OPPOSITION No B 2 398 181

Vitasoy International Holdings Limited, 1 Kin Wong Street, Tuen Mun, New Territories, Special Administrative Region of Hong Kong, People’s Republic of China (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

FluidIMD GmbH, Eisengasse 16, 8008 Zürich, Switzerland (applicant), represented by Thul Patentanwaltsgesellschaft mbH, Rheinmetall Platz 1, 40476 Düsseldorf, Germany (professional representative).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 398 181 is partially upheld, namely for the following contested goods:

Class 30:        Tea; Tea-based beverages; Preparations for making beverages [tea based].

Class 32:        Mineral water [beverages]; Non-alcoholic beverages; Non-alcoholic beverages; Carbonated non-alcoholic drinks; Fruit beverages and fruit juices.

2.        European Union trade mark application No 12 769 071 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 all the goods of European Union trade mark application No 12 769 071 for the word mark ‘VITEA’. The opposition is based on:

• UK trade mark registration No 1 465 275;
• UK trade mark registration No 2 526 337;
• UK trade mark registration No 2 526 347;
• UK trade mark registration No 2 526 352;
• the non-registered trade mark ‘VITA’, claimed in the European Union as a whole and in each Member State.

In relation to the UK trade mark registrations, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In relation to the non-registered trade mark, ‘VITA’, the opponent invoked Article 8(4) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s UK trade mark registrations No 1 465 275 (word mark: ‘VITA’) and No 2 526 352 (figurative mark: ).

1. The goods

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

UK trade mark registration No 1 465 275

Class 32:        Non-alcoholic fruit juice drinks; all made from or including sugar cane, guava and mango; all included in Class 32; but not including any drinks made from or including lime flavouring.

UK trade mark registration No 2 526 352

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams; preserves, pickles; soy milk, milk substitutes and tofu, soya bean milk in liquid and solid form, soya bean-based food products including sausage, cheese and yoghurt, salad dressing, ice cream, puddings and desserts.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice; tea and tea drinks; seasonings.

The contested goods are the following:

Class 16:        Ballpoint pens; writing tablets; bags made of paper for packaging; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; bags [envelopes, pouches] of paper or plastics, for packaging.

Class 30:        Tea; tea-based beverages; preparations for making beverages [tea based].

Class 32:        Mineral water [beverages]; non-alcoholic beverages; non-alcoholic beverages; carbonated non-alcoholic drinks; fruit beverages and fruit juices.

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

The term ‘including’, 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).

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 16

The contested ballpoint pens; writing tablets; bags made of paper for packaging; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; bags [envelopes, pouches] of paper or plastics, for packaging are stationery articles including writing materials (pens) and packaging and transportation items (bags, envelopes). The opponent’s goods are all foodstuffs and beverages in Classes 29, 30 and 32. The contested and the opponent’s goods are not of the same nature; they do not have the same purposes and methods of use. They do not originate from the same providers, have the same distribution channels or target the same public; they are also not in competition. Therefore, these goods are dissimilar.

Contested goods in Class 30

Tea; tea-based beverages are identically contained in both lists of goods (including synonyms).

The contested preparations for making beverages [tea based] overlap with the opponent’s tea to the extent that both categories include tea leaves or tea mixes as the main ingredient used to make a beverage by infusion in boiling water. Therefore, they are identical.

Contested goods in Class 32

The contested non-alcoholic beverages (duplicate); fruit beverages and fruit juices include, as broader categories, the opponent’s non-alcoholic fruit juice drinks all made from or including sugar cane, guava and mango but not including any drinks made from or including lime flavouring. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested carbonated non-alcoholic drinks overlap with the opponent’s non-alcoholic fruit juice drinks all made from or including sugar cane, guava and mango but not including any drinks made from or including lime flavouring. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested mineral water [beverages] and the opponent’s non-alcoholic fruit juice drinks all made from or including sugar cane, guava and mango but not including any drinks made from or including lime flavouring have the same purpose (to quench one’s thirst) and method of use and are often sold side by side, both in shops and bars and on drinks menus. These goods target the same public and may be in competition. Therefore, they are highly similar.

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 or similar are goods for daily consumption directed at the public at large. The degree of attention is considered average.

3. The signs

UK trade mark No 1 465 275 VITA UK trade mark No 2 526 352	VITEA
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom.

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).

