OPPOSITION No B 2 760 059

Grupo Viveplus, S.L., Av. M-40 nº 19 – Ofi. 11 P.G. Ventorro del Cano, 28925, Madrid, Spain (opponent), represented by Kapler, Calle Orense, 10, 1º Of. 12, 28020, Madrid, Spain (professional representative)

a g a i n s t

Modelo Continente Hipermercados S.A., Rua João Mendonça, 505, 4464-503, Senhora da Hora, Portugal (applicant), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon, 14, 1249-103, Lisbon, Portugal (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 059 is upheld for all the contested goods.

2.        European Union trade mark application No 15 177 851 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 177 851. The opposition is based on Spanish trade mark registration No 2 914 970. 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 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use, food for babies; plasters; materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar; rice; tapioca and sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; ices; honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 5: Nutritional supplements for medical and dietetic use, including biological preparations for medical and dietetic use; Food additives and supplements for medical use; Dietetic additives and supplements for medical use; Dietary supplemental drinks; Food substitutes for medical use; Medication for slimming purposes; Medication for treating diseases via the use of plants (phytotherapy); Vitamins; Minerals for medical purposes; Food supplements and food substitutes other than for dietetic use based on flour and dough.

Class 29: Soya creams; Fruit, stewed; Jams; Quince jam, tinned apple purée; Foodstuffs based on organic meat, fish and poultry; Soya sausages; Hamburgers; Meatballs; Chorizo; Tofu.

Class 30: Chocolate based desserts; Cookies; Biscuits; Sweets; Bread; Tea and other infusions; Soya granules; Seitan; Wholemeal flour; Bran preparations for human consumption; Rice; Pasta; Wheat germ; Fructose; Brown sugar; Couscous [semolina]; Ground cornmeal millet; Cereal flakes; Soluble cereal mixtures; soy-based desserts; Chocolate.

Class 31: Fresh beans; Lentils, fresh; Peas, fresh; Fresh chick peas; Fresh soya beans.

Class 32: Beverages (non-alcoholic -); Revitalising beverages, energy drinks and preparations for making said goods (not included in other classes).

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 5

The contested vitamins; minerals for medical purposes are considered to be identical to the broader pharmaceutical preparations.

The contested medication for slimming purposes; medication for treating diseases via the use of plants (phytotherapy) are all types of medication and by definition they overlap with the earlier pharmaceutical preparations. Therefore, they are identical.

The contested nutritional supplements for medical and dietetic use, including biological preparations for medical and dietetic use; food additives and supplements for medical use; dietetic additives and supplements for medical use; Dietary supplemental drinks; Food substitutes for medical use; Food supplements and food substitutes other than for dietetic use based on flour and dough overlap, and are therefore identical, to the earlier dietetic food and substances adapted for medical use.

Contested goods in Class 29

The contested soya creams derive from soya beans and are used as an alternative to other diary based creams. They are considered to be similar to the opponent’s milk and milk products since they have a similar nature, target the same public, are distributed through the same channels and may be produced by the same companies.

The contested fruit, stewed; tinned apple purée are items of fruit which have been either boiled, preserved and/or cooked in order to consume. Therefore, they are considered to be identical to the earlier preserved and cooked fruits.

The contested jams are identically contained in both lists of goods.

The contested quince jam is included in the broad category of the opponent’s jams. Therefore, they are identical.

The contested foodstuffs based on organic meat, fish and poultry are goods which meat, fish and poultry (as covered by the opponent’s list of goods) are the main ingredient. Since they are the same in nature, end users and distribution channels they are considered to be similar.

The contested soya sausages are considered to be similar to the opponent’s meat. Whilst the soya sausages may not be meat based, they are nevertheless sausages (the opponent’s meat is broad enough to include sausages) so they would target consumers of these goods with the only difference being that some (not all) may be vegetarians whereas the others may not be. Therefore there is a degree of competition between the goods. They are similar.

The contested hamburgers; meatballs; chorizo are included in the broad category of the opponent’s meat. Therefore, they are identical.

