant’s argument regarding the family of the marks consisting of the word ‘VITALITY’ is concerned. The alleged fact that the contested application belongs to a family of the marks is irrelevant and not able to rule out or anyhow influence the arising likelihood of confusion.

Moreover, the applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

The right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 875 291.

It follows from the above that the contested trade mark must be rejected for all the contested goods and services in Classes 9 and 44, and the contested publication of health and fitness periodicals and printed texts, advice; providing information in the fields of fitness including via a global computer network; providing electronic publications in Class 41 that were found to be identical or similar to different degrees to the earlier trade mark’s.

The remaining 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 services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.