Earlier trade mark No 1 465 275 is the word mark ‘VITA’. This word will most likely be associated with the Latin word for ‘life’ (28/02/2017, R 1277/2016-5, Vive Soy). Given its similarity to and shared etymology with the words ‘vitamin’ and ‘vital’ and words that derive therefrom, this mark will be associated with life or health. Bearing in mind that the relevant goods are beverages, it is considered that this element is allusive of and therefore of limited distinctiveness for these goods, since consumers will understand it as conveying the message that the beverages in question are healthy.

Earlier trade mark No 2 526 352 is a figurative mark that consists of the word ‘VITA’ in a stylised black font. The letter ‘I’ is smaller than the rest of the letters. It consists of both verbal and figurative components, and, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The perception of the relevant public of the verbal element ‘VITA’ of earlier mark No 2 526 352, in relation to the relevant goods, would be the same as that of its word mark version, as explained above.

The contested sign consists of the word ‘VITEA’. This word might also be associated with ‘health’, ‘life’ and ‘vitality’, similarly to the word ‘VITA’, as explained above. Therefore, in relation to beverages, this word is considered allusive and therefore of limited distinctiveness for these goods.

Regarding the opponent’s opinion that the contested sign will be perceived as a combination of the words ‘VITA’ and ‘TEA’, the Opposition Division cannot find a reason why the public would perform such an artificial dissection of the mark. The signs in question must be compared as a whole; therefore, the opponent’s assertion must be set aside.

The signs under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘VIT’, identically contained at the beginnings of the signs. They also coincide in their final letter, ‘A’. However, they differ in the letter ‘E’ of the contested sign, which has no counterpart in the earlier marks. The stylisation of earlier mark No 2 526 352 constitutes a further point of difference.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VIT*A’, present identically in both signs. The pronunciation differs in the sound of the letter ‛E’ of the contested sign, which has no counterpart in the earlier marks and gives this sign a different rhythm and intonation from the earlier marks.

Therefore, 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. Therefore, there is at least an average degree of conceptual similarity between the marks, since for part of the public all of the signs will be associated with life, health and vitality.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some weak elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, 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). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods at issue are identical and some are similar. They target the public at large, which has an average degree of attention. The remaining contested goods are dissimilar to the goods covered by the earlier marks.

The similarity between the signs, taking into account all the relevant factors, results from the different degrees of visual, aural and conceptual similarity in the verbal elements of the signs.

Account must be taken of the fact that the goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). In the present case, the Opposition Division found that the signs in question are visually similar to an above average degree, despite the limited degree of distinctiveness of the verbal elements in the marks.

The differences in the additional letter in the contested sign, ‘VITEA’, and in the stylisation of earlier mark No 2 526 352, , are likely to have a limited impact for the public, taking into account that the public’s degree of attention is average and consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, although one of the earlier marks is stylised, this cannot overshadow the visual, aural and conceptual commonalities between the earlier marks and the contested sign. Therefore, as the goods in question are identical or similar, a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registrations No 1 465 275 and No 2 526 352.

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

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• UK trade mark registration No 2 526 337, , registered for the same goods listed above in Classes 29 and 30 and for the following goods in Class 32: beers, ale and porter, mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; soya bean-based carbonated and non-carbonated drinks and beverages, including rice and fruit drinks, distilled water and mineralized water; non-soy bean-based carbonated and non-carbonated non-alcoholic drinks and beverages, including rice and fruit drinks, distilled water and mineralized water; syrups, powders, pure soya bean extracts, soya bean extracts, soya bean-based extracts and concentrates for making carbonated and non-carbonated drinks and beverages; non-soya bean-based extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, fruit and vegetable drinks and juices of all kinds, soft drinks.

• UK trade mark registration No 2 526 347, , registered for the same goods listed above in Classes 29 and 30 and for the following goods in Class 32: beers, ale and porter, mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; soya bean-based carbonated and non-carbonated drinks and beverages, including rice and fruit drinks, distilled water and mineralized water, non-soya bean-based carbonated and non-carbonated non-alcoholic drinks and beverages, including rice and fruit drinks, distilled water and mineralized water; syrups, powders, pure soya bean extracts, soya bean extracts, soya bean-based extracts and concentrates for making carbonated and non-carbonated drinks and beverages; non-soya bean-based extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, fruit and vegetable drinks and juices of all kinds, soft drinks.

