OPPOSITION No B 2 231 648

Top Shop International SA, Via Ferruccio Pelli 13, 6900 Lugano, Switzerland (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

a g a i n s t

VCO Ventures GmbH, Sierichstraße 6, 22301 Hamburg, Germany (applicant), represented by Bryan Cave LLP, Hanseatic Trade Center, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative).

On 02/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 231 648 is partially upheld, namely for the following contested goods and services:

Class 3: After-sun gels (cosmetics); after-sun oils (cosmetics); aftershave milk; aftershave preparations; after-shave balms; after-shave gel; aftershave lotions; aloe vera preparations for cosmetic purposes; amber [perfume]; anti-aging cream; antibacterial face washes (non-medicated); anti-bacterial soap; anti-wrinkle cream; perfume; oils for perfumes and scents; perfumery; perfumery, essential oils, cosmetics, hair lotions; perfumed soaps; parfums; roll-on deodorants (cosmetics); soaps for body care; food flavourings [essential oils]; aromatics for fragrances; aromatics for perfumes; aromatics [essential oils]; flavorings for beverages [essential oils]; aromatherapy preparations; aromatic oils for the bath; aromatherapy creams; aromatherapy lotions; bath gel; non-medicated bath concentrates; bath crystals; bath lotions; bath oils; bath oils for hair care; bath beads; non-medicated bath beads; bath powder; bath salts; bath salts, not for medical purposes; bath foam; bath foams (non-medicated- ); bath soaps; bath bombs; cosmetic preparations for baths; bath herbs; foaming bath gels; foaming bath gels for care of the body; shower creams; shower gels; shower gels; foams for use in the shower; shower foams; shower soap; beauty care preparations in the form of creams; perfumed creams; facial cream; face creams; face creams for cosmetic use; facial lotions; face masks; facial cleansing milk; facial cleansing preparations; facial cleansers [cosmetic]; facial tonics (cosmetics); facial toners (cosmetics); facial wash (cosmetics); face wash; facial wipes impregnated with cosmetics; cleansing facial masks; face powder; facial packs; facial creams [cosmetic]; facial scrubs [cosmetic]; cosmetic face powders; loose face powder; facial moisturisers [cosmetic]; facial makeup; non-medicated creams for the face; face scrubs (non-medicated- ); non-medicated face powder; facial scrubs; face rouge; facial beauty masks; hair relaxing preparations; hair moisturisers (beauty care products); gels for use on the hair; hair balsam (non-medicated); hair cream; dental bleaching gels; cosmetic tooth cleaning lotions; non-medicated dentifrices; non medicated dental rinses; tooth paste; dental care preparations; dentifrices; nail cream; cuticle creams; cuticle oil; cuticle conditioners; nail strengtheners; nail varnish for cosmetic purposes; nail varnish remover; nail polish remover (cosmetics); essential oils for the care of the skin; creams (non-medicated) for cleaning the skin; creams for firming the skin; skin fresheners; essences for skin care; skin moisturizer masks; skin moisturizer; skin cream; skin masks (cosmetics); skin care creams, other than for medical use; skin care lotions (cosmetics); cosmetic preparations for skin care; skin cleansing cream; skin cleansing lotion; skin cleaning preparations; cloths or tissues impregnated with a skin cleanser; cosmetics for use on the skin; exfoliants for the care of the skin; exfoliants for the cleansing of the skin; cleansing milks for skin care; barrier creams for the skin; eye cream; eye gels; eye sticks; eye stylers; cosmetic eye gels; eye lotions; eye creams, not for medical purposes; deodorants for the feet; non-medicated foot creams; non-medicated foot care preparations; non-medicated foot powder; non-medicated foot balms; hair removal creams; cosmetic sun blocking lipsticks; cosmetic sun-tanning preparations; sunscreen creams; sun screen creams (cosmetics); sunscreen lotions; sunscreen preparations; sun-tanning preparations [cosmetics]; dental bleaching gels; tooth polish; tooth powders; teeth cleaning lotions; tooth cleaning preparations; hand cream; hand creams; hand lotions; hand oils (non-medicated- ); hand barrier creams; soaps for the hand; hand washing preparations; non-medicated lotions for application to the hands; cleaning preparations for hands; bronzing gels (cosmetics); bronzers (cosmetics); cosmetics; cosmetics all for sale in kit form; cosmetic kits; cosmetic pads; cosmetic pencils; sun oils (cosmetics); sun blocks in the form of oils (cosmetics); natural oils for cosmetic purposes; natural oils for perfumes; massage oil; massage creams, not medicated.

Class 5: Dietary supplements and nutritional supplements; functional foodstuffs for use as food supplements; mineral food supplements; nutritional supplement drinks; nutritional supplements; nutritional supplements; vitamin preparations in the nature of food supplements; food supplements consisting mainly of vitamins; food supplements consisting mainly of minerals; effervescent vitamin tablets; vitamin and mineral supplements; vitamin drinks; mixed vitamin preparations; vitamin preparations; vitamin tablets; vitamin supplements; mineral drinks (medicated-); mineral salts for baths; mineral food supplements for human consumption; mineral supplements for foodstuffs; salts for mineral water baths; hygienic bandages.

Class 10: Orthopedic belts; gloves for medical purposes; blankets, electric, for medical purposes; heating pads, electric, for medical purposes; hearing aids for the deaf; cushions for medical purposes; pads [pouches] for preventing pressure sores on patient bodies; soporific pillows for insomnia; stockings for varices; draw-sheets for sick beds; crutches; lamps for medical purposes; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; massage apparatus; esthetic massage apparatus; gloves for massage; medical apparatus and instruments; physical exercise apparatus, for medical purposes; ear picks; ear plugs [ear protection devices]; orthopedic articles; arch supports for footwear; supportive bandages; knee bandages, orthopedic; orthopedic footwear; orthopedic soles; balling guns; artificial limbs; pulse meters; teats; supports for flat feet; containers especially made for medical waste; beds, specially made for medical purposes; cases fitted for medical instruments; furniture especially made for medical purposes; boots for medical purposes; hot air therapeutic apparatus; thermal packs for first aid purposes; thermometers for medical purposes; ultraviolet ray lamps for medical purposes; maternity belts; hypogastric belts; bed vibrators; vibromassage apparatus; water beds for medical purposes; resuscitation apparatus.

Class 21: Make-up removing appliances; eyebrow brushes; brushes; electric brushes, except parts of machines; electric combs; abrasive sponges for scrubbing the skin; combs; large-toothed combs for the hair; cosmetic utensils; nail brushes; powder compacts; powder puffs; shaving brushes; shaving brush stands; perfume burners; toilet utensils; toilet cases; toothbrushes; toothbrushes, electric; floss for dental purposes.

Class 25: Swimsuits; bathing trunks; bath robes; bathing caps; bath sandals; bath slippers; leg warmers; clothing; visors [headwear]; brassieres; dresses; inner soles; mittens; football boots; belts [clothing]; clothing for gymnastics; gymnastic shoes; half-boots; scarfs; gloves [clothing]; shirts; trousers; girdles; hats; jackets [clothing]; hoods [clothing]; headgear for wear; short-sleeve shirts; clothing of leather; leggings [trousers]; coats; caps [headwear]; outerclothing; ear muffs [clothing]; combinations [clothing]; slippers; parkas; pullovers; pyjamas; cyclists’ clothing; waterproof clothing; skirts; sandals; breeches for wear; lace boots; shoes; footwear; smocks; ski gloves; ski boots; underpants; socks; boots for sports; boots; headbands [clothing]; studs for football boots; beach shoes; stockings; sweat-absorbent stockings; sweaters; tee-shirts; jumper dresses; knitwear [clothing]; singlets; anti-sweat underwear; pants; wet suits for water-skiing.