The contested tofu is included in the broad category of the opponent’s preserved, frozen, dried vegetables. Therefore, they are identical.

Contested goods in Class 30

The contested chocolate based desserts; chocolate overlap with the opponent’s confectionery because the latter often contains or is based on chocolate and these conflicting goods have the same purpose as luxury (or indulgence) foodstuffs. They are identical.

The contested cookies; biscuits; cereal flakes are considered to be identical to the earlier preparations made from cereals.

The contested sweets are considered to be a synonym, and therefore identical to the opponent’s confectionery.

The contested bread; rice are identically contained in both lists of goods.

The contested tea is identically contained in both lists of goods. The contested goods also includes and other infusions which, listed after tea, and within Class 30, means that they are considered to be various types of tea, such as herbal, green, mint tea, etc and/or tea leaves. Whichever interpretation is adopted they are considered to be identical.

The contested soya granules are made from soya beans and rich in protein. They are used to compliment accompanying food, enhance the flavour or to add protein to dishes such as curries. Therefore, they are likely to be sold in close proximity to the opponent’s, and in competition with, rice and spices.  Further they may coincide with end users. They are similar.

The contested seitan is made from wheat and is referred to as ‘wheat meat’ because once it is cooked it is similar in look and texture to meat. In essence it is a meat substitute and it therefore shares certain points of contact with the opponent’s meat. There is a degree of competition between the goods and they are likely to be sold by the same manufacturers and within relatively close proximity. Therefore, the goods are considered to be similar.  

The contested wholemeal flour is a type of, and therefore included in the broader term, flour. They are identical.

The contested bran preparations for human consumption are considered to be a type of cereal. On this basis, it is considered to be included, and therefore identical to, the opponent’s preparations made from cereals.

The contested pasta is considered to be similar to the opponent’s rice to a low degree since they can coincide in end user, distribution channels and method of use.

The contested wheat germ overlap with the opponent’s preparations made from cereals. Therefore, they are identical.

The contested fructose is a natural sugar, rich in carbohydrate, which can be sold in powder form. They are similar to sugar as they have the same purpose, they can coincide in end user and distribution channels. Further, they are in competition with one another.

The contested brown sugar is included in the broad category of the opponent’s sugar. Therefore, they are identical.

The contested couscous [semolina] is considered to be similar to the earlier rice. The earlier rice is a foodstuff of a plant origin, namely edible grains of a cereal plant of South Asian origin. Rice is served hot or cold after cooking in water or other liquid. The contested couscous [semolina] in class 30 is a food resembling tiny grains. It is made from semolina (the hard grains left after the milling of flour). It is cooked by steaming it or soaking it in boiling water. It follows from the above, that the contested rice has a similar nature and purpose to the opponent’s rice. They are basic ingredients used in the preparation of meals. They fall into the category of basic food commodities that most people have in their kitchen and consume daily. Furthermore, they broadly satisfy similar needs and they are interchangeable and in competition with each other. Finally, they are often displayed in the same, or neighbouring, supermarket areas. Thus, they are similar.

The contested ground cornmeal millet are goods made from cereal grown in warm countries and regions with poor soils, bearing a large crop of small seeds which are chiefly used to make cereals. Therefore they are considered to be covered by the broader preparations made from cereals. They are identical.

The contested soluble cereal mixtures are considered to be included in the broader preparations made from cereals. Therefore they are identical.

The contested soy-based desserts are considered to be similar to the opponent’s confectionery. Whilst the contested goods are soy-based they will nevertheless coincide in methods of use, producer/provider, relevant public and distribution channels. Further they are in competition with one another.

Contested goods in Class 31

The contested fresh beans; Lentils, fresh; Peas, fresh; Fresh chick peas; Fresh soya beans are all included in the opponent’s broader fresh vegetables. Therefore, they are identical.

Contested goods in Class 32

The contested Beverages (non-alcoholic-) are identically contained in both lists of goods.  

