In early 2022, the German multinational automotive giant, Daimler Ag filed a third-party opposition against Vivo Mobile Communication Co Ltd’s trademark application for the mark “VIVO” on the grounds of similarity. Daimler Ag alleged that the mark “VIVO” was similar one of the trademarks “VITO” owned by them under Class 12, which is the classification for vehicles or vehicles-related goods.

 

Daimler Ag contended that they have enjoyed substantial sales throughout their long-standing and extensive use of their highly distinctive mark “VITO”. They contended that as both marks are similar in terms of visual, aural and conceptual, consumers are likely to be mistakenly believe that there is an economic link between both marks or parties.

 

Although both marks are visually similar to some extent, that being the length, structure and similarity of letters in the marks, there are distinctions between the smooth “V” sound and the harsh “T” sound of the respective marks. The mark “VITO” has also not been used alone and has always been used in close proximity with the word “Mercedes-Benz”, and therefore has not acquired distinctiveness or pertained a badge of origin on its own.

 

With that, Principal Assistant Registrar found that it is very unlikely that the consumers would confuse the origins of these two marks as although both marks contained words of Italian origin and has similar meaning in Latin, that is “VITO” having the meaning of “life”; and “VIVO” having the meaning “to live”, the average consumer would not perceive them as words of Italian origin specifically, or even be aware of its similar meanings in Latin.