OPPOSITION No B 2 896 127

Virgin Enterprises Limited, The Battleship Building, 179 Harrow Road, London W2 6NB (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR (professional representative)

a g a i n s t

Reakiro Iberica, Catedrático Agustin Escardino 9, Parque Cientifico Universidad de Valencia, Edificio 3, CUE, 46980 Paterna, Spain (applicant).

On 05/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 896 127 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 338 808 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 338 808 . The opposition is based on, inter alia, United Kingdom trade mark registration No 3 163 121 for the word mark ‘VIRGIN’. The opponent invoked Article 8(1)(b) and (5) EUTMR in relation to this earlier right, and Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 3 163 121.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; preparations for the scalp, skin and nails; shampoos; perfumes; eau-de-colognes; toilet waters; shaving preparations; after-shave; after-shave lotions, cream, gel, foam and balm; non-medicated toilet preparations; anti-aging skin preparations; day cream; eye cream; night cream; facial cleansing mousse, foam, balm, milk, oil, polish and moisturiser; skin tonic; skin toner; non-medicated bath salts and bath oils; bath brulee, cream, crystals, essence, milk, powder; body butter, cream, lotion, moisturiser, powder; hand cream, scrub, balm, lotion; handwash; anti-perspirants, deodorants for use on the person, depilatories; dentifrices, mouth washes; cosmetic sun tanning preparations; sun screening preparations; bronzing preparations for the skin; preparations for the hair, hair lotions, hair sprays; non-medicated preparations for the care of the skin, hands, scalp and the body; skin cleansing preparations; creams and lotions for the skin; talcum powders; nail varnishes; nail varnish removers, nail preparations, artificial nails and adhesives therefor, preparations for repairing artificial nails; artificial eyelashes and adhesives therefor; makeup; cheek colour; concealer; eye colour; eye liner; eye shadow; eye makeup remover; foundation; mascara; tinted moisturiser; fragranced articles for fragrancing rooms, incense, pot pourri, room fragrances.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; dietetic substances; medicated toiletries and cosmetics; sunburn preparations and ointments for pharmaceutical purposes; medicated confectionery; vitamin preparations; nutritional supplements; dietary supplements; medical preparations for slimming; tobacco-free cigarettes for medical purposes; air purifying and deodorising preparations; medical preparations; medicated bath preparations; air purifying preparations; biological preparations for pharmaceutical and veterinary preparations; chemical preparations for medical and veterinary purposes; dental preparations; diagnostic preparations for medicinal preparations; germicides; medicinal preparations.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus; search engine services; publishing of computer game software and video games software; environmental conservation; energy conservation; providing advice on environment-related issues; development of programs and campaigns to the public regarding environmental and conservation issues; encouragement of innovation and highlighting information on best methods for reduction of waste and for re-use of products; environmental monitoring services; environmental support services for providing technical advice relating to sustainable development, cost reduction and savings in material and energy consumption, storage, transport and packaging; environmental consultancy services provided to businesses relating to benchmarking, accreditation and verification of performance; accreditation and consultancy services relating to environmental issues and compliance with environmental requirements; certification, preparation and examination of quality requirements and standards relating to environmental issues and compliance with environmental requirements; investigation, search and enquiry services relating to the environment; information services relating to all the aforesaid services; provision of all the aforesaid services via a computerised self assessment process; provision of all the aforesaid services via the Internet; provision of all the aforesaid services to members of an organisation; information and advisory services relating to all of the aforesaid; information and advisory services relating to all of the aforesaid provided online from a computer database or from the internet; information and advisory services relating to all of the aforesaid provided over a telecommunications network.

The contested goods and services are the following:

Class 3: Essential oils; Aromatic essential oils; Natural essential oils; Terpenes [essential oils]; Emulsified essential oils; Aromatics; Oils for cosmetic purposes; Oils for cosmetic purposes.

Class 5: Nutritional supplements; Mineral food supplements; Vitamin preparations in the nature of food supplements; Health food supplements for persons with special dietary requirements; Chemico-pharmaceutical preparations; Pharmaceuticals; Dermatological pharmaceutical products; Chemico-pharmaceutical preparations; Cardiovascular pharmaceuticals; Antibacterial pharmaceuticals; Anti-diabetic pharmaceuticals; Pharmaceutical preparations for veterinary use; Chemicals for pharmaceutical use.

Class 42: Research on the subject of pharmaceuticals; Testing of pharmaceuticals; Pharmaceutical product evaluation; Pharmaceutical products development; Inspection of pharmaceuticals; Research on the subject of pharmaceuticals.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under 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.

Contested goods in Class 3

The contested essential oils are identically included in both lists of goods.

The contested aromatic essential oils; natural essential oils; terpenes [essential oils]; emulsified essential oils; aromatics; oils for cosmetic purposes; oils for cosmetic purposes are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

Contested goods in Class 5

Pharmaceuticals; nutritional supplements are identically contained in both lists of goods.

The contested chemico-pharmaceutical preparations; dermatological pharmaceutical products; chemico-pharmaceutical preparations; cardiovascular pharmaceuticals; antibacterial pharmaceuticals; anti-diabetic pharmaceuticals; pharmaceutical preparations for veterinary use are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested mineral food supplements; vitamin preparations in the nature of food supplements; health food supplements for persons with special dietary requirements nutritional supplements are included in the broad category of the opponent’s nutritional supplements. Therefore, they are identical.

The contested chemicals for pharmaceutical use are included in the broad category of the opponent’s chemical preparations for medical and veterinary purposes. Therefore, they are identical.

Contested services in Class 42

The contested research on the subject of pharmaceuticals is included in the broad category of the opponent’s research services. Therefore, they are identical.