The contested Revitalising beverages, energy drinks and preparations for making said goods (not included in other classes) are all included in the opponent’s broader non-alcoholic beverages. Therefore, they are 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 identical or similar are all goods which are directed at the public at large. The degree of attention will be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

The earlier mark is a figurative mark which comprises of the letters ‘Viv’, which is green font, followed by a plus which is a lighter shade of green. These elements are above, and in larger font than the words ‘cada dia melhor’ which are in the same green colour font as the ‘Viv’. Whilst the words ‘cada dia melhor’ are Portuguese which mean ‘Every day better’, they would be understood by the relevant Spanish-speaking public as being a strapline or promotional statement. Therefore, they are considered to be of weak distinctive character.

The word ‘Viv’ has no meaning for the Spanish-speaking public but it may be considered to be a common misspelling for the word ‘Vive’. Nevertheless, it is distinctive and given its size it is considered to be the most dominant element of the earlier trade mark. The mathematical symbol ‘+’ in the earlier trade mark implies a concept of increase or added value, so it is considered to have a weak distinctive character.

The contested sign is a figurative mark consisting of the word ‘Vive’ in slightly stylised coloured characters (the capital letter “V” being in yellow/light green, whilst the lower case letters “i”, “v”, “e” are in green) followed by the “+” symbol on the top-right hand side of the letter “e”. The point over the letter “i” and the “+” symbol are in magenta.  

In Spanish the word ‘Vive’ is the imperative form of the verb ‘vivir’ which means ‘to live’. Since it is followed by the mathematical ‘+’ symbol (which considered to be of weak distinctive character) the mark would be understood to mean ‘live more’ or live better’. Since ‘Vive’ is not descriptive of the goods in question and since it is in larger in size and more prominent, it is this element which is the most distinctive and eye-catching.

Visually, the signs coincide in the letters ‘Viv’, presented in the same order, and the symbol ‘+’ and are in a green font. However, they differ insofar that the letters ‘Viv’ in the contested sign end with an ‘e’ and the dot above the ‘I’ is in magenta. They also differ insofar that the earlier trade mark includes three additional words, though these are considered to be of weak distinctive character.

Therefore, the signs are considered to be visually similar to a high degree.

Aurally, the earlier trade mark will be pronounced as two syllables, being ‘viv-plus’. The contested sign will be pronounced three syllables, being ‘vi-ve-plus’. Therefore, the signs coincide with the first and last syllables but the contested sign has an additional syllable. In view of the size and proximity of the words (‘cada dia melhor’) below ‘‘Viv+’ in the earlier trade mark, they are unlikely to be enunciated (and even they were they are of low distinctive character).

Therefore, the signs are aurally similar to an average degree.

Conceptually, since the earlier mark has no meaning and the contested sign does have an easily graspable meaning, the signs are not conceptually similar. Notwithstanding this, a part of the public may consider the earlier mark to be a misspelling (intentionally or otherwise) of the word ‘Vive’ and they would therefore be considered to have the same meaning by this part of the public. In these members of the relevant public the marks will be conceptually similar to a high degree.

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. 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. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak (the plus sign) element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar to varying degrees. They are directed at the public at large whose degree of attention is average.

The signs are visually similar to a high degree and aurally to an average degree. Strictly speaking the respective marks are not conceptually similar; though it cannot be dismissed that part of the relevant public would perceive the earlier trade mark as a common misspelling and therefore share the concept to live more or better.

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

Considering all the above and taking into account that the earlier mark has a normal degree of distinctiveness, there is a likelihood of confusion on the part of the public for all of the goods which are considered to be identical or similar.

With regard to the goods which were found to be similar to a low degree it is noted that these are goods covered by Class 29. They are goods which 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 (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Since it has been concluded that the goods are visually similar to a high degree, and that average 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), the Opposition Division finds that there is also a likelihood of confusion in respect of these goods.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 914 970. It follows that the contested trade mark must be rejected for all the contested goods.

Finally, in the applicant’s observations of 27 February 2017 it refers to a number of existing trade mark registrations which contain ‘VIV’. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that reference to the registrations does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VIV’. Under these circumstances, the applicant’s claims must be set aside.

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 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Ioana MOISESCU

Mark KING

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.

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.