OPPOSITION No B 2 397 035

Water & Salt AG, Grabenstrasse 25, 6340 Baar, Switzerland (opponent), represented by Weickmann & Weickmann Patentanwälte-Rechtsanwalt PartmbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative)

a g a i n s t

Ferenc Ecseri, Bercsényi utca 15, 2700 Cegléd, Hungary (applicant), represented by Zsófia Kacsuk, Üteg u. 11/a, 1139 Budapest, Hungary (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 397 035 is partially upheld, namely for the following contested goods:

Class 5:        Drinking straws containing effervescent tablets for pharmaceutical, medicinal, or health beverage preparations or for nutritional supplement beverages; Drinking straws containing pharmaceutical, medicinal or health or vitamin preparations or nutritional supplements.

2.        European Union trade mark application No 12 704 235 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 part of the goods of European Union trade mark application No 12 704 235 ‘VITA MAGIC’ (word), namely against all the goods in Classes 5 and 32. The opposition is based on German trade mark registration No 302 011 016 931 ‘Vita-Magic’ (word). The opponent invoked Article 8(1)(b) EUTMR.

PROOF Of USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, 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 opponent cites as justification for its opposition, 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.

In the course of the proceedings the applicant requested that the opponent submit proof of use of the invoked earlier mark. The Opposition Division found that the 5-year use period, as prescribed in Article 42(2) EUTMR, had not expired yet and notified the parties of that. In its observations the applicant did not dispute that at the time it made the request, the five-year period had not expired. However, it objected to the inapplicability of the use requirement in the case at hand on argument that until the date of submission of its observations, the five-year period had already expired.

It should be reminded that Article 42(2) EUTMR clearly sets the date relevant for calculation of the five-year use period and in the present case this is the date of publication of the contested mark, namely 16/06/2014. The earlier mark was registered on 6/07/2011. The legal rule does not provide for any exceptions. Accordingly, the proof of use request is inadmissible and the related objection of the applicant is not founded and should therefore be rejected.  

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

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

1. The goods

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

Class 3: Cosmetics.

Class 5: Pharmaceuticals, sanitary preparations; complementary balanced dietary food supplements for medical purposes in capsule, tablet, dragée, and granulate form, magnesium for pharmaceutical purposes.

Class 29: Dietary food supplements, other than for medical purposes, protein-, or fat based, and added fatty acids, vitamins, minerals, trace elements, either singly or in combination, as far as contained in class 29, in capsule, tablet, dragée, and granulate form.

Class 30: Salt, dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, fibre, with added vitamins, minerals, trace elements, either singly or in combination, as far as contained in class 30, in capsule, tablet, dragée, and granulate form.

The contested goods are the following:

Class 5: Drinking straws containing effervescent tablets for pharmaceutical, medicinal, or health beverage preparations or for nutritional supplement beverages; Drinking straws containing pharmaceutical, medicinal or health or vitamin preparations or nutritional supplements.

Class 32: Drinking straws filled with flavourings for the preparation of beverages; Drinking straws containing effervescent tablets for beverages.

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 5

The contested drinking straws containing effervescent tablets for pharmaceutical or medicinal beverage preparations and drinking straws containing pharmaceutical, medicinal or vitamin preparations are pharmaceutical preparations in the form of effervescent tablets packed /offered in drinking straws. Accordingly, these goods are included in the broader category of the earlier sign pharmaceuticals and are therefore identical.  

Drinking straws containing effervescent tablets for health beverage preparations or for nutritional supplement beverages and drinking straws containing health preparations or nutritional supplements of the contested mark are identical to complementary balanced dietary food supplements for medical purposes in capsule, tablet, dragée, and granulate form of the earlier mark. Dietary (food) supplements as a broader category includes health and nutritional preparations. Further, the contested goods are in the form of effervescent tablets and the dietary food supplements of the earlier mark include among others tablet forms. Therefore, the contested goods are included in the broader category of the earlier sign.