The opponent’s scientific and technological services and research and design relating thereto; industrial analysis and research services covers a broad category of services of a technical nature oriented to research and the creation of studies. They are carried out by engineers or technical experts, who draw up reports and projects after process analysis, and are based on a number of techniques. As a consequence, they may have the same nature and purpose as the contested testing of pharmaceuticals; pharmaceutical product evaluation; pharmaceutical products development; inspection of pharmaceuticals, which may be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.

2. 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 are directed at both the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average (for goods in Class 3) to high (for the rest of the goods and services), depending on the specialised nature of the goods, the frequency of purchase and their price.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36, and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

VIRGIN
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘VIRGIN’.

The contested mark is a figurative mark containing the elements ‘VIRGIN VEDA’ in standard upper case letters; it is underlined and is between the elements ‘PURE ELIXIR OF HEMP EXTRACT’, in much smaller upper case letters, and a depiction of a mandala inside which there is a depiction of a hemp leaves. All these elements are green.

The word ‘VIRGIN’, which the signs have in common, is an English word meaning, inter alia, (noun) ‘a person, esp. a woman, who has never had sexual intercourse or (adjective) of, relating to, resembling, suitable for, or characteristic of a virgin or virgins; pure and natural; uncorrupted, unsullied’ (information extracted from Collins English Dictionary on 30/05/2018 at https://www.collinsdictionary.com/dictionary/english/virgin).

In the earlier mark, as the element ‘VIRGIN’ is the sole element, it is likely that the public will associate it with a noun rather than an adjective. However, whether it is perceived as a noun or an adjective, it is not allusive to or descriptive of the characteristics of the relevant goods and services; therefore, it is considered distinctive to an average degree.

The word ‘VEDA’ of the contested mark refers to ‘any or all of the most ancient sacred writings of Hinduism, esp the Rig-Veda, Yajur-Veda, Sama-Veda, and Atharva-Veda’ (information extracted from Collins English Dictionary on 30/05/2018 at https://www.collinsdictionary.com/dictionary/english/veda). However, it is improbable that the relevant public will associate it with this meaning, since Hindu words are not likely to be understood by a large part of the public in the European Union. Nevertheless, for the part of the public that understands it and for the remaining part, as it has no connection with the relevant goods, it is considered distinctive to an average degree. Therefore, no concrete meaning will be associated with ‘VIRGIN VEDA’ and it is distinctive to an average degree.

The contested sign also contains the words ‘PURE ELIXIR OF HEMP EXTRACT’, which are English words and will be perceived as a meaningful expression referring to the pure elixir of the extract of the hemp plant. Bearing in mind that some of the relevant goods are essential oils and pharmaceutical products, this element is non-distinctive for these goods, as it indicates the origin and nature of the goods.

For analogical reasons, the depiction of the hemp leaf is considered non-distinctive, as it also indicates the origin and the nature of some of the relevant goods, namely the goods in Classes 3 and 5. Moreover, the circle might be perceived as a mandala and is therefore also weak for these goods, as the part of the public familiar with Indian customs might interpret it as indicating that the origin of the relevant goods is India. The rest of the public will perceive it as having a decorative nature. In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

As a consequence, the elements ‘VIRGIN VEDA’ in the contested sign are the most distinctive elements.

Visually, the earlier mark is entirely included at the beginning of the contested mark. The marks differ, however, in the additional element ‘VEDA’ of the contested mark, which has no counterpart in the earlier mark. Moreover, the signs also differ in the figurative elements and words ‘PURE ELIXIR OF HEMP EXTRACT’ of the contested mark, which are considered non-distinctive, weak or decorative; therefore their impact is limited for the purposes of the comparison.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. Therefore, the fact that the word ‘VIRGIN’ is the first verbal element in the contested mark must be taken into account.

As a consequence, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VIRGIN’, present identically in both signs. The main difference lies in the sound of the additional word ‘VEDA’ in the contested mark, because the other word elements are less significant due to their non-distinctive character and/or size.

Given the foregoing, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks evoke concepts.

For the part of the public for which the coinciding element, ‘VIRGIN’, has the same meaning, the signs are conceptually similar to an average degree. However, for the other part of the public, as the signs will be associated with different meanings, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the signs are visually and aurally similar to an average degree. Conceptually, for the part of the public for which the element ‘VIRGIN’, present in both marks, has the same meaning, the signs are conceptually similar to an average degree and, for the other part of the public, as the signs will be associated with different meanings, the signs are conceptually not similar. The earlier mark is distinctive to an average degree.

The goods and services are partly identical and partly similar.

The marks are similar overall, as they coincide in the sequence of letters ‘VIRGIN’, which constitute the earlier mark in its entirety and form the most distinctive element of the contested mark together with ‘VEDA’. The other elements of the contested mark have a very limited impact because of their size and non-distinctive character (‘PURE ELIXIR OF HEMP EXTRACT’) or their non-distinctive or low degree of distinctiveness (the depiction of a hemp leaf and the mandala).

These similarities are therefore sufficient to counteract the differences between the signs. The Opposition Division finds that, taking into account the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26) and the fact that consumers must rely upon their imperfect recollection, a sufficient proportion of the relevant public will assume that the goods and services come from the same undertaking or economically linked undertakings. Accordingly, consumers will consider the contested sign a variant on the earlier mark. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 163 121. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is 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. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Along the same line of reasoning and with regard to the claim of enhanced distinctiveness, the opponent’s argument that the earlier marks form a ‘family of marks’ does not need to be further analysed here.

As earlier United Kingdom trade mark registration No 3 163 121 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cynthia DEN DEKKER

Cristina CRESPO MOLTÓ

Erkki MUNTER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.