Class 28: Baseball gloves; billiard balls; billiard cues; billiard tables; bob-sleighs; body boards; body-building apparatus; archery implements; boxing gloves; skating boots with skates attached; electronic targets; elbow guards [sports articles]; exercisers [expanders]; stationary exercise bicycles; shuttlecocks; machines for physical exercises; weight lifting belts [sports articles]; golf gloves; golf clubs; golf bags, with or without wheels; appliances for gymnastics; hang gliders; bar-bells; hockey sticks; landing nets for anglers; climbers’ harness; knee guards [sports articles]; masts for sailboards; nets for sports; punching bags; in-line roller skates; strings for rackets; shin guards [sports articles]; batting gloves [accessories for games]; ice skates; snowshoes; protective paddings [parts of sports suits]; swimming kick boards; flippers for swimming; water wings; swimming belts; swimming jackets; skateboards; ski bindings; skis; wax for skis; snowboards; bags especially designed for skis and surfboards; balls for games; playing balls; rackets; starting blocks for sports; sailboards; surf boards; surf skis; tennis ball throwing apparatus; tennis nets; tables for table tennis; clay pigeons [targets]; clay pigeon traps; spring boards [sports articles]; harness for sailboards; waterskis; darts.

Class 35: Wholesaling and retailing, in particular mail order (including online), in the fields of fitness and gymnastic apparatus, sportswear, sports nutrition, dietary supplements, literature and electronic media relating to fitness, products for massaging and relaxing the body, candles, joss sticks, scented candles, heated pads, hot water bottles, lamps, bathroom furniture, bathroom accessories, leisurewear, literature and electronic media relating to wellness, products for promoting physical well-being, products for assisting physical mobility, products for promoting health, electric apparatus for light therapy, health shoes, mattresses, products for health sleep, clinical thermometers, sphygmomanometers, bicycles, electric bicycles, collapsible and folding bicycles, products for improving drinking water quality, for household use, foodstuffs, literature and electronic media relating to health foods, soaps, perfumery, cosmetics, sunscreen preparations, products for dental care and for cleaning the teeth, natural cosmetics, jewellery, perfume-free cosmetics, orthopaedic aids, apparatus and aids for medical purposes, products for personal hygiene, hearing protectors, physiotherapy apparatus, hearing aids, walking aids, artificial limbs, special-purpose beds for medical purposes, special-purpose furniture for medical purposes, furniture, household goods, products for home design, clothing, sports apparatus, sporting articles, products for recreation.

2. Community trade mark application No 11 583 515 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 11 583 515. The opposition is based on international trade mark registration designating the European Union No 1 058 717. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

In the notice of opposition, the opponent based its opposition on the grounds of Article 8(1)(b) and 8(5) CTMR. In its observations of 24/07/2015, the opponent stated that the opposition would no longer continue on the basis of Article 8(5) CTMR.

Therefore, the present opposition will be examined only on the grounds of Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

The goods and services on which the opposition is based are the following:

Class 3: Cosmetics excluding cosmetics for diabetes treatment; cosmetic products and preparations for slimming purposes; cosmetic preparations for use as aids to slimming; slimming products; essential oils excluding essential oils for diabetes treatment.

Class 5: Food supplements for medical use, all not for diabetes treatment; dietary food supplements; nutritional food supplements for slimming purposes; dietary preparations for slimming purposes; pharmaceutical preparations for slimming purposes; diet pills and pills for slimming; dietetic food excluding dietetic food for diabetes treatment; food and dietary supplements for sports and performance enhancement.

Class 28: Apparatus for achieving physical fitness; fitness apparatus; exercise machines; indoor and outdoor fitness exercise machines.

Class 30: Dietary preparations for slimming purposes (cosmetics) made from plants and cereals and not for medical use; slimming products (food) made from plants and cereals, other than for medical use; food supplements made from plants and cereals.

Class 31: Fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

Class 35: E-Commerce services, namely retail services in the fields of medicine, health, genetics, genetic testing and pharmaceutical and medical products.

Class 38: Application service provider (ASP) services for providing software for enabling access to multiple databases that contain aggregated results of genotyping (telecommunication); application service provider (ASP) services for providing software for use in data management, data recording, data analysis, report generation, user identification, and membership identification (telecommunication); all in the fields of genetics and genetic testing; providing access to an online resource center consisting of articles and papers in the fields of genetic testing and genotype technologies; providing access to a website featuring online publications in the nature of articles, journals, brochures, leaflets, guides and manuals in the fields of genetic testing and genotype technologies; providing access to online computer databases featuring information based on aggregated results of genotyping.

Class 41: Dietary education services, education and instruction regarding diet and dieting excluding services in connection with diabetes treatment; provision of education and training, including instruction related to slimming and physical fitness excluding services in connection with diabetes treatment; physical fitness consultation, other than for medical purposes; physical fitness education relating to returning to form, physical instruction and training services; providing fitness and exercise facilities; providing educational health and fitness information excluding services in connection with diabetes treatment; providing online publications in the nature of articles, journals, brochures, leaflets, guides and manuals in the fields of genetic testing and genotype technologies on a website excluding services in connection with diabetes treatment.

Class 42: Providing an internet platform, consisting of articles and papers in the fields of genetic testing and genotype technologies; providing scientific analysis and informational reports based upon results of laboratory testing in the field of genetics; providing online information, on a website, based on aggregated results of genotyping; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry.

The contested goods and services are the following:

