OPPOSITION No B 2 678 046
U. Walter GmbH, Dr. Jürgen-Ulderup-Str. 12, 49356 Diepholz, Germany (opponent),
represented by Eisenführ Speiser Patentanwälte Rechtsanwälte Partgmbb, Am
Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)
a g a i n s t
Kiss Me Organics Limited, 8 Mount Pleasant, Douglas IM1 2PM, Isle of Man
(applicant), represented by André Guerreiro Rodrigues, Rua do Farol 394, 3º Dto,
Bairro do Rosário, 2750-341 Cascais, Portugal (professional representative).
On 10/01/2018, the Opposition Division takes the following
1. Opposition No B 2 678 046 is upheld for all the contested goods, namely:
Class 5: Nutritional and dietary supplements containing green and white tea;
dietary supplements containing green tea extract.
2. European Union trade mark application No 14 949 721 is rejected for all the
above goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against some of the goods of European Union trade
mark application No 14 949 721 for a word mark ‘VITA TEA’, namely against some of
the goods in Class 5 and all the goods in Classes 30 and 32. The opposition is based
on European Union trade mark registration No 14 949 721 for a word mark ‘VitaliTea’.
The opponent invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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
Decision on Opposition No B 2 678 046 page: 2 of 5
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 goods
The goods on which the opposition is based are the following:
Class 30: Tea.
Further to the applicant’s limitations dated 19/05/2016 and 26/07/2016, the contested
goods are the following:
Class 5: Nutritional and dietary supplements containing green and white tea; dietary
supplements containing green tea extract.
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 contested nutritional and dietary supplements containing green and white tea;
dietary supplements containing green tea extract are concentrated sources of
nutrients or other substances with a nutritional or physiological effect the purpose of
which is to supplement a normal diet. They are intended to provide nutrients that may
otherwise not be consumed in sufficient quantities. Supplements as generally
understood include inter alia vitamins, minerals, fibre, fatty acids, or amino acids. In
the present case we are dealing with nutritional and dietary supplements that as an
explicit and main ingredient include tea which is also the opponent’s goods in Class
30. Tea is a broad category that includes herbal teas that despite not having a direct
medical purpose for example, do have properties that improve sleep or for cleansing
the body or as natural energy boosts. Chamomile tea for example can help prevent
colds as well as soothe the nervous system thus facilitating sleep. In this specific
case, green and white tea also have a number of health benefits as they are both
high in antioxidants and nutrients that improve fat loss, lower the risk of cancer and
improve brain function to name but a few.
Thus, contrary to the applicant’s allegations, the Opposition Division considers the
opponent’s goods, insofar as they all have nutritional purposes, similar in nature and
method of use to the contested goods. The conflicting products may be found in a
supermarket or even in drugstores or shops which specialize in body health and
balanced nutrition. Therefore, the distribution channels of the conflicting products are
also similar. Moreover, the goods at issue could be produced by the same companies
and target the same public. Consequently, these goods are similar.
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.
Decision on Opposition No B 2 678 046 page: 3 of 5
In the present case, the goods found to be similar are directed at the public at large
and at professionals with specific professional knowledge or expertise. Depending on
the nature or price of the goods the degree of attention is likely to vary from average
(e.g. for the goods in Class 30) to higher than average (e.g. for dietary supplements
containing green tea extract in Class 5, irrespective of whether they are issued on
prescription or not, as these goods can affect the user’s state of health).
c) The signs
VitaliTea VITA TEA
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).
Regarding the earlier mark, the Opposition Division points out that the Court has held
that, although the average consumer normally perceives a mark as a whole and does
not proceed to analyse its various details, the fact remains that, when perceiving a
word sign, they will break it down into elements which, for them, suggest a specific
meaning or which resemble words they know (13/02/2007, T-256/04, Respicur,
EU:T:2007:46, § 57). With respect to the term ‘VitaliTea’, notwithstanding that it is
represented in lower or upper case or a combination of those letters, in light of the
above judgment, the Opposition Division considers that at least part of the public will
dissect the elements ‘Vital(i)’ and/or ‘Tea’, respectively.
