FéminaFlor Sura Vitasan | Decision 2114133 - GECCO IMPORT-EXPORT HANDESLGESSELSCHAFT MBH v. NEW ROOTS HERBAL INC.

Date Published: Oct 1, 2017

OPPOSITION No B 2 114 133

Gecco Import-Export Handelsgesselschaft mbH, Königsklostergasse 7/17, 1060 Wien, Austria (opponent), represented by Lattenmayer, Luks & Enzinger, Tuchlauben 13, 1010 Wien, Austria (professional representative)

a g a i n s t

New Roots Herbal Inc., 3405 FX tessier, Vaudreuil-Dorion, QC J7V 5V5, Canada (applicant), represented by S. Orlando Asesores Legales y en Propiedad Industrial S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 114 133 is upheld for all the contested goods, namely

Class 5:        Parapharmaceutical preparations, vitamins, minerals and trace elements, dietetic and nutritional preparations for medical purposes, medicated syrups, combined preparations based on vitamins, minerals, trace elements and plant extracts, food supplements enriched with vitamins, minerals or trace elements, vitamin preparations, multivitamin preparations, mineral preparations and multimineral preparations for medical purposes, herbal teas for medical purposes, medicinal plants, dietetic substances adapted for medical use, preparations or foodstuffs containing proteins for medical purposes, herbal extracts or syrups for medical purposes, food additives based on vitamins in the form of concentrates, protein concentrates for use as food additives for medical and food purposes, medicated sweets and confectionery for medical purposes, preparations containing biological catalysts for active persons, and for sportspeople and convalescents, analeptic foodstuffs for medical purposes, food extracts and preparations covering specific nutritional requirements, edible goods for dietetic and diabetic diets, food additives in solid and liquid form for strengthening the immune system and revitalising the health in the form of mixtures as a powder or as drops, syrups, gels, creams, tablets, effervescent tablets, lozenges, coated tablets, capsules, sweets, jellies or powders, all the aforesaid being for medical purposes, beverages and extracts enriched with vitamins for medical purposes, medicinal herbs; Dietetic substances containing plant extracts; Dietetic foods containing plant extracts; Vitamin preparations; None of them related to animals.

2.        European Union trade mark application No 11 060 878 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 060 878, namely against all the goods in Class 5. The opposition is based on international trade mark registration No 632 476 designating Germany, Italy, Hungary, Austria, Poland, Slovenia, Slovakia and the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

On 09/12/2013 the Opposition Division rendered a decision which resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion because the differences between the signs were sufficient and decisive to exclude the likelihood of confusion, even for identical goods.

The decision was appealed and the Board of Appeal decided in case R 906/2014-1 on 02/12/2014. The Board of Appeal’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board of Appeal considered that the wording and the context used by the applicant in its observations submitted on 24/09/2013 indicate that it asked for evidence of use of all the earlier trade marks. Consequently, by failing to formally invite the opponent to file evidence of proof of use and to give a time limit to the applicant to reply to it, the Opposition Division committed a substantial procedural error. Moreover, the Board of Appeal pointed out that the Opposition Division omitted the comparison of the goods, assuming instead that they are identical. However, the Board of Appeal concluded that in the present case, it could not be automatically excluded that the entire incorporation of the earlier mark in the contested sign could result in likelihood of confusion and that this would depend on a thorough assessment of all factors, in particular the degree of similarity of the goods.

AUSTRIAN DESIGNATION OF INTERNATIONAL TRADE MARK REGISTRATION NO 632 476/ AUSTRIAN TRADE MARK REGISTRATION No 156 758

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) EUTMR or where the opposition is based on Article 8(3) EUTMR, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a European Union trade mark.

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

On 07/12/2012, the opponent filed notice of opposition against the contested application. The opponent invoked as first earlier right international trade mark registration No 632 476 designating Germany, Italy, Hungary, Austria, Poland, Slovenia, Slovakia and the subsequent designation of the European Union as second earlier right.

On 11/07/2013 the opponent submitted arguments in support of the opposition wherein it was stated that the opposition is based on Austrian trade mark registration No 156 758 for the word mark ‘VITASAN’.

However, the above mentioned Austrian national mark was not invoked as a basis of the opposition within the three-month opposition period. Therefore, invoking further earlier rights by the opponent in the above mentioned observations must be rejected as not admissible.

Furthermore, in the notice of opposition, with regard to international registration No 632 476, Austria was checked as contracting party where the mark is valid, Although within the substantiation time limit the opponent provided evidence that Austrian trade mark registration No 156 758 is the basic registration, this cannot be construed as holding that the Austrian trade mark registration No 156 758 was validly invoked in the notice of opposition or that international trade mark registration No 632 476 designating Austria is substantiated. As evident from the ROMARIN extract submitted by the opponent, Austria is not within the designated countries of international registration No 632 476.