Class 3: After-sun gels (cosmetics); After-sun oils (cosmetics); Aftershave milk; Aftershave preparations; After-shave balms; After-shave gel; Aftershave lotions; Aloe vera preparations for cosmetic purposes; Amber [perfume]; Anti-aging cream; Antibacterial face washes (non-medicated); Anti-bacterial soap; Anti-wrinkle cream; Perfume; Oils for perfumes and scents; Perfumery; Perfumery, essential oils, cosmetics, hair lotions; Perfumed soaps; Parfums; Roll-on deodorants (cosmetics); Soaps for body care; Food flavourings [essential oils]; Aromatics for fragrances; Aromatics for perfumes; Aromatics [essential oils]; Flavorings for beverages [essential oils]; Aromatherapy preparations; Aromatic oils for the bath; Aromatherapy creams; Aromatherapy lotions; Bath gel; Non-medicated bath concentrates; Bath crystals; Bath lotions; Bath oils; Bath oils for hair care; Bath beads; Non-medicated bath beads; Bath powder; Bath salts; Bath salts, not for medical purposes; Bath foam; Bath foams (non-medicated- ); Bath soaps; Bath bombs; Cosmetic preparations for baths; Bath herbs; Foaming bath gels; Foaming bath gels for care of the body; Shower creams; Shower gels; Shower gels; Foams for use in the shower; Shower foams; Shower soap; Beauty care preparations in the form of creams; Perfumed creams; Facial cream; Face creams; Face creams for cosmetic use; Facial lotions; Face masks; Facial cleansing milk; Facial cleansing preparations; Facial cleansers [cosmetic]; Facial tonics (cosmetics); Facial toners (cosmetics); Facial wash (cosmetics); Face wash; Facial wipes impregnated with cosmetics; Cleansing facial masks; Face powder; Facial packs; Facial creams [cosmetic]; Facial scrubs [cosmetic]; Cosmetic face powders; Loose face powder; Facial moisturisers [cosmetic]; Facial makeup; Non-medicated creams for the face; Face scrubs (non-medicated- ); Non-medicated face powder; Facial scrubs; Face rouge; Facial beauty masks; Hair relaxing preparations; Hair moisturisers (beauty care products); Gels for use on the hair; Hair balsam (non-medicated); Hair cream; Dental bleaching gels; Cosmetic tooth cleaning lotions; Non-medicated dentifrices; Non medicated dental rinses; Tooth paste; Dental care preparations; Dentifrices; Nail cream; Cuticle creams; Cuticle oil; Cuticle conditioners; Nail strengtheners; Nail varnish for cosmetic purposes; Nail varnish remover; Nail polish remover (cosmetics); Essential oils for the care of the skin; Creams (non-medicated) for cleaning the skin; Creams for firming the skin; Skin fresheners; Essences for skin care; Skin moisturizer masks; Skin moisturizer; Skin cream; Leather (creams for -); Skin masks (cosmetics); Skin care creams, other than for medical use; Skin care lotions (cosmetics); Cosmetic preparations for skin care; Skin cleansing cream; Skin cleansing lotion; Skin cleaning preparations; Cloths or tissues impregnated with a skin cleanser; Cosmetics for use on the skin; Exfoliants for the care of the skin; Exfoliants for the cleansing of the skin; Cleansing milks for skin care; Barrier creams for the skin; Eye cream; Eye gels; Eye sticks; eye stylers; Cosmetic eye gels; Eye lotions; Eye creams, not for medical purposes; Deodorants for the feet; Non-medicated foot creams; Non-medicated foot care preparations; Non-medicated foot powder; Non-medicated foot balms; Hair removal creams; Cosmetic sun blocking lipsticks; Cosmetic sun-tanning preparations; Sunscreen creams; Sun screen creams (cosmetics); Sunscreen lotions; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Dental bleaching gels; Tooth polish; Tooth powders; Teeth cleaning lotions; Tooth cleaning preparations; Hand cream; Hand creams; Hand lotions; Hand oils (Non-medicated- ); Hand barrier creams; Soaps for the hand; Hand washing preparations; Non-medicated lotions for application to the hands; Cleaning preparations for hands; Bronzing gels (cosmetics); Bronzers (cosmetics); Cosmetics; Cosmetics all for sale in kit form; Cosmetic kits; Cosmetic pads; Cosmetic pencils; Sun oils (cosmetics); Sun blocks in the form of oils (cosmetics); Natural oils for cosmetic purposes; natural oils for perfumes; Massage oil; Massage creams, not medicated.

Class 5: Dietary supplements and nutritional supplements; Functional foodstuffs for use as food supplements; Mineral food supplements; Nutritional supplement drinks; Nutritional supplements; Nutritional supplements; Vitamin preparations in the nature of food supplements; Food supplements consisting mainly of vitamins; Food supplements consisting mainly of minerals; Effervescent vitamin tablets; Vitamin and mineral supplements; vitamin drinks; Mixed vitamin preparations; Vitamin preparations; Vitamin tablets; Vitamin supplements; Mineral drinks (medicated-); Mineral salts for baths; Mineral food supplements for human consumption; Mineral supplements for foodstuffs; Salts for mineral water baths; Hygienic bandages.

Class 10: Orthopedic belts; Gloves for medical purposes; Blankets, electric, for medical purposes; Heating pads, electric, for medical purposes; Hearing aids for the deaf; Cushions for medical purposes; Pads [pouches] for preventing pressure sores on patient bodies; Soporific pillows for insomnia; Stockings for varices; Draw-sheets for sick beds; Crutches; Lamps for medical purposes; Air pillows for medical purposes; Air cushions for medical purposes; Air mattresses, for medical purposes; Massage apparatus; Esthetic massage apparatus; Gloves for massage; Medical apparatus and instruments; Physical exercise apparatus, for medical purposes; Ear picks; Ear plugs [ear protection devices]; Orthopedic articles; Arch supports for footwear; Supportive bandages; Knee bandages, orthopedic; Orthopedic footwear; Orthopedic soles; Balling guns; Artificial limbs; Pulse meters; Teats; Supports for flat feet; Containers especially made for medical waste; Beds, specially made for medical purposes; Cases fitted for medical instruments; Furniture especially made for medical purposes; Boots for medical purposes; Hot air therapeutic apparatus; Thermal packs for first aid purposes; Thermometers for medical purposes; Ultraviolet ray lamps for medical purposes; Maternity belts; Hypogastric belts; Bed vibrators; Vibromassage apparatus; Water beds for medical purposes; Resuscitation apparatus.

Class 20: Filing cabinets; Tea carts; Medicine cabinets; Bamboo; Bamboo curtains; Benches [furniture]; Beds; Bedsteads of wood; Bedding, except linen; Picture frames; Flower-stands [furniture]; Vats, not of metal; Book rests [furniture]; Library shelves; Sideboards; Dinner wagons [furniture]; Office furniture; Busts of wood, wax, plaster or plastic; Decorations of plastic for foodstuffs; Bins of wood or plastic; Statuettes of wood, wax, plaster or plastic; Freestanding partitions [furniture]; Plate racks; Hand-held mirrors [toilet mirrors]; Towel closets [furniture]; Towel dispensers, fixed, not of metal; Stag antlers; Garment covers [storage]; Kennels for household pets; Fireguards; Bins, not of metal; High chairs for babies; Cushions; Pet cushions; Coat hangers; Clothes hooks, not of metal; Coatstands; Chests of drawers; Pillows; Bolsters; Head-rests [furniture]; Hampers [baskets]; Baskets, not of metal; Wickerwork; Works of art, of wood, wax, plaster or plastic; Playpens for babies; Beds for household pets; Easy chairs; Air pillows, not for medical purposes; Air cushions, not for medical purposes; Air mattresses, not for medical purposes; Massage tables; Mattresses; Furniture; Furniture of metal; Mobiles [decoration]; Screens [furniture]; Armchairs; Picture frame brackets; Rattan; Racks [furniture]; Stools; Umbrella stands; Sleeping bags for camping; Cupboards; Writing desks and desks; Covers for clothing [wardrobe]; Trolleys [furniture]; Sofas; Meat chests, not of metal; Mirrors [looking glasses]; Spring mattresses; Flower-pot pedestals; Statues of wood, wax, plaster or plastic; Seats; Trays, not of metal; Tables; Tables of metal; Table tops; Dressing tables; Silvered glass [mirrors]; Pulleys of plastics for blinds; Curtain rods; Baby changing platforms; Washstands [furniture]; Water beds, not for medical purposes; Baby changing mats; Cots; Wind chimes [decoration].

