OPPOSITION No B 2 707 324

Vita Zahnfabrik H. Rauter GmbH & Co. KG, Spitalgasse 3, 79704 Bad Säckingen, Germany (opponent), represented by Dompatent von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Dental Italia S.r.l., Strada Sterpara, 98, 04100 Borgo Montello (LT), Italy (applicant).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 707 324 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 136 849, namely against some of the goods in Classes 3, 5 and 10. The opposition is based on European Union trade mark registration No 8 199 523. The opponent invoked Articles 8(1)(b) and 8(5) 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, inter alia, the following:

Class 3:        Goods relating to dentistry, namely: Bleaching and Preparations for cleaning dentures, Polishing preparations for dental purposes.

Class 5:        Goods relating to dentistry, Namely: Chemical preparations for dental purposes, Chemicals and soldering agents for dental purposes, Dental ceramic for making dentures, glass powder for making dentures, disinfectants for dental purposes and for cleaning medical instruments; Material for stopping teeth, In particular material, of ceramic or metal, for stopping teeth and artificial resin material for stopping teeth and temporary material for stopping teeth, Dental cement, Impression material for dental and dental technical purposes, In particular impression plaster, impression wax and plastic impression materials; Artificial resins for dental purposes, varnishes and lacquers for dental purposes, in particular dental lacquer; Wax for dental purposes; Modelling compounds and modelling goods for dental purposes, cement and plaster for dental purposes; Dental prosthetic materials, in particular metal-ceramic, all-ceramic.

Class 10:        Goods relating to dentistry, namely: artificial teeth of dental ceramic, dental prostheses and individual parts therefor, dental bridges, fastening materials for dentures, materials for making dentures, materials for making temporary crowns and bridges, insulating materials and binding agents for making prostheses, modelling materials, impression materials, artificial teeth of plastic; Dental apparatus and instruments, In particular colour rings; Crown pushers for dental purposes.

Class 11:        Goods relating to dentistry, namely: dental apparatus and instruments, in particular dental ovens.

The contested goods are the following:

Class 3:        Abrasive preparations.

Class 5:        Dental preparations and articles; Medical preparations and articles.

Class 10:        Medical apparatus and instruments; Prosthetics and artificial implants; Medical furniture.

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

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

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 3

The contested abrasive preparations have the same purpose as the opponent’s polishing preparations for dental purposes, insofar as both types of preparations can be used to make teeth smoother etc. These goods are directed at the same public, mainly composed of dentists and dental technicians. Moreover, the goods move through the same distribution channels, such as specialised outlets for dentistry supplies. They are similar.

Contested goods in Class 5

The contested dental preparations and articles; medical preparations and articles include, as broader categories, the opponent’s chemical preparations for dental purposes and material for stopping teeth. 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 goods in Class 10

The contested medical apparatus and instruments include, as a broader category, the opponent’s dental apparatus and instruments, in particular colour rings. 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 prosthetics and artificial implants include, as a broader category, the opponent’s artificial teeth of dental ceramic, dental prostheses. 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 medical furniture is a broad category that encompasses a range of articles for the examination of patients, gurneys, surgical tables, dental examination chairs and dentists’ chairs. Insofar as this broad category includes furniture relating to dentistry, the contested goods are directed at the same public as the opponent’s goods relating to dentistry, namely: dental apparatus and instruments, in particular dental ovens in Class 11. Moreover, such goods are usually distributed through the same commercial channels. Therefore, they are considered similar to a low degree.

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 relevant goods are specialised goods mainly directed at business customers with specific professional knowledge or expertise in the field of dentistry. The degree of attention is considered to be high, because the specialist public pays an increased level of attention when selecting goods that can have serious, long-term consequences for the patients (for instance dental/medical preparations, artificial teeth), or with respect to articles that are expensive or purchased infrequently (for instance sophisticated dental apparatus or furniture). Moreover, it is considered that the relevant public is knowledgeable in the terminology and technical jargon used in relation to dentistry.

3. The signs

VITA	ITA DENT
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin.

The earlier mark, ‘VITA’, is the Latin word for ‘life’ (25/10/2012, T-552/10, Vital & Fit, EU:T:2012:576, § 59). Irrespective of the different equivalents that exist in the languages of the relevant territory (for instance ‘Leben’ in German), it can be reasonably assumed that, in the context of the goods at issue, the specialist public (mainly dentists and dental technicians) who generally have basic knowledge of Latin will readily recognise the abovementioned meaning carried by the earlier mark. This word is endowed with an average degree of distinctive character.

The element ‘DENT’ of the contested sign is understood in part of the European Union, for instance in Germany, as indicating ‘dental’ (i.e. relating to teeth) and, therefore, is non-distinctive for this part of the public, since the relevant goods are directly or potentially intended for use in dentistry.

The Opposition Division will first examine the opposition in relation to the part of the public for which the element ‘DENT’ is non-distinctive, as that is the best light in which the opponent’s case can be considered.

