BACKGROUND TO THE DISPUTE

On December 9, 2015, Vita Zahnfabrik H. Rauter GmbH & Co, KG obtained international registration No. 1346271 with designation in the European Union, for the word trademark “VITABLOCS TriLuxe forte”.

The trademark was filed for the following classes:

Class 5: “Dental ceramic composition in the form of blocks for preparing ceramic restorations; ceramic dental materials; dental ceramics for preparing dental prostheses; ceramic material for stopping teeth and dental wax; ceramic for dental prostheses or dental ceramic materials; adhesives for affixing prostheses, namely dental cement and dental adhesives for bonding tooth stumps or implants for use in dental restoration.”

Class 10: “Goods related to dental medicine, namely artificial teeth made of dental ceramics; dental apparatus and instruments, especially color rings for dental use”.

On September 26, 2017, VIPI Indústria, Comércio, Exportaçao E Importaçao De Produtos Odontológicos LTDA filed opposition on the basis of European word trademark No 3794443, “TRILUX” registered on April 30, 2008 in the following classes:

Class 5: “Dental abrasives; adhesives for dentures; dental amalgams; moulding wax for dental use; dental cements; adhesives for dentures; dental mastics; dental varnishes; preparations to facilitate teething; dental wax; alloys of precious metals for dental purposes; moulding wax for dental use; material for stopping teeth; resin for dental purposes”.

Class 10: “Dentures; artificial teeth; of artificial teeth (prostheses); dental burs; pins for artificial teeth; prostheses”.

In view of this, the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion, considering that the two signs were different even though they were registered in the same classes. VIPI Indústria, Comércio, Exportaçao E Importaçao De Produtos Odontológicos LTDA then filed an appeal before the EUIPO, the Fourth Board of Appeal of the Office upheld the opposition by annulling the decision of the Opposition Division, concluding that there was a likelihood of confusion with respect to the goods for which protection had been sought in the EU.

Subsequently, Vita Zahnfabrik H. Rauter GmbH & Co, KG brought an appeal before the General Court, the applicant invoking a single plea based on the incorrect application of Article 47 (5) and Article 8 (1)(b) of Regulation No 2017/1001. Its plea consists of three complaints, firstly, to the assessment of visual similarity; secondly, to the assessment of phonetic similarity; and, thirdly, to the global assessment of likelihood of confusion.

The General Court pronounced on the following points:

1. Visual similarity

First, the General Court states that, in the absence of a composite element in the applicant mark, the three word elements forming the international registration are visible, so that all of them must be taken into account in the visual comparison, even though the element “forte” is not perceived as a distinctive element.

Secondly, when comparing the two signs, it is necessary to take into account the trademarks as a whole, in this case it is a word trademark, therefore, attention should be paid to the word indicated in the registration and not to the particular graphic or stylistic aspects that the trademark may have. Therefore, the fact that the element “vitablocs” is written in capital letters should not have a major impact on the visual comparison of the signs in question.

The General Court considers that the Board of Appeal correctly found that the word signs at issue were visually similar to an average degree. In particular, the Board of Appeal correctly assessed the meaning of the various word elements of the international registration at issue from a visual point of view and correctly noted that one of its distinctive elements, the word “triluxe”, was almost identical to the earlier mark TRILUX.

2. Phonetic similarity

The General Court determined that, with respect to the Italian-speaking public, the pronunciation of the words “trilux” and “triluxe” is almost identical, establishing also the existence of weak differences.  It was also determined that the similarity between the two trademarks, in certain circumstances, may be to an even greater degree taking into account that certain Italian-speaking consumers will not pronounce the word element “forte” as it is descriptive.

Moreover, the word element “vitablocs”, which consists of three syllables and whose pronunciation is longer than that of the word element “triluxe”, does not call into question the similarity since the pronunciation of the word elements “trilux” and “triluxe”, present in the signs at issue, is almost identical.

3. The global assessment of likelihood of confusion

The General Court finds that the Board of Appeal made a correct comparison of the signs as a whole, taking into account their distinctive elements.  It should be noted that the earlier mark and one of the word elements of the international registration are almost identical.  Therefore, taking into account the assessment of the signs as a whole, there is a likelihood of confusion in the mind of the relevant public, in particular the Italian-speaking public, a conclusion which is reinforced by the fact that the relevant public may perceive the sign which is the subject of the international registration as an “umbrella” mark.

In light of the foregoing, the applicant’s single plea in law must be rejected and the appeal must be dismissed in its entirety.

JUDGMENT OF THE GENERAL COURT (Sixth Chamber) 2 February 2022. Case T‑202/21