Class 21: Dustbins; Make-up removing appliances; Dusting apparatus, non-electric; Eyebrow brushes; Mugs; Basins [receptacles]; Brooms; Holders for flowers and plants [flower arranging]; Window-boxes; Flower pots; Cloth for washing floors; Bread boards; Ironing boards; Brushes; Toilet brushes; Busts of porcelain, ceramic, earthenware or glass; China ornaments; Hot pots, not electrically heated; Pails; Ice pails; Electric brushes, except parts of machines; Electric combs; Statuettes of porcelain, ceramic, earthenware or glass; Strainers for household purposes; Flasks; Bottles; Ice cube molds; Containers for household or kitchen use; Glass [receptacles]; Painted glassware; Napkin holders; Utensils for household purposes; Gloves for household purposes; Abrasive sponges for scrubbing the skin; Heat-insulated containers; Vacuum bottles; Coffee services [tableware]; Combs; Large-toothed combs for the hair; Jugs; Decanters; Ceramics for household purposes; Candle extinguishers; Clothing stretchers; Cooking utensils, non-electric; Cosmetic utensils; Crystal [glassware]; Kitchen containers; Kitchen utensils; Cooking pot sets; Food cooling devices, containing heat exchange fluids, for household purposes; Refrigerating bottles; Isothermic bags; Works of art of porcelain, ceramic, earthenware or glass; Candlesticks; Shakers; Water apparatus for cleaning teeth and gums; Chamber pots; Nail brushes; Fruit cups; Boxes for dispensing paper towels; Waste paper baskets; Perfume sprayers; Porcelain ware; Powder compacts; Powder puffs; Cleaning instruments, hand-operated; Scouring pads; Rags for cleaning; Sprinklers; Shaving brushes; Shaving brush stands; Perfume burners; Beaters, non-electric; Basins [bowls]; Cutting boards for the kitchen; Brushes for footwear; Shoe trees [stretchers]; Dishes; Sponges for household purposes; Soap boxes; Soap holders; Soap dispensers; Vessels of metal for making ices and iced drinks; Towel rails and rings; Statues of porcelain, ceramic, earthenware or glass; Dusting cloths [rags]; Feather-dusters; Trays for domestic purposes; Cups; Tea caddies; Teapots; Tea cosies; Tea services [tableware]; Table plates; Toilet utensils; Toilet cases; Toilet paper holders; Toilet paper dispensers; Non-electric portable coldboxes; Drinking vessels; Drinking glasses; Ironing board covers, shaped; Saucers; Vases; Washing boards; Clothes-pegs; Drying racks for washing; Clothes racks, for drying; Washtubs; Kettles, non-electric; Toothbrushes; Toothbrushes, electric; Floss for dental purposes; Toothpicks; Toothpick holders; Kitchen mixers, non-electric; Indoor aquaria; Indoor terrariums [plant cultivation].

Class 25: Layettes [clothing]; Swimsuits; Bathing trunks; Bath robes; Bathing caps; Bath sandals; Bath slippers; Leg warmers; Clothing; Visors [headwear]; Brassieres; Dresses; Shower caps; Inner soles; Mittens; Football boots; Belts [clothing]; Clothing for gymnastics; Gymnastic shoes; Half-boots; Scarfs; Gloves [clothing]; Shirts; Trousers; Girdles; Hats; Jackets [clothing]; Hoods [clothing]; Pockets for clothing; Headgear for wear; Short-sleeve shirts; Clothing of leather; Leggings [trousers]; Coats; Dressing gowns; Caps [headwear]; Outerclothing; Ear muffs [clothing]; Combinations [clothing]; Slippers; Parkas; Pullovers; Pyjamas; Cyclists’ clothing; Waterproof clothing; Skirts; Sandals; Collar protectors; Sleep masks; Breeches for wear; Lace boots; Shoes; Footwear; Smocks; Ski gloves; Ski boots; Underpants; Socks; Boots for sports; Boots; Headbands [clothing]; Studs for football boots; Beach shoes; Stockings; Sweat-absorbent stockings; Sweaters; Tee-shirts; Jumper dresses; Knitwear [clothing]; Singlets; Anti-sweat underwear; Pants; Wet suits for water-skiing.

Class 28: Baseball gloves; Billiard balls; Billiard cues; Billiard tables; Bob-sleighs; Body boards; Body-building apparatus; Archery implements; Boxing gloves; Board games; Skating boots with skates attached; Electronic targets; Elbow guards [sports articles]; Exercisers [expanders]; Stationary exercise bicycles; Shuttlecocks; Machines for physical exercises; Parlor games; Weight lifting belts [sports articles]; Golf gloves; Golf clubs; Golf bags, with or without wheels; Appliances for gymnastics; Hang gliders; Bar-bells; Hockey sticks; Landing nets for anglers; Climbers’ harness; Knee guards [sports articles]; Masts for sailboards; Nets for sports; Plush toys; Quoits; Punching bags; Slides [playthings]; Scooters [toys]; In-line roller skates; Strings for rackets; Shin guards [sports articles]; Batting gloves [accessories for games]; Ice skates; Snowshoes; Protective paddings [parts of sports suits]; Swimming pools [play articles]; Swimming kick boards; Flippers for swimming; Water wings; Swimming belts; Swimming jackets; Skateboards; Ski bindings; Skis; Wax for skis; Snowboards; Bags especially designed for skis and surfboards; Balls for games; Games; Playing balls; Tables for indoor football; Rackets; Starting blocks for sports; Sailboards; Surf boards; Surf skis; Tennis ball throwing apparatus; Tennis nets; Tables for table tennis; Clay pigeons [targets]; Clay pigeon traps; Portable games with liquid crystal displays; Spring boards [sports articles]; Harness for sailboards; Waterskis; Swings; Darts; Flying discs [toys].

Class 35: Consultancy relating to sales promotion; Ordering services for others; Ordering services [for others]; Computer-aided advertising services; Computer based advertising; Electronic commerce, namely consumer consultancy via telecommunication networks for advertising and sales purposes; Preparing and placing of advertisements; Marketing and, advertising; Online advertising for others via electronic communications networks; Online advertising of goods and services on websites; On-line advertising on computer communication networks; On-line advertising on a computer network; Presentation of goods; Sales demonstrations (for others); Dissemination of advertising for others; Dissemination of advertising for others via an online communications network on the internet; Dissemination of advertising for others via the Internet; Promotion of goods and services (for others); Arrangement and conclusion of trading transactions for third parties; Arranging and processing of commercial transactions for third parties via telecommunication systems; Arranging and placing of advertisements; Arranging business transactions and consultancy relating thereto for the sale of goods and the providing of services; Arranging of business contacts; Arranging of commercial and business contacts; Arranging commercial transactions, for others; Brokering trade agreements, for others; Arranging of buying and selling contracts for third parties; Arranging contacts between buyers and sellers; Procurement of contracts for others; Arranging contracts for the buying and selling of goods; Negotiating agreements relating to the sale and purchase of goods; Procuring of contracts for the purchase and sale of goods; Advertising via electronic media and specifically the internet; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Operating online marketplaces for sellers and buyers of goods and services; Wholesaling and retailing, in particular mail order (including online), in the fields of fitness and gymnastic apparatus, sportswear, sports nutrition, dietary supplements, literature and electronic media relating to fitness, products for massaging and relaxing the body, candles, joss sticks, scented candles, heated pads, hot water bottles, lamps, bathroom furniture, bathroom accessories, leisurewear, literature and electronic media relating to wellness, products for promoting physical well-being, products for assisting physical mobility, products for promoting health, electric apparatus for light therapy, health shoes, mattresses, products for health sleep, clinical thermometers, sphygmomanometers, bicycles, electric bicycles, collapsible and folding bicycles, products for improving drinking water quality, for household use, foodstuffs, literature and electronic media relating to health foods, soaps, perfumery, cosmetics, sunscreen preparations, products for dental care and for cleaning the teeth, natural cosmetics, jewellery, perfume-free cosmetics, orthopaedic aids, apparatus and aids for medical purposes, products for personal hygiene, hearing protectors, physiotherapy apparatus, hearing aids, walking aids, artificial limbs, special-purpose beds for medical purposes, special-purpose furniture for medical purposes, furniture, household goods, products for home design, clothing, sports apparatus, sporting articles, products for recreation.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services (e-commerce services, namely retail services in the fields of medicine, health, genetics, genetic testing and pharmaceutical and medical products in Class 35) to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

