OPPOSITION No B 2 566 027
Bayern Tourismus Marketing GmbH, Arabellastraße 17, 81925 München (Bayern), Germany (opponent), represented by Abitz & Partner Patentanwälte mbB, Arabellastraße 17, 81925 München, Germany (professional representative)
a g a i n s t
Wellvita ApS, Energivej 18, 6700 Esbjerg, Denmark (applicant), represented by Dahl Advokatfirma, Dokken 10, 6700 Esbjerg, Denmark (professional representative).
On 28/06/2017, the Opposition Division takes the following
1. Opposition No B 2 566 027 is partially upheld, namely for the following contested services:
Class 35: Retail services in relation to dietary supplements; wholesale services in relation to dietary supplements; retail services in relation to dietetic preparations; wholesale services in relation to dietetic preparations; retailing of vitamin and mineral supplements; wholesaling of vitamin and mineral supplements; retailing of hair care preparations; retailing of hair styling preparations; wholesaling of hair care preparations; wholesaling of hair styling preparations; retail services in relation to foodstuffs; wholesale services in relation to foodstuffs.
2. European Union trade mark application No 13 976 972 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 976 972. The opposition is based on German trade mark registrations No 30 129 432 and No 30 116 163. 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.
- The goods and services
The goods and services on which the opposition is based are the following:
- German trade mark registration No 30 129 432
Class 16: Printed matter, periodicals, books, paper towels.
Class 32: Beers, mineral and carbonated water and other soft drinks, fruit juices, fruit drinks.
Class 39: Arranging travel tours.
Class 41: Education, training, sporting and cultural events;
Class 43: Temporary accommodation;
Class 44: Hygienic and beauty care.
- German trade mark registration No 30 116 163
Class 29: Dietary products for non-medical purposes based on proteins.
Class 30: Dietetic products for non-medical purposes on the basis of carbohydrates.
Class 35: Advertising; marketing; Business consultancy; Arranging contracts for the buying and selling of goods and services; Consumer consultancy, in particular for the health sector.
After a limitation made by the applicant and a partial rejection in the parallel opposition proceedings B 2 562 182, the contested services are the following:
Class 35: Retail services in relation to dietary supplements; Wholesale services in relation to dietary supplements; Retail services in relation to dietetic preparations; Wholesale services in relation to dietetic preparations; Retailing of vitamin and mineral supplements; Retailing of plasters; Retailing of medical preparations for slimming purposes; Retailing of slimming pills; Wholesaling of vitamin and mineral supplements; Wholesaling of plasters; Wholesaling of medical preparations for slimming purposes; Wholesaling of slimming pills; Retailing of hair care preparations; Retailing of hair styling preparations; Wholesaling of hair care preparations; Wholesaling of hair styling preparations; Retail services in relation to foodstuffs; Wholesale services in relation to foodstuffs.
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.
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
The contested retail services in relation to dietary supplements; wholesale services in relation to dietary supplements; retail services in relation to dietetic preparations; wholesale services in relation to dietetic preparations; retailing of vitamin and mineral supplements; wholesaling of vitamin and mineral supplements refer to the retail or wholesale of a broad range of dietetic supplements and dietetic preparations, which might include the opponent’s dietary products for non-medical purposes based on proteins in Class 29 and dietetic products for non-medical purposes on the basis of carbohydrates in Class 30 (earlier mark 2). The same applies to the contested retail services in relation to foodstuffs; wholesale services in relation to foodstuffs, as foodstuffs include the opponent’s goods in Classes 29 and 30 (earlier mark 2). Therefore, these goods and services are similar to a low degree.
The contested retailing of hair care preparations; retailing of hair styling preparations; wholesaling of hair care preparations; wholesaling of hair styling preparations in Class 35 are similar to a low degree to the opponent’s hygienic and beauty care in Class 44 (earlier mark 1), as hygienic and beauty care providers very often provide retail services of the products they use during the delivery of the services provided. These services are complementary, they are provided through the same distribution channels and they target the same relevant public.
The contested retailing of plasters; retailing of medical preparations for slimming purposes; retailing of slimming pills; wholesaling of plasters; wholesaling of medical preparations for slimming purposes; wholesaling of slimming pills and the opponent’s goods in Classes 16, 29, 30 and 32 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical. With respect to the various services concerning the sale of slimming pills, these slimming pills are considered medical goods such as anti-obesity medication or weight-loss drugs and are all pharmacological agents that reduce or control weight. They are not identical to the opponent’s dietary products in Classes 29 and 30 and therefore the sale of these goods cannot be found similar to the opponent’s goods.