These earlier rights invoked by the opponent cover the same or a narrower scope of goods to the ones that have been compared above as far as Classes 29 and 30 are concerned. Furthermore, as regards the goods in Class 32, they are clearly different from the contested goods. The contested goods in Class 16 are stationery articles including writing materials (pens) and packaging and transportation items (bags, envelopes). The opponent’s goods in Class 32 are all drinks or preparations for making drinks. Therefore, they do not have the same nature, purposes or methods of use. They do not originate from the same providers, have similar distribution channels or target the same public, nor are they in competition. Therefore, these goods are dissimilar.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

Since the opposition is directed against all the goods of the contested sign, the Opposition Division will now proceed to examine the other grounds invoked by the opponent, namely Article 8(5) EUTMR and Article 8(4) EUTMR, in relation to the remaining goods.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will examine the opposition in relation to earlier UK trade mark registrations No 1 465 275, No 2 526 337, No 2 526 347 and No 2 526 352, for which the opponent claimed repute in the EU as a whole and in each Member State. However, Article 8(5) EUTMR establishes that the relevant territory for determining the reputation of the earlier mark is the territory where the mark is registered. Therefore, since for national marks the relevant territory is the Member State in which the earlier mark is registered, in the present case it must be considered that the reputation claimed for the earlier UK trade marks is in the United Kingdom.

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. Reputation of the earlier trade marks

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 07/04/2014. However, the contested trade mark has a priority date of 08/10/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

UK trade mark No 1 465 275

Class 32:        Carbonated and non-alcoholic beverages; all made from or including sugar cane, guava and mango; all included in Class 32; but not including any drinks made from or including lime flavouring.

UK trade mark No 2 526 337

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles; soy milk, milk, milk drinks, milk substitutes and tofu, soya bean milk in liquid and solid form, soya bean-based food products including sausage, cheese and yogurt, salad dressing, mayonnaise, ice cream, puddings and desserts.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice; tea and tea drinks; seasonings.

Class 32:        Beers, ale and porter, mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; soya bean-based carbonated and non-carbonated drinks and beverages, including rice and fruit drinks, distilled water and mineralized water, non-soya bean-based carbonated and non-carbonated non-alcoholic drinks and beverages, including rice and fruit drinks, distilled water and mineralized water; syrups, powders, pure soya bean extracts, soya bean extracts, soya bean-based extracts and concentrates for making carbonated and non-carbonated drinks and beverages; non-soya bean-based extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, fruit and vegetable drinks and juices of all kinds, soft drinks.

UK trade mark No 2 526 347

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles; soy milk, milk, milk drinks, milk substitutes and tofu, soya bean milk in liquid and solid form, soya bean-based food products including sausage, cheese and yogurt, salad dressing, mayonnaise, ice cream, puddings and desserts.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice; tea and tea drinks; seasonings.

Class 32:        Beers, ale and porter, mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; soya bean-based carbonated and non-carbonated drinks and beverages, including rice and fruit drinks, distilled water and mineralized water, non-soya bean-based carbonated and non-carbonated non-alcoholic drinks and beverages, including rice and fruit drinks, distilled water and mineralized water; syrups, powders, pure soya bean extracts, soya bean extracts, soya bean-based extracts and concentrates for making carbonated and non-carbonated drinks and beverages; non-soya bean-based extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, fruit and vegetable drinks and juices of all kinds, soft drinks.

UK trade mark No 2 526 352

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams; preserves, pickles; soy milk, milk substitutes and tofu, soya bean milk in liquid and solid form, soya bean-based food products including sausage, cheese and yoghurt, salad dressing, ice cream, puddings and desserts.

Class 30:        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice; tea and tea drinks; seasonings.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 22/12/2016, the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Affidavit: a witness statement, signed by the Company Secretary of Vitasoy Holdings Limited on 19/12/2016, containing a summary of the company’s products and background.

• Catalogues: an undated bilingual (English and Chinese) brochure printed in Hong Kong. Pictures of ‘VITA’ and ‘VITASOY’ products are displayed within.

• Shipment records: a table showing ‘VITA’- and ‘VITASOY’-branded products’ first shipment dates to EU countries.

• Samples of packaging: 12 printouts of packaging for drinks. The mark ‘VITA’ is visible on them.

• Internet printouts: eight screenshots from the ‘Export products’ section of the opponent’s website dated between 2003 and 2006.

• Invoices: more than 70 invoices issued to addresses in several EU Member States, including the UK, dated between December 2000 and August 2016. In the invoices there are references to the ‘VITA’ and ‘VITASOY’ marks and to some of the products in question, namely drinks (soy- and soy bean-based drinks, juice and tea, and distilled water).

• Turnover and sales figures: six tables showing a significant turnover in EU countries and Norway for the period 1991 to 2016 for the ‘VITA’ and ‘VITASOY’ marks.