For the purpose of the comparison, the Opposition Division finds it appropriate to group the contested goods in the following manner:

Contested goods in Class 3

1. Cosmetics (After-sun gels (cosmetics); After-sun oils (cosmetics); Aftershave milk; Aftershave preparations; After-shave balms; After-shave gel; Aftershave lotions; Aloe vera preparations for cosmetic purposes; Anti-aging cream; Anti-wrinkle cream; cosmetics, hair lotions; Roll-on deodorants (cosmetics); Aromatic oils for the bath; Aromatherapy creams; Aromatherapy lotions; Bath gel; Non-medicated bath concentrates; Bath crystals; Bath lotions; Bath oils; Bath oils for hair care; Bath beads; Non-medicated bath beads; Bath powder; Bath salts; Bath salts, not for medical purposes; Bath foam; Bath foams (non-medicated- ); Bath bombs; Cosmetic preparations for baths; Bath herbs; Foaming bath gels; Foaming bath gels for care of the body; Shower creams; Shower gels; Shower gels; Foams for use in the shower; Shower foams; Beauty care preparations in the form of creams; Perfumed creams; Facial cream; Face creams; Face creams for cosmetic use; Facial lotions; Face masks; Facial cleansing milk; Facial cleansing preparations; Facial cleansers [cosmetic]; Facial tonics (cosmetics); Facial toners (cosmetics); Facial wash (cosmetics); Face wash; Facial wipes impregnated with cosmetics; Cleansing facial masks; Face powder; Facial packs; Facial creams [cosmetic]; Facial scrubs [cosmetic]; Cosmetic face powders; Loose face powder; Facial moisturisers [cosmetic]; Facial makeup; Non-medicated creams for the face; Face scrubs (non-medicated- ); Non-medicated face powder; Facial scrubs; Face rouge; Facial beauty masks; Hair relaxing preparations; Hair moisturisers (beauty care products); Gels for use on the hair; Hair balsam (non-medicated); Hair cream; Nail cream; Cuticle creams; Cuticle oil; Cuticle conditioners; Nail strengtheners; Nail varnish for cosmetic purposes; Nail varnish remover; Nail polish remover (cosmetics); Creams (non-medicated) for cleaning the skin; Creams for firming the skin; Skin fresheners; Essences for skin care; Skin moisturizer masks; Skin moisturizer; Skin cream; Skin masks (cosmetics); Skin care creams, other than for medical use; Skin care lotions (cosmetics); Cosmetic preparations for skin care; Skin cleansing cream; Skin cleansing lotion; Skin cleaning preparations; Cloths or tissues impregnated with a skin cleanser; Cosmetics for use on the skin; Exfoliants for the care of the skin; Exfoliants for the cleansing of the skin; Cleansing milks for skin care; Barrier creams for the skin; Eye cream; Eye gels; Eye sticks; eye stylers; Cosmetic eye gels; Eye lotions; Eye creams, not for medical purposes; Deodorants for the feet; Non-medicated foot creams; Non-medicated foot care preparations; Non-medicated foot powder; Non-medicated foot balms; Hair removal creams; Cosmetic sun blocking lipsticks; Cosmetic sun-tanning preparations; Sunscreen creams; Sun screen creams (cosmetics); Sunscreen lotions; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Hand cream; Hand creams; Hand lotions; Hand oils (Non-medicated- ); Hand barrier creams; Bronzing gels (cosmetics); Bronzers (cosmetics); Cosmetics; Cosmetics all for sale in kit form; Cosmetic kits; Cosmetic pads; Cosmetic pencils; Sun oils (cosmetics); Sun blocks in the form of oils (cosmetics); Natural oils for cosmetic purposes; Massage oil; Massage creams, not medicated).

Cosmetics are substances used to enhance the appearance or odour of the human body. They include skin-care creams, lotions, powders, lipsticks, fingernail and toenail polish, eye and facial makeup, permanent waves, coloured contact lenses, hair colours, hair sprays and gels, deodorants, baby products, bath oils, bubble baths, bath salts, butters and many other types of products.

Therefore, the contested goods listed above are identical to the opponent’s cosmetics excluding cosmetics for diabetes treatment, either because the contested goods include them (in the case of cosmetics, listed twice), or because they overlap, as the contested goods are not intended for diabetes treatment (e.g. the contested cosmetics for use on the skin overlap with the opponent’s goods when they are not cosmetics for diabetes treatment).

2. Essential oils (Oils for perfumes and scents; essential oils, Food flavourings [essential oils]; Aromatics for fragrances; Aromatics for perfumes; Aromatics [essential oils]; Flavorings for beverages [essential oils]; Aromatherapy preparations; Essential oils for the care of the skin; natural oils for perfumes).

The contested goods listed above are identical to the opponent’s essential oils excluding essential oils for diabetes treatment, either because the contested goods include them (in the case of essential oils), or because they overlap when the contested goods are not intended for diabetes treatment (e.g. the contested aromatherapy preparations overlap with the opponent’s goods when they are not essential oils for diabetes treatment).

3. Dental care preparations (Dental bleaching gels; Cosmetic tooth cleaning lotions; Non-medicated dentifrices; Non medicated dental rinses; Tooth paste; Dental care preparations; Dentifrices; Dental bleaching gels; Tooth polish; Tooth powders; Teeth cleaning lotions; Tooth cleaning preparations).

These contested goods and the opponent’s cosmetics excluding cosmetics for diabetes treatment are similar to a high degree, since they may have the same producers, distribution channels and relevant public. Moreover, they may have the same purpose, that of beautifying a part of the human body or improving its odour.

4. Perfumery (Amber [perfume]; Perfume; Perfumery; Perfumery, Parfums).

These contested goods and the opponent’s cosmetics excluding cosmetics for diabetes treatment are similar to a high degree, since they may have the same producers, distribution channels and relevant public. Moreover, they may have the same purpose, that of enhancing the odour of the human body.

5. Soaps and goods for personal hygiene (Antibacterial face washes (non-medicated); Anti-bacterial soap, Perfumed soaps, Soaps for body care; Bath soaps; Shower soap, Soaps for the hand; Hand washing preparations; Non-medicated lotions for application to the hands; Cleaning preparations for hands).

Although these goods are used for personal hygiene, while the opponent’s cosmetics excluding cosmetics for diabetes treatment are intended to beautify the hair, skin or complexion, they may have the same producers, distribution channels and relevant public. Therefore, they are similar.

Finally, the contested leather (creams for-), which are leather and shoe cleaning and polishing preparations, are dissimilar to all the opponent’s goods and services, since they do not have the same producers, distribution channels or intended purpose. Furthermore, they are neither in competition nor complementary.