Furthermore, these contested services are also dissimilar to the opponent’s services in Classes 35, 39, 41, 43 and 44. These services have different natures (advertising, business management, business administration, consultancy, transport, temporary accommodation, education, events, hygienic and beauty services, etc.), different purposes and different methods of use. Moreover, they are not complementary to or in competition with each other. Furthermore, they are not provided by the same undertakings, they are provided through different channels and they target different relevant publics.
- 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 and services found to be similar to a low degree are directed at the public at large and at a professional public with specific knowledge and expertise. The degree of attention will vary from average to higher than average, as some of the goods and services might affect one’s state of health.
- The signs
Earlier trade marks
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).
The marks are composed of words that are, as a whole, not part of the German language and have, as a whole, no specific or well-defined meaning for the relevant public. However, the Court has held that, although average consumers normally perceive a mark as a whole and do 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). Therefore, it is reasonable to assume that the element ‘WELL’, present in all the marks, might be noticed by at least part of the relevant public and perceived as meaning ‘in good health, free or recovered from illness’ because it is a rather basic English word. The element ‘VITAL’ in the earlier marks will be perceived as meaning, inter alia, ‘important, full of energy; lively’ (information extracted on 15/06/2017 at http://www.duden.de/suchen/dudenonline/vital) and part of the relevant public will know that it is an adjective derived from the Latin word ‘VITA’. The element ‘VITA’ in the contested sign might be dissected by part of the relevant public and understood as relating to ‘life’ (information extracted on 15/06/2017 at http://www.duden.de/rechtschreibung/Vita). Bearing in mind that the relevant goods and services are or relate to dietary preparations, foodstuffs, and hygienic and beauty services, the elements ‘WELL’, ‘Vital’ and ‘VITA’ have limited distinctiveness for part of the relevant public, as they might be perceived as indicating that the goods and services are intended to promote well-being or a healthy life.
Another part of the relevant public, for example the part that is not familiar with English, might not dissect the marks and might perceive them as fanciful words having an average degree of distinctiveness.
Visually and aurally, the signs coincide in their first eight letters, ‘WELLVITA*’. 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. However, the signs differ in the last letter/sound, ‘L’, of the earlier marks.
As all the signs are word marks, it is irrelevant whether they are written in lower case or upper case letters or in a combination of both (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57).
Although the elements of the marks, when perceived separately, might have a rather limited distinctive character for a part of the relevant public, the similarities are striking and the difference in one letter at the end of the earlier marks might easily go unnoticed. Therefore, the marks are considered visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated, by part of the relevant public, with a similar meaning on account of the element ‘WELL’, and to some extent also the elements ‘Vital’ and ‘VITA’, the signs are conceptually similar to at least an average degree for this part of the relevant public.
For the remaining part of the relevant public, none of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for part of the relevant public. The marks have a normal degree of distinctiveness for the remaining part of the relevant public, which will perceive them as meaningless fanciful terms.
- 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, 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).
Such a global assessment of 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 greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The earlier marks have, as a whole, a low degree of distinctiveness for part of the relevant public, and for another part of the relevant public they have a normal degree of distinctiveness.
In this respect, it should be noted that the Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. 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 high degree of similarity between the signs and between the goods or services covered (13/12/2007, T–134/06, Pagesjaunes.com, EU:T:2007:387, § 70).
The relevant public has a degree of attention that varies from average to higher than average.
Account is taken of the fact 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). 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).
The contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods and services.
The signs are visually and aurally similar to a high degree and conceptually either they are similar to at least an average degree or the conceptual comparison remains neutral.
Taking into account all the relevant factors of the case, as well as the interdependence principle mentioned above, it is considered that the striking similarities between the signs outweigh the low degree of similarity between the goods and services and even the low degree of distinctiveness of the earlier marks that exists for part of the relevant public. Therefore, the relevant public could be led to believe that the goods and services found to be similar to a low degree come from the same undertaking or economically linked undertakings, even if the degree of attention paid is higher than average.
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 German trade mark registrations.
It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to the goods and services of the earlier trade marks.
The rest of the contested services 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 services cannot be successful.
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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Marta GARCÍA COLLADO
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.