Therefore, the opposition shall be rejected as unfounded, as far as it is based on international trade mark registration No 632 476 designating Austria.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of Austrian trade mark registration No 156 758 for the products in Class 5 and proof of use in Austria ‘as all the earlier trademarks concerns’. As explained in detail in decision No R 906/2014-1 of 02/12/2014 of the Board of Appeal (see, in particular, paragraphs 24 – 30), the applicant’s request qualifies as a request for proof of use of all the earlier trade marks. Since the clarification that only goods in Class 5 are concerned is made only with regard to Austrian trade mark registration No 156 758 (which, as also confirmed by the Board of Appeal, was not invoked as basis of the opposition and the request for proof of use should not have been taken into account), the Opposition Division considers that the request for proof of use as regards the other earlier rights invoked concerns all the goods on which the opposition is based (i.e. also the goods in Class 3).

In the present case the contested trade mark was published on 26/09/2012.

Earlier international trade mark registration No 632 476 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 13/06/2013. Therefore, the request for proof of use is inadmissible, as far as the subsequent designation of the European Union of international trade mark registration No 632 476 is concerned.

As regards international trade mark registration No 632 476 designating Germany, Italy, Hungary, Poland, Slovenia and Slovakia is concerned, the request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany, Italy, Hungary, Poland, Slovenia and Slovakia from 26/09/2007 to 25/09/2012 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5:        Pharmaceutical, veterinary and sanitary products; dietetic substances for medical use, dietetic food products for medical use, food for babies; plasters, materials for dressings; disinfectants; pesticides; fungicides, herbicides.

The Opposition Division takes note of the applicant´s argument that the list of goods covered by the international registration was affected by limitations or refusals of protection in relation to some of the territories (such as Poland or Germany), but considers it not necessary to analyse the limitations or refusals at this point.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 24/03/2015 and 10/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 24/05/2015 and 10/02/2106 to submit evidence of use of the earlier trade marks. On 20/05/2015 and 02/02/2016, within the respective time limits, the opponent submitted evidence of use.

The Opposition Division acknowledges that the information provided by the Office in the letters sent on 24/03/2015 and 10/12/2015 is contradictory and, furthermore, the second letter is not in line with the decision No R 906/2014-1 of 02/12/2014 of the Board of Appeal. However, since the opponent has been requested and given the opportunity to submit proof of use for international trade mark registration No 632 476 for Germany, Italy, Hungary, Poland, Slovenia and Slovakia for all goods on which the opposition is based (see letters sent to the parties on 24/03/2015) and the applicant has been given the opportunity to comment on the submitted proof of use, the Opposition Division considers that it is not necessary to re-open the proceedings. For the sake of completeness, the Opposition Division will take into account all pieces of evidence submitted by the opponent in the course of the present proceedings. As will be seen below, this approach will not be to the detriment of either of the parties in the present opposition proceedings.

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.

Therefore, the evidence to be taken into account is the following:

• Items 1 – 6: Undated pictures of products (creams, lotions, tonics, dietary supplements) bearing the earlier trade mark.

 

• Item 7: Invoice issued on 15/04/2014 (that is, outside the relevant period) by the opponent for goods covered by the earlier trade mark to a German company.

• Items 8-43: Screenshots from the website www.vivasanwebshop.eu, retrieved on 01/02/2016 (the opponent claims it was retrieved on 02/02/2016). These items depict various products covered by the earlier trade marks bearing the sign ‘VITASAN’.

• Item 44: a screenshot from web.archive.org showing the archived version of www.vivasanwebshop.eu from 01/03/2010 wherein it is mentioned that in the web shop products from, inter alia, Vitasan can be found; a screenshot from web.archive.org retrieved on 02/02/2016, showing that the internet site www.vivasanwebshop.eu was saved 40 times between 01/03/2010 and 23/07/2015.

• Item 45: Screenshots from the Facebook page of Vivasan Webshop. Although most of the screenshots are not dated (some are dated 01/02/2016), from the information in the printouts (date of posts) it can be concluded that some of the posts in relation to products bearing the earlier trade mark (Lotion, Crème) are dated within the relevant period.

• Item 46: Excerpts from a product catalogue entitled ´VIVASAN PRODUCTS´ (not dated) featuring products bearing the earlier sign. The catalogue is in German, French and Spanish.

As an introductory remark, it is to be emphasised that, in accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43).