The contested sign’s element ‘ITA’ is fanciful for instance for the public in Germany, and enjoys an average degree of distinctive character. This element will be the focus of the contested sign, since the non-distinctive element ‘DENT’ will be disregarded by the public.

Conceptually, although the relevant public will perceive the meaning of the earlier mark, the contested sign only carries the concept of the non-distinctive element, the latter being incapable of establishing a relevant difference between the signs. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Visually and aurally, the signs coincide in the graphemes/phonemes ‘ITA’. However, they differ in the additional letter/sound, ‘V’, of the earlier mark which is included in its beginning, and the contested sign’s element ‘DENT’, the latter however, being devoid of any distinctive character.

The length of the words may influence the effect of the differences between them. The shorter a word, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long words.

In the present case, the element ‘ITA’, being a three-letter word, does not contain the first letter of the earlier mark, ‘VITA’, which is a relatively short word, too.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

It follows that the difference in the earlier mark’s first letter/sound will not pass unnoticed by the relevant public. On the contrary, it accounts for a striking and memorable difference between the overall impressions produced by the signs. Although all of the letters of the contested sign’s ‘ITA’ element are reproduced in the earlier mark, the public will perceive it as a mere coincidence in a string of letters.    

Therefore, visually and aurally the signs are similar to a low degree.

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 enjoys a high degree of distinctiveness as a result of its long standing and intensive use in Germany in connection with part of the goods for which it is registered, namely material for stopping teeth, dental wax; artificial teeth, dental apparatus and instruments (color rings, dental furnaces), dental prosthetic materials, in particular metal-ceramic and all-ceramic. 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 the following evidence:

Annex 1:        Brochure, dated 2012, entitled ‘50 years of VITA metal ceramics – VMK’. The document provides a brief history of the VITA brand and promotes its dental product range, such ‘VITA VMK’, the first metal ceramic veneering system that was launched on the market in 1962; ‘VITA 68 bridges’, ‘VITA VMK Color opaque materials’, ‘VITA OMEGA’, ‘VITA 3D-MASTER shade system’ etc.

Annex 2:         Printouts, dated 23/12/2013, from the opponent’s website, www.vita-zahnfabrik.com.

Annexes 3-4:        Two judgments, with English translations, issued by German courts, dated 1948 and 2000, in which a reputation of the ‘VITA’ trade mark is found.

Annexes 5-8:        Several excerpts from market surveys, with partial translations into English, regarding the reputation and distinctiveness of the earlier mark in Germany, conducted from 1991 to 2012 by the market research institute GfK. The surveys demonstrate that, in 1991, the brand awareness for ‘VITA’ among the dental professionals was 98.9%. The respondents admitted that they had heard or read the designation ‘VITA’ in connection with ‘artificial teeth, dental devices and instruments (color rings, dental kilns) or dental prosthetic materials, especially metal ceramics or full ceramics’, and that more than 88% of the dental professionals perceived the designation ‘VITA’ as a badge of commercial origin. The data for 2007 and 2012 were along the same lines.

Annex 9:        Decision of the European Commission, dated 1985, rendered in a procedure concerning artificial teeth. It is mentioned in the decision that ‘Vita Zahnfabrik’ is a ‘significant competitor’ in the ‘Community market for artificial teeth’.

Annex 10:        Decision of the German Federal Cartel Office, dated 2001 and with a partial translation into English, in which it is mentioned that, ‘on the market for artificial teeth […] Vita is the market leader with more than 30% [market share]’. In addition, it is mentioned in the decision that, on the market for veneering ceramics, the opponent’s market share was from 20% to 30%, in the period from 1998 to 2000.

Annex 11:        Presentation of the results of a market survey ‘European Dental Market – Laboratory Products 2011-2012’, carried out by the research institute Key-Stone. The presentation shows the opponent’s position in various EU Member States with respect to ‘color-related materials’, ‘artificial teeth’, ‘porcelain veneering materials’, ‘CAD-CAM frame material’ and ‘resin C&B materials’.

Annex 12:        An overview of the market share data for Germany in relation to dental goods from 2003 to 2012, as collected by the market research institute GfK Healthcare. The document shows that the market share of VITA for ‘color-related materials’ was between 20%-30%; for ‘artificial teeth’ the market share above 30%; for ‘porcelain veneering materials’ the market share was between 15%-20%; for ‘metal-free frame materials’ the market share was between 12%-46%; and for ‘resin C&B materials’ the market share was around 5%.  

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The market shares suggest that the trade mark has a consolidated position among the leading brands in Germany and that it is generally known by the professionals in the pertinent field, as has been attested by several market studies. Although the evidence falls somewhat short regarding the opponent’s marketing efforts, it has to be borne in mind that the goods at issue are specialised dental products that are mainly promoted through dedicated channels or directly to the relevant consumer circles.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys reputation and enhanced distinctiveness for the goods claimed, namely material for stopping teeth, dental wax; artificial teeth, dental apparatus and instruments (color rings, dental furnaces), dental prosthetic materials, in particular metal-ceramic and all-ceramic.