Contested goods in Class 5

The contested dietary supplements and nutritional supplements; functional foodstuffs for use as food supplements; mineral food supplements; nutritional supplement drinks; nutritional supplements; nutritional supplements; vitamin preparations in the nature of food supplements; food supplements consisting mainly of vitamins; food supplements consisting mainly of minerals; effervescent vitamin tablets; vitamin and mineral supplements; vitamin drinks; mixed vitamin preparations; vitamin preparations; vitamin tablets; vitamin supplements; mineral food supplements for human consumption; mineral supplements for foodstuffs are, in general, food supplements and dietary foodstuffs, and they overlap with the opponent’s food supplements for medical use, all not for diabetes treatment and dietary preparations for slimming purposes when they are not intended for diabetes treatment. Therefore, they are identical.

The contested mineral drinks (medicated-), mineral salts for baths; salts for mineral water baths are natural remedies that can usually be found in pharmacies. They overlap with the opponent’s pharmaceutical preparations for slimming purposes when they have the same purpose, that of helping the user to slim. Therefore, they are identical.

The contested hygienic bandages are similar to a low degree to the opponent’s cosmetics excluding cosmetics for diabetes treatment in Class 3, since they may share the similar purpose of hygiene, they are all found in pharmacies or other specialised shops and are often manufactured by the same companies. Also, they may have the same end-user (decision of 17/05/2012, R-1135/2011 – ‘CLEANIC Kindii (FIG. MARK)/CLINIQUE’, upheld by judgment of 13/05/2015, T‑364/12, ‘CLINIC KINDII’).

Contested goods in Class 10

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

The contested goods are, in general, medical apparatus, equipment and instruments and orthopaedic articles. In particular, the contested goods include furniture for medical purposes, that is, that serves for the actual treatment of a medical condition.

Therefore, the contested goods are similar to a low degree to the opponent’s e-commerce services, namely retail services in the fields of health and medical products in Class 35.

Contested goods in Class 20

The contested goods are, in general, furniture and interior décor articles, excluding, inter alia, such goods for laboratories or medical use. They are dissimilar to all the opponent’s goods and services, since they do not have the same purpose, distribution channels or target public. Furthermore, they are neither in competition nor complementary in the sense that the contested goods are indispensable or very important for the use of the opponent’s goods and services.

The opponent argues that the contested goods are necessary for the provision of its education and training services and provision of facilities in Class 41 and that, consequently, these goods and services are complementary and similar. Furthermore, it states that it has expanded its line of business to educate the public in the fields of health and fitness and relies on its own products to satisfy all the needs that arise from its education programme.

The Opposition Division does not agree with these arguments. Goods and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgment of 11/05/2011, T‑74/10, ‘Flaco’, paragraph 40; judgment of 21/11/2012, T‑558/11, ‘Artis’, paragraph 25; and judgment of 04/02/2013, T‑504/11, ‘Dignitude’, paragraph 44). Furthermore, complementarity is not conclusive on its own for a finding of similarity between goods and services, because, although a degree of complementarity may exist, goods and services may nonetheless be dissimilar.

The use the opponent refers to is use in conjunction, meaning that the goods and services are merely used together, whether by choice or convenience, and, on its own, without further relevant factors, this is not sufficient for a finding of similarity between these services and the contested goods (see decision of 16/12/2013, R 634/2013-4 – ‘ST LAB’, paragraph 20).

Regarding the opponent’s specific marketing strategy, it must be noted that it is not relevant, as the examination of the likelihood of confusion carried out by the Office is a prospective examination (judgment of 15/03/2007, C‑171/06 P, ‘Quantum’, paragraph 59; judgment of 22/03/2012, C‑354/11 P, ‘G’, paragraph 73; judgment of 21/06/2012, T‑276/09, ‘Yakut’, paragraph 58). Moreover, although the opponent might produce the contested goods and provide services in Class 41, it would be an exceptional case, as the producers/providers of these goods and services are usually different.

The contested goods and the opponent’s services in Class 41 have different natures, purposes, distribution channels and usual origins. Consequently, they are dissimilar and the opponent’s arguments must be set aside.

Contested goods in Class 21

For the purpose of the comparison, the Opposition Division finds it appropriate to group the contested goods in the following manner:

1. Cosmetic utensils (make-up removing appliances; eyebrow brushes; brushes; electric brushes, except parts of machines; electric combs; abrasive sponges for scrubbing the skin; combs; large-toothed combs for the hair; cosmetic utensils; nail brushes; powder compacts; powder puffs; shaving brushes; shaving brush stands; toilet utensils; toilet cases).

The contested goods are indispensable for the use of the opponent’s cosmetics excluding cosmetics for diabetes treatment in Class 3. Furthermore, they have the same purpose, distribution channels and relevant public. Therefore, they are similar to a high degree.

2. Perfume burners

The contested perfume burners are indispensable for the use of essential oils. These goods are often sold together in the same shops and target the same public. Therefore, the contested perfume burners and the opponent’s essential oils excluding essential oils for diabetes treatment in Class 3 are similar to a low degree.

3. Dental health care articles

As mentioned above, retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Consequently, the contested toothbrushes; toothbrushes, electric; floss for dental purposes are similar to a low degree to the opponent’s e-commerce services, namely retail services in the fields of health and pharmaceutical products in Class 35.

4. Household or kitchen utensils and containers, articles for cleaning purposes and glassware, porcelain and earthenware (Dustbins; Dusting apparatus, non-electric; Mugs; Basins [receptacles]; Brooms; Holders for flowers and plants [flower arranging]; Window-boxes; Flower pots; Cloth for washing floors; Bread boards; Ironing boards; Toilet brushes; Busts of porcelain, ceramic, earthenware or glass; China ornaments; Hot pots, not electrically heated; Pails; Ice pails; Statuettes of porcelain, ceramic, earthenware or glass; Strainers for household purposes; Flasks; Bottles; Ice cube molds; Containers for household or kitchen use; Glass [receptacles]; Painted glassware; Napkin holders; Utensils for household purposes; Gloves for household purposes; Heat-insulated containers; Vacuum bottles; Coffee services [tableware]; Jugs; Decanters; Ceramics for household purposes; Candle extinguishers; Clothing stretchers; Cooking utensils, non-electric; Crystal [glassware]; Kitchen containers; Kitchen utensils; Cooking pot sets; Food cooling devices, containing heat exchange fluids, for household purposes; Refrigerating bottles; Isothermic bags; Works of art of porcelain, ceramic, earthenware or glass; Candlesticks; Shakers; Water apparatus for cleaning teeth and gums; Chamber pots; Fruit cups; Boxes for dispensing paper towels; Waste paper baskets; Perfume sprayers; Porcelain ware; Cleaning instruments, hand-operated; Scouring pads; Rags for cleaning; Sprinklers; Beaters, non-electric; Basins [bowls]; Cutting boards for the kitchen; Brushes for footwear; Shoe trees [stretchers]; Dishes; Sponges for household purposes; Soap boxes; Soap holders; Soap dispensers; Vessels of metal for making ices and iced drinks; Towel rails and rings; Statues of porcelain, ceramic, earthenware or glass; Dusting cloths [rags]; Feather-dusters; Trays for domestic purposes; Cups; Tea caddies; Teapots; Tea cosies; Tea services [tableware]; Table plates; Toilet paper holders; Toilet paper dispensers; Non-electric portable coldboxes; Drinking vessels; Drinking glasses; Ironing board covers, shaped; Saucers; Vases; Washing boards; Clothes-pegs; Drying racks for washing; Clothes racks, for drying; Washtubs; Kettles, non-electric; Toothpicks; Toothpick holders; Kitchen mixers, non-electric; Indoor aquaria; Indoor terrariums [plant cultivation]).