Trade marks must be used in the territory where they are protected – in this case, the relevant territories are Germany, Italy, Hungary, Poland, Slovenia and Slovakia. The only piece of evidence from which a definite conclusion as to the territory of use can be made is the invoice (submitted as item 7), which is, however, outside the relevant period.

From the language of the evidence submitted (English, German, Spanish, French) also no conclusion can be drawn that the filed documents refer to or target the relevant territories since Germany is not the only country in Europe (not to mention worldwide) with German-speaking public.

Furthermore, the undated pictures of products and the screenshots from the VIVASAN web shop and Facebook page also cannot be assumed to constitute comprehensive evidence as to the territory of use or even as to territory targeted by the opponent’s distributor.

Therefore, the Opposition Division is of the opinion that the opponent did not provide sufficient evidence concerning the territory of use.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the undated pictures, the screenshots, the invoice outside the relevant period and the catalogue, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The undated photos of goods designated by the earlier sign and the catalogue are not proof that the respective goods have been effectively commercialised within the relevant market. They neither contain any reference regarding commercial transactions nor indicate when or to what extent the earlier sign has come to the attention of the public.

Furthermore, the submission of screenshots (items 8 – 45) does not establish the intensity of the alleged commercial use of the rights relied on, which may be shown by, inter alia, a certain number of visits to the site, emails received via the sites or the volume of business generated.

Finally, the invoice submitted by the opponent does not concern the relevant period.

The affirmations of the opponent are not backed by any additional evidence such as figures provided regarding promotional or advertising expenditure, proof originating from independent sources of information, invoices, turnover generated under the earlier sign, information on the quantity of products actually sold under the earlier signs. In short, there is nothing to indicate the scale of commercial activity undertaken by the opponent in relation to the marketing and promotion of the goods concerned under the earlier sign.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territories during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as far as it is based on international trade mark registration No 632 476 designating Germany, Italy, Hungary, Poland, Slovenia and Slovakia.

For the sake of completeness, the Opposition Division notes that even if the Austrian national trade mark registration or Austrian designation of the international registration were to be accepted as admissible or substantiated respectively, the opposition would still not be successful, as far as based on such earlier rights, as the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in Austria.

Furthermore, since the evidence is insufficient to prove that the earlier trade mark was genuinely used in relation to any of the goods covered by the international registration, the Opposition Division finds it unnecessary to address the issue with the limitations and refusals applicable to a part of the designated territories.

The examination of the present opposition will proceed on the basis of the opponent’s earlier international trade mark registration No 632 476 designating the European Union which is not subject to the requirement of use.

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 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soap; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5:        Pharmaceutical, veterinary and sanitary products; dietetic substances for medical use, dietetic food products for medical use, food for babies; disinfectants; pesticides; fungicides, herbicides.

The contested goods are the following:

Class 5:        Parapharmaceutical preparations, vitamins, minerals and trace elements, dietetic and nutritional preparations for medical purposes, medicated syrups, combined preparations based on vitamins, minerals, trace elements and plant extracts, food supplements enriched with vitamins, minerals or trace elements, vitamin preparations, multivitamin preparations, mineral preparations and multimineral preparations for medical purposes, herbal teas for medical purposes, medicinal plants, dietetic substances adapted for medical use, preparations or foodstuffs containing proteins for medical purposes, herbal extracts or syrups for medical purposes, food additives based on vitamins in the form of concentrates, protein concentrates for use as food additives for medical and food purposes, medicated sweets and confectionery for medical purposes, preparations containing biological catalysts for active persons, and for sportspeople and convalescents, analeptic foodstuffs for medical purposes, food extracts and preparations covering specific nutritional requirements, edible goods for dietetic and diabetic diets, food additives in solid and liquid form for strengthening the immune system and revitalising the health in the form of mixtures as a powder or as drops, syrups, gels, creams, tablets, effervescent tablets, lozenges, coated tablets, capsules, sweets, jellies or powders, all the aforesaid being for medical purposes, beverages and extracts enriched with vitamins for medical purposes, medicinal herbs; Dietetic substances containing plant extracts; Dietetic foods containing plant extracts; Vitamin preparations; None of them related to animals.