• Advertising and promotion expenditure: two tables showing expenditure on advertising and promoting ‘VITA’ and ‘VITASOY’ marks in the EU; special reference is made to expenditure in the UK and the Netherlands.

• Advertisements: three samples of advertisements for drinks dating from the period 1999-2002. The mark ‘VITA’ appears in two of them. There are also pictures of advertisements placed in the UK magazine Eastweek, which is aimed at the Asian community, during the period 2010-2013. A screenshot of a TV advertisement featuring ‘VITA’ drinks run in the UK in 2008-2009 and printouts of advertisements placed in Honk Kong newspapers are also included.

• Retailers’ websites: printouts taken from retailers’ websites and Facebook profiles in the UK in 2009, 2010 and 2014. ‘VITA’ and ‘VITASOY’ drinks can be seen in them.

• Promotional campaigns: a printout of a poster announcing a competition organised in the UK in 2003 offering prizes, several pictures of tasting booths and stalls dated 2013-2014, printouts of promotional posters dated 2013 on which the marks were displayed and pictures of a sponsorship campaign at Warwick University in 2013. Evidence of participation in a trade fair in the UK in 2013, with a leaflet promoting the fair, is also included; the marks do not appear in this leaflet.

• Survey: a printout of a poster announcing a survey as part of a promotional campaign at King’s College London in 2013. The topic and results of the survey were not provided.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Although the evidence submitted shows use of the trade marks, at least in the United Kingdom, it fails to provide any indication of the extent of the recognition of the earlier marks by the relevant public. The documents submitted by the opponent demonstrate that the promotional efforts undertaken were sufficient to have increased the distinctiveness of the marks through use. However, this use was not sufficient to reach the threshold for proving reputation. None of the documents referred to the recognition of the earlier trade marks by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed. There was no information on the market as a whole that would allow the Opposition Division to reach a conclusion on the market share held by the opponent. Furthermore, some of the evidence does not concern the relevant territory (e.g. some of the invoices do not concern the UK) or even the EU. The evidence regarding the promotional materials is also not conclusive, as there is no information about or evidence of the extent of the distribution of these promotional materials among the relevant public. As a result, the evidence does not demonstrate the degree of recognition of the trade marks by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent invoked Article 8(4) EUTMR based on its earlier non-registered trade mark, ‘VITA’, used in the course of trade in the European Union as a whole and in each of its Member States.

The goods for which the opponent claims that the non-registered trade mark is used in the course of trade are the following:

        Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; jellies, jams; preserves, pickles; soy milk, milk substitutes and tofu, soya bean milk in liquid and solid form, soya bean-based food products including sausage, cheese and yoghurt, salad dressing, ice cream, puddings and desserts (in Class 29).

        

        Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard, pepper, vinegar, sauces, spices; ice; tea and tea drinks; seasonings; tea; tea-based beverages; preparations for making beverages [tea based] (in Class 30).

        

        Carbonated and non-alcoholic beverages; all made from or including sugar cane, guava and mango; all included in Class 32; but not including any drinks made from or including lime flavouring; beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; soya bean based carbonated and non-carbonated non-alcoholic drinks and beverages, syrups, powders, extracts and concentrates for making carbonated and non-carbonated non-alcoholic beverages, juices of all kinds, soft drinks (in Class 32).

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a non-registered trade mark or sign used in the course of trade. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in Austria, Belgium, Bulgaria, Croatia, the Czech Republic, Denmark, Germany, Estonia, Ireland, Finland, France, Greece, Italy, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Poland, Portugal, Romania, Slovenia, Slovakia, Spain and Sweden mentioned by the opponent. The opponent listed only the applicable law for each country; however, it is not sufficient to make a general reference to the national legislation. Moreover, as non-registered trade marks are not protected at the European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.

Therefore, the opposition is not well founded under Article 8(4) EUTMR in relation to the European Union and each of the Member States listed above.

In relation to the protection of the non-registered trade mark ‘VITA’, used in the course of trade in the United Kingdom, the examination of Article 8(4) EUTMR will continue, as the opponent submitted the provisions of the applicable law.

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opposition is based on a non-registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing/priority (if applicable) date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

2. The opponent’s right vis-à-vis the contested trade mark

Misrepresentation (passing off)

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods for which the opponent has shown that it has acquired goodwill through use.

The goods

The goods have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition must be rejected.

It follows from the above that the goods for which registration is sought in Class 16 are dissimilar to the goods for which the opponent has invoked Article 8(4) EUTMR. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Denitza STOYANOVA-VALCHANOVA

Octavio MONGE GONZALVO

Swetlana BRAUN

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.