OPPOSITION No B 2 656 604

VMZ Trunk GmbH & Co. KG, Hagener Straße 261, 57223 Kreuztal, Germany (opponent)

a g a i n s t

CeaLab AB, Parkdalsgatan 7, 504 61 Borås, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 656 604 is partially upheld, namely for the following contested goods:

Class 32:        Sports drinks; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; isotonic drinks; all before said goods being exclusively finished prepared beverages.

2.        European Union trade mark application No 14 774 756 is rejected for all the above goods. It may proceed for the remaining goods and 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 14 774 756 for the figurative mark , namely against some of the goods in Class 5 and all the goods in Class 32. The opposition is based on, inter alia, German trade mark registration No 302 012 038 932 for the figurative mark . 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

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

Class 32:        Malt beverage, malt beer.

Following two limitations in the specification of the list of goods and services of the contested trade mark, the contested goods are the following:

Class 5:        Nutritional supplements; dietary supplements for humans; dietary and nutritional supplements; dietary supplemental drinks; vitamin drinks; vitamin preparations; vitamin tablets; vitamin supplements; mixed vitamin preparations; vitamin preparations; mineral dietary supplements for humans; all before said goods excluding edible plant fibers and/or natural raw fiber concentrates.

Class 32:        Sports drinks; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; isotonic drinks; all before said goods being exclusively finished prepared beverages.

Contested goods in Class 5

The contested nutritional supplements; dietary supplements for humans; dietary and nutritional supplements; dietary supplemental drinks; vitamin drinks; vitamin preparations; vitamin tablets; vitamin supplements; mixed vitamin preparations; vitamin preparations; mineral dietary supplements for humans; all before said goods excluding edible plant fibers and/or natural raw fiber concentrates are substances prepared for special dietary requirements, intended, in general, to provide nutrients that may otherwise not be consumed in sufficient quantities. These goods are close to medicines and are usually sold in pharmacies and drugstores or in special sections in supermarkets. The opponent’s goods are malt beverages and malt beer. The goods under comparison differ in nature, purpose (intended to supplement a normal diet or to have health benefits as opposed to quenching thirst) and they do not have the same distribution channels and manufacturers. Finally, they are neither complementary nor in competition. The fact that some of the contested goods in Class 5 may be in the form of beverages is not enough to conclude that these goods are similar to the opponent’s goods in Class 32. Therefore, they are considered dissimilar.

Contested goods in Class 32

The contested sports drinks; isotonic drinks; all before said goods being exclusively finished prepared beverages are non-alcoholic functional beverages formulated specifically for use during exercise and for the sake of enhancing exercise performance. The contested energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; all before said goods being exclusively finished prepared beverages are non-alcoholic beverages which provide refreshment and flavour but also contain functional ingredients to provide perceptions of wakefulness and energy.

The opponent’s malt beverage include malt beer, as well as non-alcoholic malt beverages, which are usually sweet and dark in colour and have a high content of B-vitamin, minerals and nutrients. Non-alcoholic malt beverages can, therefore, also be intended to provide an extra boost of energy and to help the body recuperate after sports.

Therefore, it is considered that the contested sports drinks; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; isotonic drinks; all before said goods being exclusively finished prepared beverages overlap with the opponent’s malt beverage and are, for that reason, 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 found to be similar are directed at the public at large, whose degree of attention is average.

3. The signs

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 are figurative marks. The earlier mark consists of the word ‘VITA’, depicted in bold rather standard title case letters. The contested sign is composed of the verbal element ‘vitacea’, depicted in bold lowercase letters. The sequence of letters ‘vita’ is depicted in blue, and the sequence of letters ‘cea’ is depicted in grey.

Neither of the marks under comparison has any element that could be considered dominant (visually more eye-catching than other elements).

The word ‘VITA’ in the earlier mark is a Latin word meaning ‘life’ and will be perceived by the relevant German consumers as relating to or essential for life, or lively, since there are similar words with this root in German (‘vital’ in German, meaning ‘vital’ , and ‘Vitalität’, meaning ‘vitality’).

The contested sign as a whole does not have any meaning for the public in the relevant territory. However, the Court has held that, although average consumers normally perceive a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the element ‘VITA’, included at the beginning of the sign, will be perceived by the relevant consumers with the abovementioned meaning. The fact that the elements ‘vita’ and ‘cea’ are graphically distinguished in different colours in the contested sign will further facilitate this perception in the mark.

Bearing in mind that the relevant goods in Class 32 are beverages, it is considered that the distinctiveness of the element ‘VITA’ of the marks is weaker than average for these goods, as it alludes to the characteristics of the goods, that is, that they are healthy or vitality-giving. As a result, the impact of these weak elements is limited when assessing the similarity between the marks at issue.

The remaining letters of the contested mark, ‘cea’, do not have any meaning for the public in the relevant territory, and are not descriptive or of limited distinctiveness for any of the relevant goods.

Visually, the signs coincide in the letters ‘VITA’, which, although of limited distinctiveness, constitute the only verbal element of the earlier mark and are included as an identifiable and independent element at the beginning of the contested sign. 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.

The marks differ in the additional letters at the end of the contested sign, ‘CEA’, and the particular stylisations of both marks, which will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

Moreover, there is some visual similarity between the marks also in their graphical features. Although the verbal elements of the marks are represented differently in their details, the overall depiction of these elements is similar to a certain extent, with the similarly stylised bold letters ‘VITA’ in a rich colour, while the differing last letters of the contested sign, ‘CEA’, are depicted in a rather pale grey colour.

Therefore, taking into account all the relevant factors, it is concluded that despite the fact that the distinctiveness of the coinciding part ‘VITA’ is below average, the visual commonalities between the sole element of the earlier mark and the initial and most conspicuous part of the contested sign render the marks visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VITA’, constituting the only verbal element of the earlier mark and present as the first word of the contested sign. The pronunciation differs in the sound of the additional letters, ‘CEA’, at the end of the contested sign, which have no counterparts in the earlier mark.

Therefore, despite the fact that the distinctiveness of the coinciding part ‘VITA’ is below average, considering the coincidence between the only element of the earlier mark and the beginning of the contested sign, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There is a conceptual link between the signs on account of the coinciding word ‘VITA’. However, this common element of the marks is allusive, conveying the message that the goods are healthy or vitality-giving. Consequently, taking into account the fact that ‘VITA’ is not particularly distinctive for the goods at issue and has limited impact, the signs are conceptually similar to only 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.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As seen above, the goods are partly identical and partly dissimilar. The degree of attention of the public is average. The signs were found to be visually and aurally similar to an average degree and conceptually similar to a low degree on account of the coinciding element ‘VITA’.

The earlier mark has a low degree of distinctive character. However, this fact does not necessarily prevent a finding that there is a likelihood of confusion, since the distinctiveness character of the earlier mark is only one factor among others involved in the assessment of likelihood of confusion. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

Account must also be taken of the principle that a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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). In the present case, this principle is of particular importance, considering that some of the contested goods are identical to the opponent’s goods, which offsets the differences between the signs.

Consequently, consumers may legitimately believe that the contested mark  is a new version or a brand variation of the earlier figurative mark . Therefore, consumers may confuse the origins of the conflicting goods and may believe that they originate from the same undertaking or from economically linked undertakings.

Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association on the part of the public in relation to identical goods.

Therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration No 302 012 038 932.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on earlier European Union trade mark registration No 1 033 190 for the word mark ‘Vita- malz’, registered for malt beer, malt drinks in Class 32. Since this mark covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

Benjamin Erik WINSNER

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.