The element ‘VITAL(I)’ 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. More specifically, English
speakers, when pronouncing the earlier mark as a whole, will clearly hear the play on
words and the reference to ‘vitality’. Moreover, ‘VITA’ is a Latin word meaning ‘life’.
Finally, most of the consumers are used to seeing such components in marks with
the positive connotation of ‘healthy’. In light of the goods at stake, the Opposition
Division concurs with the applicant’s finding that this element is rather weak.
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, it cannot be dismissed this element has no meaning and is
The element ‘TEA’ of both signs will be understood by a majority of the relevant
public as an aromatic beverage commonly prepared by pouring hot or boiling water
over cured leaves of the Camellia sinensis, an evergreen shrub native to Asia.
Bearing in mind that the relevant goods include tea, this component is descriptive for
this part of the public whilst it may be distinctive if not understood.
At this point it is worth mentioning that the applicant refers to a previous decision of
the Office to support its arguments related to the comparison of the marks (reference
is made to the applicant’s writ dated 15/12/2016 and the Board of Appeal decision
Decision on Opposition No B 2 678 046 page: 4 of 5
dated 20/05/2009, R1367/2007-4, Medipan / MEDIPAX). The Opposition Division
would like to draw the applicant’s attention to the fact that in the quoted decision, the
Board considered the first element ‘MEDI’ of the marks under comparison descriptive
whereas the same does not hold true as regards the element ‘VITA’ which has only
been found weak.
Visually, the signs coincide in the elements ‘VITA’ and ‘TEA’ which constitute the
entire contested sign. They differ in the additional middle letters ‘LI’ of the earlier
mark and the fact that the contested mark is made up of two elements whereas the
earlier mark is one term. Whilst considering the previous assertions regarding the
distinctiveness of the elements, it is still true that the contested sign is entirely
reproduced in the earlier mark and the slight differences in the middle cannot
overcome the finding of at least an average 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 terms
‘VITA’ and ‘TEA’, which constitute the entire contested sign. The pronunciation differs
in the sound of the earlier mark’s additional middle letters ‘LI’ where the consumer
usually focuses less, and amidst identical sounds, these letters will be less
noticeable. Therefore, the signs are aurally similar to at least an average degree thus
taking into account the distinctive issues.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs taken as a whole refer to the concepts
of ‘vital’ and ‘tea’, the signs are conceptually similar to at least an average degree
thus taking into account the distinctive issues. In the event that no meaning can be
attributed to the signs, it is not possible to make a conceptual comparison. Thus the
assessment of the similarity of signs cannot be influenced
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 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. Even considering what was stated in section c) of this decision, the
distinctiveness of the earlier mark as a whole is normal.
e) Global assessment, other arguments and conclusion
The goods have been found similar. The earlier mark has a normal degree of
distinctiveness. The signs are visually, aurally and conceptually similar to at least an
average degree, although for part of the public, unable to find a meaning in the signs,
a conceptual comparison cannot be made. The relevant public is the public at large
and/or the professional public whose level of attention varies from average to high.
Decision on Opposition No B 2 678 046 page: 5 of 5
In view of all the relevant factors, there is a likelihood of confusion even for the
professional public with a high level of attention. Even consumers who pay a high
degree of attention need to rely on their imperfect recollection of trade marks
(21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Consequently, the Opposition Division finds that there is a likelihood of confusion on
the part of the public, and therefore the opposition is well-founded on the basis of the
opponent’s European Union trade mark registration No 14 949 721. It follows that the
contested trade mark must be rejected for all the contested goods.
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 applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to
the opponent are the opposition fee and the costs of representation which are to be
fixed on the basis of the maximum rate set therein.
The Opposition Division
Vanessa PAGE Klaudia MISZTAL Lucinda CARNEY
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Rule 94(4) EUTMIR,
such a request must be filed within one month from the date of notification of this
fixation of costs and will be deemed to be filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.