It remains necessary to assess the distinctiveness of the earlier mark in relation to the opponent’s polishing preparations for dental purposes, as these goods have been found similar to the contested goods in Class 3 whilst the opponent neither expressly claimed, nor filed evidence showing reputation/enhanced distinctiveness with respect to those goods. Consequently, for those goods the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for polishing preparations for dental purposes from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical or similar to varying degrees to the opponent’s goods. With the exception of polishing preparations for dental use for which the earlier mark has an average degree of inherent distinctiveness, the earlier mark enjoys an enhanced scope of protection for the rest of the relevant goods.

On the other hand, it has to be borne in mind that the goods covered by both signs are directed at a specialised public who will pay a high degree of attention when purchasing them. As shown in section c) of this decision, even where the public perceives the contested sign’s element ‘DENT’ as non-distinctive, the signs are still only similar to a low degree on visual and aural levels. Conceptually, there is no similarity between them, as the earlier mark carries a meaning which is not present in the contested sign.

Taking into account all the relevant circumstances of the case, it is considered that, notwithstanding the enhanced distinctiveness of the earlier mark for some of the relevant goods, the tenuous similarity between the signs is incapable of outweighing the readily perceptible differences which are sufficient to enable the relevant public to safely tell the signs apart, even taking into account that some of the goods in question have been found identical.

It remains necessary to consider the opponent’s argument that the earlier mark has been used for more than 60 years as an umbrella brand for almost all of the opponent’s trade marks. For example, the opponent refers to 12 German trade marks, owned and used by the opponent, in which ‘VITA’ is conjoined with other terms in a single word (‘Vitacoll’, ‘Vitafol’, ‘Vitapan’, ‘Vitablocs’, ‘Vitapress’, ‘Vitastar’ etc.) and 22 German trade marks in which the element ‘VITA’ is a separate word juxtaposed to other terms (‘Vita-Modisol’, ‘Vita Vacumat’, ‘Vita-Lumin’, ‘Vita In-Ceram’, ‘Vita Atmomat’, ‘Vita Zeta’, ‘Vita Akzent’, ‘Vita Omega-Metallkeramik’ etc.) Thus, the opponent implies that its trade marks, all characterised by the presence of the same word component, ‘VITA’, constitute a ‘family of marks’ or ‘marks in a series’. Such a circumstance may give rise to likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains a word component that is similar to the opponent’s ‘VITA’ marks, will be led to believe that the goods identified by that mark may also come from the opponent.

The concept of the family of marks was analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

In the present case, the contested sign does not contain the element ‘VITA’. Therefore, it lacks the characteristic element to the opponent’s claimed ‘family of marks’ and the opponent’s argument in that regard is set aside, without even examining whether the other condition as mentioned above has been satisfied.  

Considering all the above, there is no likelihood of confusion on the part of the public for whom the element ‘DENT’ is non-distinctive which is the best light in which the opponent’s case can be considered.

This absence of a likelihood of confusion equally applies to the part of the public for whom the element ‘DENT’ is not non-distinctive in the context of the relevant goods. This is because, as a result of the possibly distinctive character of that element, that part of the public will perceive the signs as being even less similar.

Therefore, the opposition must be rejected, insofar as it is based on Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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 in Germany for material for stopping teeth, dental wax; artificial teeth, dental apparatus and instruments (color rings, dental furnaces), dental prosthetic materials, in particular metal-ceramic and all-ceramic 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.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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.

The low degree of similarity between the signs on visual and aural levels results from the fact that the contested sign’s element ‘ITA’ is included in the sole word of the earlier mark after its first letter, ‘V’. The similarity between the signs is further diminished by the concept that is conveyed by the earlier mark, but absent in the contested sign.

The opponent claims that the public ‘may overhear’ the presence or the absence of the phoneme ‘V’ in the words ‘VITA’ and ‘ITA’. That, however, has to be weighed against the high degree of attention that the relevant public will display when choosing the goods at issue.

Even taking into account that the relevant public will encounter the contested sign in conjunction with goods that are identical or similar to those for which the earlier mark has acquired reputation, the feeble similarity between the contested sign and the earlier mark, confined to a mere coincidence in a string of letters, is unlikely to bring the earlier mark to the mind of the public.

Aside from claiming that the earlier mark has been used for decades as an omnipresent umbrella brand for the opponent’s product portfolio, the opponent did not put forward any convincing arguments as to why the relevant public would establish a ‘link’ between the signs.  

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well-founded under Article 8(5) EUTMR and must be rejected.

In any event, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that 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.

Therefore, the opposition is rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

Julie GOUTARD

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.