The contested goods are dissimilar to all the opponent’s goods and services, since they do not have the same purpose, usual origin, distribution channels or target public.

The opponent argues that the goods in Classes 5, 30 and 31 of the earlier mark are similar to these contested goods. It refers to decision R 885/2009-2 – ‘MOKONA’ of 16/03/2010. This decision is not relevant to the present case, as it compares coffee in Class 30 with goods in Classes 11 and 21. In the present case, however, neither the opponent’s goods nor the contested goods explicitly contain coffee in Class 30 and the decision is not applicable by analogy to the opponent’s nutritional supplements in Class 5, slimming products in Class 30 and fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt in Class 31. In particular, although the opponent’s seeds in Class 31 include coffee, the general category of seeds in Class 31 is dissimilar to the contested goods in Class 21 because they do not coincide in a sufficient number of relevant factors, as explained above.

The opponent also argues that the contested articles for cleaning purposes are similar to the opponent’s exercise machines in Class 28 and, to support this argument, has submitted as Enclosure 7 two excerpts from Decathlon’s website, showing that exercise machines and articles for cleaning exercise machines are sold on the same website. This might be persuasive if the contested articles were limited to those for the purpose of cleaning exercise machines. However, this is not the case in these proceedings, and none of the contested goods is specifically for this purpose. Consequently, these contested goods target not only sports enthusiasts and professionals, but also the public at large, and they are not just available through the same channels. The contested goods and the opponent’s exercise machines in Class 28 differ in nature, purpose and usual origin. Therefore, they are dissimilar.

Contested goods in Class 25

The contested swimsuits; bathing trunks; bath robes; bathing caps; bath sandals; bath slippers; leg warmers; clothing; visors [headwear]; brassieres; dresses; inner soles; mittens; football boots; belts [clothing]; clothing for gymnastics; gymnastic shoes; half-boots; scarfs; gloves [clothing]; shirts; trousers; girdles; hats; jackets [clothing]; hoods [clothing]; headgear for wear; short-sleeve shirts; clothing of leather; leggings [trousers]; coats; caps [headwear]; outerclothing; ear muffs [clothing]; combinations [clothing]; slippers; parkas; pullovers; pyjamas; cyclists’ clothing; waterproof clothing; skirts; sandals; breeches for wear; lace boots; shoes; footwear; smocks; ski gloves; ski boots; underpants; socks; boots for sports; boots; headbands [clothing]; studs for football boots; beach shoes; stockings; sweat-absorbent stockings; sweaters; tee-shirts; jumper dresses; knitwear [clothing]; singlets; anti-sweat underwear; pants; wet suits for water-skiing include, on the one hand, sporting clothing, footwear and headgear (e.g. gymnastic shoes) and, on the other hand, the general categories of clothing, footwear, headgear for wear and specific items of clothing, footwear and headgear, which include sporting versions (e.g. footwear includes sporting footwear and skirts include tennis skirts).

Sports clothing, footwear and headgear are items of apparel designed specifically to be used when performing an activity or sport. The purpose and nature of these goods are different from those of the opponent’s apparatus for achieving physical fitness in Class 28. However, undertakings that manufacture apparatus for achieving physical fitness may also manufacture sports clothing, footwear and headgear. In this case, the distribution channels can be the same. Therefore, there is a low degree of similarity between the contested goods, which are or include sporting clothing, footwear and headgear, and the opponent’s apparatus for achieving physical fitness in Class 28.

The rest of the contested goods (layettes [clothing]; shower caps; pockets for clothing; dressing gowns; collar protectors; sleep masks) are dissimilar to all the opponent’s goods and services, since they do not have the same purpose, usual origin, distribution channels or target public. Furthermore, they are neither in competition nor complementary.

Contested goods in Class 28

For the purpose of the comparison, the Opposition Division finds it appropriate to group the contested goods in the following manner:

1. Machines and apparatus for physical fitness (body-building apparatus; exercisers [expanders]; stationary exercise bicycles; machines for physical exercises; appliances for gymnastics; bar-bells).

These goods are identical to the opponent’s apparatus for achieving physical fitness; exercise machines, either because they are synonymous (e.g. machines for physical exercises) or because the contested goods are included in the opponent’s goods (e.g. stationary exercise bicycles).

2. Other sporting articles and equipment (Baseball gloves; Billiard balls; Billiard cues; Billiard tables; Bob-sleighs; Body boards; Archery implements; Boxing gloves; Skating boots with skates attached; Electronic targets; Elbow guards [sports articles]; Shuttlecocks; Weight lifting belts [sports articles]; Golf gloves; Golf clubs; Golf bags, with or without wheels; Hang gliders; Hockey sticks; Landing nets for anglers; Climbers’ harness; Knee guards [sports articles]; Masts for sailboards; Nets for sports; Punching bags; In-line roller skates; Strings for rackets; Shin guards [sports articles]; Batting gloves [accessories for games]; Ice skates; Snowshoes; Protective paddings [parts of sports suits]; Swimming kick boards; Flippers for swimming; Water wings; Swimming belts; Swimming jackets; Skateboards; Ski bindings; Skis; Wax for skis; Snowboards; Bags especially designed for skis and surfboards; Balls for games; Playing balls; Rackets; Starting blocks for sports; Sailboards; Surf boards; Surf skis; Tennis ball throwing apparatus; Tennis nets; Tables for table tennis; Clay pigeons [targets]; Clay pigeon traps; Spring boards [sports articles]; Harness for sailboards; Waterskis; Darts).

The contested goods are similar to the opponent’s apparatus for achieving physical fitness, since they may have the same purpose, producers, distribution channels and target public.

3. Toys and playthings (Board games; Parlor games; Plush toys; Quoits; Slides [playthings]; Scooters [toys]; Swimming pools [play articles]; Games; Tables for indoor football; Portable games with liquid crystal displays; Swings; Flying discs [toys]).

The contested goods are dissimilar to all the opponent’s goods and services. They do not coincide with each other in a sufficient number of relevant factors (see judgment of 02/07/2015, T‑657/13, ‘ALEX’).

Contested services in Class 35

1. Wholesaling and retailing in different fields (Wholesaling and retailing, in particular mail order (including online), in the fields of fitness and gymnastic apparatus, sportswear, sports nutrition, dietary supplements, literature and electronic media relating to fitness, products for massaging and relaxing the body, candles, joss sticks, scented candles, heated pads, hot water bottles, lamps, bathroom furniture, bathroom accessories, leisurewear, literature and electronic media relating to wellness, products for promoting physical well-being, products for assisting physical mobility, products for promoting health, electric apparatus for light therapy, health shoes, mattresses, products for health sleep, clinical thermometers, sphygmomanometers, bicycles, electric bicycles, collapsible and folding bicycles, products for improving drinking water quality, for household use, foodstuffs, literature and electronic media relating to health foods, soaps, perfumery, cosmetics, sunscreen preparations, products for dental care and for cleaning the teeth, natural cosmetics, jewellery, perfume-free cosmetics, orthopaedic aids, apparatus and aids for medical purposes, products for personal hygiene, hearing protectors, physiotherapy apparatus, hearing aids, walking aids, artificial limbs, special-purpose beds for medical purposes, special-purpose furniture for medical purposes, furniture, household goods, products for home design, clothing, sports apparatus, sporting articles, products for recreation).

