One man's mark is another's descriptive appendage; What VITA FIT really says

The Court of First Instance gave its ruling this morning in Case T‑434/05, Gateway, Inc. v OHIM, Fujitsu Siemens Computers GmbH. Fujitsu Siemens applied to register the words ACTIVY Media Gateway as a Community trade mark for numerous goods and services in Classes 9, 35, 38 and 42. Gateway opposed, citing a vast flotilla of registered and unregistered marks containing the word GATEWAY, alleging (i) a likelihood of confusion, (ii) dilution of its well known mark and (iii) earlier unregistered rights of more than local significance that would prevent use of the applied-for mark.

The Opposition Division -- basing its decision solely on the UK registration of GATEWAY for the sake of convenience -- refused the opposition, holding that there was no likelihood of confusion on the ground that the marks were neither identical not similar. The Board of Appeal dismissed Gateway's appeal: it didn't matter how great was the reputation of Gateway's earlier marks if they weren't sufficiently similar in the first place. Gateway appealed further to the CFI, which also dismissed the appeal. Said the CFI, consumers of the relevant goods and services would regard the word "Gateway" in ACTIVY Media Gateway as being no more than a descriptive component of a complex mark, the dominant element of which was the word ACTIVY itself. within the context of the application, "Gateway" could not be said to perform an independent distinctive role of the sort envisaged by the ECJ in Case C‑120/04 Medion [2005] ECR I‑8551 (see IPKat comment here).

Says the IPKat, this decision seems fair enough -- it's the sort of stuff a trade mark owner can expect to face on a regular basis when he opts for a word mark that has a descriptive, allusive or metaphorical flavour to it. Merpel's more distressed by the thought that anyone should have come up with ACTIVY as part of a trade mark. To this English reader, at least, it looks more like a typo than anything else.


The IPKat is delighted to discover that his new-found talent for modern European languages has not deserted him. Last week he posted this item on the German text of a Community trade mark opposition appeal to the Court of First Instance in Rechtssache T‑111/06 Wesergold Getränkeindustrie GmbH & Co. KG v Harmonisierungsamt für den Binnenmarkt; Lidl Stiftung & Co. KG. (the VITA FIT/VITAFIT case).

Right: now that he has started to master the lingo, the IPKat looks forward to making further acquaintance with German culture.

Now his learned friend Kathrin Vowinckel -- who speaks German even better than the IPKat does -- writes to say:

"You are correct that both the Opposition Division and the BoA have upheld the opposition.

The BoA primarily based its decision on the following points : (1) the goods covered by both marks are identical; (2) there are visual differences between the marks, because the older mark was a mere word mark whereas the application included word and device elements, even if the device elements only play a secondary role; (3) the marks are phonetically similar, because a normal consumer paying average attention will hardly notice the difference between "vitafit" and "vitalfit"; (4) the older mark, irrespective of its narrow scope of protection, was not purely descriptive. Even though the words "Vita" and "fit" are words used in the German language, their combination "vitafit" does not have any clear meaning in German. Rather, it is a mark which implies healthy life and performance, but it does not directly describe the relevant goods or their characteristics. (5) Finally, the Appeal Division of the German Trade Marks Office had ruled that the marks were not confusingly similar, but the BoA did not feel bound by this decision - moreover, as it was not a final decision (it seems that the German Patent Court in the meantime reversed the decision of the German Trade Marks Office).

The CFI agrees. The goods covered by the relevant marks were considered identical, and the BoA was correct to compare, in particular the word elements "vitafit" and "vital-fit" without having to take account of the "&" and its pronounciation as "und" (= "and") because the average German consumer will see this device element as being of low distinctiveness (the Court does not really say "distinctiveness" - it says that the device element will have a low formative effect on the mark).

The rest of the decision merely deals with procedural matters relating to the right to be heard and related rights".