Contested goods in Class 32

The contested drinking straws filled with flavourings for the preparation of beverages; drinking straws containing effervescent tablets for beverages are in essence preparations for (making) beverages, offered/packed in drinking straws. The goods of class 29 of the earlier mark dietary food supplements, other than for medical purposes, protein-, or fat based, and added fatty acids, vitamins, minerals, trace elements, either singly or in combination, as far as contained in class 29, in capsule, tablet, dragée, and granulate form are dietetic concentrated sources of nutrients or other substances with a nutritional or physiological effect, whose purpose is to supplement the normal diet. The goods of Class 30 of the earlier mark salt, dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, fibre, with added vitamins, minerals, trace elements, either singly or in combination, as far as contained in class 30, in capsule, tablet, dragée, and granulate form are food supplements, the main difference with the above goods of Class 29 being their main (base) ingredient. The opponent’s claim that the contested goods are similar to the goods of Classes 29 and 30 of the earlier mark in unfounded. The fact that the compared goods may coincide in the form in which they are offered – effervescent tablets – is not sufficient to find similarity. It is indeed possible that the goods be consumed with a straw once dissolved. However the fact that the contested goods are offered in a straw is not essential for determining their characteristic because as explained above, the straw relates to the way the goods are offered and not to the goods themselves. The goods do not coincide in their nature, purpose, method of use, nor in their distribution channels or producer. They are not in competition or complementary, either. Even though they may partially coincide in the relevant public, this single factor is not sufficient to find similarity.

The goods of Classes 3 and 5 of the earlier mark do not share similarities with the contested ones either. They have a different purpose, nature, distribution channels, method of use, and producer. They are neither complementary nor in competition. They may only partially coincide in the relevant public.

Accordingly, the goods of Class 32 of the contested sign are dissimilar to the goods of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at professional public. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same reasoning applies to dietary (food) supplements, which require a higher degree of care and attention when they are selected and used. Hence the relevant public of the goods of Class 5 of the contested sign and of the earlier mark is the general public and the professional public with high degree of attention.

3. The signs

Vita-Magic	VITA MAGIC
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both signs consist of two identical words ‘VITA’ and ‘MAGIC’, which in the case of the earlier sign are separated by a hyphen and in the case of the contested one – by a space. The word ‘VITA’, in German has the meaning of ‘life’ (Linguee Online). It is also likely that the German consumers perceive the word ‘MAGIC’ as having the meaning of ‘the power of influencing events by using mysterious or supernatural powers’ and ‘having supernatural powers’, due to the closeness of the German words ‘Magie’ and ‘magisch’ respectively.

Upon taking into account the meaning that is likely to be conveyed by the word elements the signs are composed of, it is considered that the elements ‘VITA’ and ‘MAGIC’ would be allusive to characteristics of the goods at issue and therefore – weak. However, considering the fact that the signs contain the same elements, their impact will be on an equal footing.  

Visually, the signs coincide in their word elements ‘VITA’ and ‘MAGIC’ in the same order. The only difference is that the two words in the case of the earlier sign are separated by a hyphen, while in the case of the contested sign they are separated by space. It is also to be noted that in the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant if it is depicted in upper or lower case. Accordingly, given the signs coincide in their word elements and differ only in the way they are separated, the signs are visually highly similar.  

Aurally, the signs will be pronounced identically. The hyphen in the earlier mark would not be pronounced, as its only function would be to separate the two word elements. Therefore, the signs are aurally identical.  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Given that the signs differ only in the manner of separation of the two word elements they are composed of, the signs are 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.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, considering the meaning that is likely to be conveyed by the earlier mark, its distinctiveness is considered to be below the average.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs were found to coincide in the two word elements that comprise them, the only difference being the way in which the words are separated from each other – a hyphen in the case of the earlier mark and a space – in the case of the contested sign. It is considered however that the space and the hyphen, are unlikely that, on the facts of the case, significantly change the perception which the consumer may have of these two identical words in the same order. (14/07/2005, T-312/03, SELENIUM-ACE, ECLI:EU:T:2005:289, § 36)

The goods were found to be partially identical and partially dissimilar. The identical goods are directed at the general public as well as at professionals, whose attention is higher than the average. The signs were found to be visually similar to a high degree and aurally and conceptually identical. The earlier mark’s distinctiveness is below the average.

In view of the above and upon taking into account the principles of interdependence, the Opposition Division finds that there is a likelihood of confusion on the part of the public with respect to the contested goods of Class 5, found to be identical to those of the earlier mark. Accordingly, even if the level of attention might be higher than average, this will not be enough as to avoid such confusion and/or association under the present circumstances.

Since the opposition is successful on the basis of inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration No 302 011 016 931.  

It follows from the above that the contested trade mark must be rejected for the goods of Class 5.

The rest of the contested goods, namely those of Class 32 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) 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

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Richard BIANCHI

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.