Retail/wholesale services related to specific goods are considered to be similar to retail services related to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison have the same nature, since both are retail/wholesale services (i.e. services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods), they have the same purpose (that of allowing consumers to conveniently satisfy different shopping needs) and they have the same method of use. Furthermore, depending on the goods that are retailed, they may have the same relevant public and distribution channels. Therefore, the contested services and the opponent’s e-commerce services, namely retail services in the fields of medicine, health, genetics, genetic testing and pharmaceutical and medical products are identical when the retailing services are provided in relation to identical goods (e.g. retailing, in particular mail order (including online), in the field of products for health sleep) and similar when the retailing/wholesale services are not provided in relation to identical goods (e.g. retailing, in particular mail order (including online), in the field of candles).

2. Advertising (Consultancy relating to sales promotion; Computer-aided advertising services; Computer based advertising; Electronic commerce, namely consumer consultancy via telecommunication networks for advertising and sales purposes; Preparing and placing of advertisements; Marketing and, advertising; Online advertising for others via electronic communications networks; Online advertising of goods and services on websites; On-line advertising on computer communication networks; On-line advertising on a computer network; Presentation of goods; Sales demonstrations (for others); Dissemination of advertising for others; Dissemination of advertising for others via an online communications network on the internet; Dissemination of advertising for others via the Internet; Promotion of goods and services (for others); Arranging and placing of advertisements; Advertising via electronic media and specifically the internet; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way).

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising is generally dissimilar to the goods or services being advertised.

Therefore, these services are dissimilar to all the opponent’s goods and services, since they have different providers/producers, distribution channels and target publics. Furthermore, they are neither in competition nor complementary in the sense that one is indispensable or very important for the other.

The opponent argues that the contested advertising services and the opponent’s e-commerce services, namely retail services in the fields of medicine, health, genetics, genetic testing and pharmaceutical and medical products are similar and refers to judgment of 07/07/2005, C‑418/02, ‘Praktiker’, and decision of 27/02/2007, B 731 234.

Even though previous decisions of the Office are not binding, as stated by the General Court in judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, however, the previous cases referred to by the opponent are not relevant to the present proceedings.

Judgment of 07/07/2005, C‑418/02, ‘Praktiker’, refers only to the concept of retail services and does not establish similarity between advertising services and retail services. Therefore, it is not relevant to the present proceedings.

Although the Office’s decision establishes similarity between these services, it has become obsolete and the Office has changed its practice (see decision of 10/09/2015, B 2 405 010). Consequently, the Opposition Division finds the contested advertising services and the opponent’s e-commerce services, namely retail services in the fields of medicine, health, genetics, genetic testing and pharmaceutical and medical products dissimilar.

3. Business administration (Ordering services for others; Ordering services [for others]; Arrangement and conclusion of trading transactions for third parties; Arranging and processing of commercial transactions for third parties via telecommunication systems; Arranging business transactions and consultancy relating thereto for the sale of goods and the providing of services; Arranging of business contacts; Arranging of commercial and business contacts; Arranging commercial transactions, for others; Brokering trade agreements, for others; Arranging of buying and selling contracts for third parties; Arranging contacts between buyers and sellers; Procurement of contracts for others; Arranging contracts for the buying and selling of goods; Negotiating agreements relating to the sale and purchase of goods; Procuring of contracts for the purchase and sale of goods; Operating online marketplaces for sellers and buyers of goods and services).

These services are included in the broad category of business administration and have the purpose of obtaining goods or services for third parties or to provide online platforms for trade. These services are dissimilar to all the opponent’s goods and services, since they have different providers/producers, distribution channels and target publics. Furthermore, they are neither in competition nor complementary in the sense that one is indispensable or very important for the other.

2. The signs

WELLNEO	Wellandeo
Earlier trade mark	Contested sign

The relevant territory is the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The same applies to international registrations designating the European Union.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Portuguese-, Romanian- and Spanish-speaking parts of the relevant public.

Visually, the signs are similar to the extent that they coincide in the sequences of letters ‘WELL-’ ‘n’ and ‘-eo’, present in both marks. Therefore, they coincide in seven out of the nine letters of the contested sign. However, they differ in the letters ‘a’ and ‘d’ in the middle of the contested sign, which have no counterparts in the earlier mark. As both signs are word marks, the use of upper or lower case letters is irrelevant, since only the words as such are protected.

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 letters ‘WELL-’, ‘n’ and ‘-eo’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sounds of the letters ‘a’ and ‘d’ in the middle of the contested sign, which have no counterparts in the earlier mark.

Conceptually, neither of the signs, as a whole, has a meaning for the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for the relevant parts of the public.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye‑catching) than other elements.

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.

In the notice of opposition the opponent claimed that its earlier mark has reputation. Although in its observations submitted on 24/07/2015 the opponent withdrew the opposition based on Article 8(5) CTMR, the Opposition Division considers that the claim of reputation must be taken into consideration in relation to be opposition based on Article 8(1)(b) CTMR.

However, for reasons of procedural economy, the evidence filed by the opponent does not have to be assessed in the present case (see below in ‘Global assessment’).

5. 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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical and health-care professionals.

The opponent argues that the goods and services at issue are purchased on a daily basis and therefore the degree of attention of the relevant public is relatively low or at most average. The Opposition Division does not agree that the degree of attention is low, since the goods and services at issue are, in general, cosmetics and cosmetic utensils, dietary supplements, medical apparatus and equipment, clothing, footwear and headgear, sporting equipment and wholesale and retail services, and there is no specific factor that would render the degree of attention of the relevant public lower than average.

The degree of attention will vary from average to high depending on the exact nature, purpose and price of the goods and services in question. For example, with regard to orthopaedic footwear in Class 10 or nutritional supplements in Class 5 even the non-professional public shows a higher degree of attention, regardless of whether these items are sold with or without a prescription, as these goods affect their state of health. On the other hand, in relation to other goods, for example cosmetics in Class 3, the degree of attention is, on the whole, average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Neither of the signs as a whole conveys any meaning, and they are visually and aurally similar to the extent that they coincide in the sequences of letters ‘WELL-’ and ‘-eo’, present identically at the beginning and end, respectively, of each sign, and in the letter ‘n’.

The differences appear in the middle of the signs and result from the additional letters ‘a’ and ‘d’ in the contested sign, which have no counterparts in the earlier sign. Although the average consumer of the category of goods concerned is deemed to be reasonably well informed, observant and circumspect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26). Furthermore, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Moreover, since the signs are word marks, there are no graphic features that could further separate them in the consumer’s minds.

The opponent argues that there is an actual overlap of the parties’ business activities in the European market, as the applicant has adopted a highly similar marketing strategy to the opponent, using an almost identical brand scheme. However, as mentioned in section a) of this decision, the particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (judgment of 15/03/2007, C‑171/06 P, ‘Quantum’, paragraph 59; judgment of 22/03/2012, C‑354/11 P, ‘G’, paragraph 73; judgment of 21/06/2012, T‑276/09, ‘Yakut’, paragraph 58).

Considering all the above, there is a likelihood of confusion on the part of the French‑, Portuguese-, Romanian- and Spanish-speaking parts of the public. As stated above in section b) 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. Therefore the opposition is partially well founded on the basis of the opponent’s international registration designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

In relation to the goods that are similar to a low degree, according to case-law, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 17). The high degree of similarity between the signs due to their identical first and last parts, and their having similar lengths, outweighs the low degree of similarity between some of the goods, and, therefore, a likelihood of confusion exists also in relation to them.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Belén IBARRA DE DIEGO

Irena LYUDMILOVA LECHEVA

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.