Contested goods in Class 5

All the contested goods, namely parapharmaceutical preparations, vitamins, minerals and trace elements, dietetic and nutritional preparations for medical purposes, medicated syrups, combined preparations based on vitamins, minerals, trace elements and plant extracts, food supplements enriched with vitamins, minerals or trace elements, vitamin preparations, multivitamin preparations, mineral preparations and multimineral preparations for medical purposes, herbal teas for medical purposes, medicinal plants, dietetic substances adapted for medical use, preparations or foodstuffs containing proteins for medical purposes, herbal extracts or syrups for medical purposes, food additives based on vitamins in the form of concentrates, protein concentrates for use as food additives for medical and food purposes, medicated sweets and confectionery for medical purposes, preparations containing biological catalysts for active persons, and for sportspeople and convalescents, analeptic foodstuffs for medical purposes, food extracts and preparations covering specific nutritional requirements, edible goods for dietetic and diabetic diets, food additives in solid and liquid form for strengthening the immune system and revitalising the health in the form of mixtures as a powder or as drops, syrups, gels, creams, tablets, effervescent tablets, lozenges, coated tablets, capsules, sweets, jellies or powders, all the aforesaid being for medical purposes, beverages and extracts enriched with vitamins for medical purposes, medicinal herbs; dietetic substances containing plant extracts; dietetic foods containing plant extracts; vitamin preparations; none of them related to animals are included in, or overlap with, the opponent’s dietetic substances for medical use. Therefore, the goods 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 are directed at the public at large and at professional consumers with specific knowledge or expertise. The degree of attention is considered to be relatively high, as the relevant goods affect the end consumers’ state of health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

VITASAN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is not meaningful in certain territories, for example, in some countries where Italian- or Latin-based languages are not understood (such as Hungary and Poland). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian- and Polish-speaking part of the public.

The word ‘VITASAN’ constituting the entire earlier mark and contained in the contested sign will not be associated by the relevant public with a meaning and is, therefore, normally distinctive. Furthermore, the word elements ‘Flor’ and ‘Sura’ of the contested sign will also be not associated with any meaning and are considered to be normally distinctive. As regards the word element ‘Fémina’ of the contested sign, it is uncertain that the average Hungarian or Polish consumer would perceive it as referring to the concept of ‘feminine’ (see 22/05/2012, T-110/11, Femiferal, EU:T:2012:253, § 39) and, consequently, the Opposition Division considers that the distinctiveness of this element is also normal. The figurative elements of the contested sign (the colours, stylisation and the figurative element resembling a twig with leaves) will be seen as having rather decorative function or as indicating that the relevant goods are plant-based and will be attributed less trade mark significance than the verbal elements.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the entire earlier mark is contained in the contested sign. Although the elements ‘FéminaFlor’ are represented on top of the elements ‘Sura Vitasan’ and are in bigger letters, the figurative element and the use of the darker colour attracts the attention to the elements ‘Sura Vitasan’, the latter being emphasized also by the stylised letter ‘V’ and the yellow background colour. Consequently, the coincidence in the distinctive element ‘Vitasan’ will not go unnoticed by the consumers, despite the differences in the further distinctive verbal and secondary figurative elements.

Therefore, the signs are similar to a lower than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘Vitasan’ constituting the entire earlier right and recognisable as a separate and distinctive element of the contested sign. The pronunciation differs in the sound of the remaining verbal elements of the contested sign, which have no counterparts in the earlier mark.

Therefore, and considering that the coincidences lie in the last element of the contested sign, whereas the consumers normally tend to pay more attention to the beginning of the signs, the conflicting signs are similar to a lower than average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the figurative elements of the contested sign will evoke a concept, it will perceived as referring to characteristics of the goods rather than as a badge of origin and therefore cannot lead to a relevant conceptual difference. Since a conceptual comparison it not possible, the conceptual aspect does not influence the assessment of the similarity between the signs.

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. 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.

5. Global assessment, other arguments and conclusion

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).

In the present case the contested goods are identical to goods covered by the earlier mark and the distinctiveness of the earlier mark is normal.

The entire earlier mark is incorporated as an identifiable separate element in the contested sign and holds an independent distinctive role therein.

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.

Although the coincidences in the signs are less obvious than the differences (that is, the additional verbal elements and figurative elements of the contested sign), a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in the contested sign. Indeed, the conflicting signs were found to have a below average degree of visual and phonetic similarity, however, based on the interdependence principle, the Opposition Division is of the opinion that the lesser degree of similarity between the signs is offset by the identity of the relevant goods. Furthermore, there are no relevant conceptual dissimilarities that would assist the consumers in safely holding the signs apart.

Indeed, it is highly conceivable that the relevant consumer (even if displaying a heightened degree of attention) will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that it owns registrations with the word ‘VITASAN’ in the European Union, which coexists with the opponent’s earlier marks.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant argues that the graphic element of the contested mark (the figurative element resembling a twig with leaves) has become the element of the mark which indicates the commercial origin, since it has been used by the applicant in its different previous trade marks.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the Polish- and Hungarian-speaking part of the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 632 476 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Renata COTTRELL

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.