Decision on Opposition No B 2 533 258 page: 3 of 7
in pharmacies and, therefore, differ in their distribution channels from the opponent’s
goods. Moreover, they do not have the same manufacturers, since the contested
goods are produced by pharmaceutical companies and the opponent’s goods are
produced by tobacco companies. Therefore, contrary to the opponent’s argument,
the goods under comparison are considered dissimilar.
When comparing the remaining contested goods in Class 5 with the opponent’s
goods in Class 34, the Opposition Division finds them dissimilar. The contested
goods are in the pharmaceutical and sanitary fields, while those of the opponent are
in the tobacco field. Their natures, end users and methods of use are different.
Furthermore, these goods are not in competition with or complementary to each
other. Moreover, the origins of the goods, their relevant distribution channels and
their sales outlets are also completely different.
Contested goods in Class 34
Liquids for electronic cigarettes, flavourings for liquids for electronic cigarettes or
personal vaporisers are identically contained in both lists of goods (including
Nicotine bases are liquid nicotine solutions that are usually mixed with other liquids
for use in electronic cigarettes. These goods and the opponent’s electronic cigarette
liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette
cartridges can be produced and/or sold by the same undertaking and target the same
purchasing public. Therefore, these sets of goods can have the same producers and
relevant public. In addition, they are complementary. Therefore, they are similar to a
The contested electronic cigarettes; electronic shisha pipes, electronic pipes, mods
(optimised electronic cigarettes), electronic cigars cannot be used without the
opponent’s electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form
used to refill electronic cigarette cartridges. These goods are complementary.
Furthermore, they target the same consumers, who will look for them in the same
retail outlets and could expect that such goods to be manufactured under the control
of the same entity. Therefore, they are similar.
Contested services in Class 35
Similarity between the retail and wholesale 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.
The contested retailing and wholesaling of electronic cigarettes and tobacco-free
cigarettes for medical purposes and the opponent’s electronic cigarette liquid (e-
liquid) comprised of flavorings in liquid form used to refill electronic cigarette
cartridges in Class 34 are not similar. 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. The object of wholesale trade is similar, except that, in this case, the
relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02,
Praktiker, EU:C:2005:425). This is not the purpose of goods. Furthermore, goods and
services have different methods of use and are neither in competition nor