OPPOSITION Nо B 2 997 859

Vivo Mobile Communication Co., Ltd., 283#, BBK Road, Wusha, Chang’An, Dongguan, Guangdong, People’s Republic of China (opponent), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative)

a g a i n s t

Jan Wildberger, Holzhausenstraße 44, 60322 Frankfurt Am Main, Germany (applicant).

On 08/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 997 859 is partially upheld, namely for the following contested services:

Class 35: All services, except for business analysis; business administration; business administrative services; office functions.

Class 38: All services.

Class 41: All services, except for translation and interpretation.

Class 42: All services.

Class 44: Information services relating to health care; advisory services relating to medical problems; health advice and information services; providing health care information by telephone; health care consultancy services [medical]; professional consultancy relating to health care; consultancy services relating to personal behaviour; advisory services relating to health; providing health information; advisory services relating to health; medical services (listed three times in the applicant’s list of goods and services); human healthcare services; technical consultancy services relating to medical health; animal healthcare services; veterinary services; animal healthcare services.

2. European Union trade mark application No 17 004 921 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 004 921 ‘viva’ (word mark). The opposition is based on, inter alia, European Union trade mark registrations No 9 667 841 (figurative mark) and No 16 945 354 (figurative mark). The opponent invoked Article 8(1)(b) 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 marks, 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 aforementioned European Union trade mark registrations No 9 667 841 and No 16 945 354.

a) The goods and services

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

EUTM No 9 667 841 (EUTM 1)

Class 9: Scientific, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and reproduction of sound or images; magnetic data carriers, recording and optical discs; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines, data processing equipment and computers, recorded computer programs, screens (computer and television), keyboards (computer), computer mice, CD-ROMs, telephone apparatus, image and sound transmitters and receivers, telephone exchanges; telephones; telephone repeaters; answerphones; fire-extinguishing apparatus; electronic publications (electronically-downloadable); electronic diaries; intercommunication apparatus; interfaces (for computers); game programs; electronic pens (visual display units); readers (data processing equipment); computer peripheral equipment; magnetic cards; television apparatus; coin-operated mechanisms for television sets; modems.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; book binding articles; photographs; stationary; artists’ materials; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks (moulds); printed publications, magazines and books.

Class 35: Telephone answering for unavailable subscribers, message transcription, business reports, advertising; wholesaling and/or retailing in establishments and via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording and optical discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, recorded computer programs, computer and television screens, computer keyboards, computer mice, CD-ROMs, telephone apparatus, transmitters and receivers of sound and images, telephone exchanges, telephones, telephone repeaters, telephone answering machines, fire-extinguishing apparatus, downloadable electronic publications, electronic agendas, intercommunication apparatus, interfaces for computers, games programs, electronic pencils (visual display units), readers (data processing equipment), computer peripheral devices, magnetic encoded cards, television apparatus, coin-operated mechanisms for television sets, modems; sales promotion for others.

Class 38: Telecommunications, communications by computer terminals, communications by computer networks; telephony services; providing access to a global computer network; rental of telecommunication equipment; rental of message sending apparatus; rental of modems; rental of telephones; electronic advertising (telecommunications); communications by optical fibre networks; communications by telephone; connection by telecommunications to a world-wide computer network; routing and link-up for telecommunications; information relating to telecommunications; electronic mails; cellular telephone communication; satellite transmission; teleconferencing services; computer aided transmission of messages and images; electronic mail; providing internet chatrooms.

Class 41: Education services and entertainment; arranging sports and cultural activities; exhibitions (organization of -) for cultural or educational purposes; publication of texts (other than publicity texts); use of on-line electronic publications (not downloadable by data transmission); on-line publication of electronic books and journals (not downloadable); publication of books; entertainment via telephone; publishing services and production of radio broadcasts.

Class 42: Scientific and technological services and research and design relating thereto; scientific and industrial analysis and research services; design and development of computer hardware and software; computer programming services; technical advice and consultancy; engineering, installation of computer software, computer software design, construction drafting, technical project studies.

No 16 945 354 (EUTM 2)

Class 38: Telecommunication services; telecommunication services provided via platforms and portals on the internet and other media; operation of telecommunications systems; telecommunication gateway services; interactive telecommunications services; telephone services; telecommunication services; communication services by satellite; transfer of data by telecommunications; telecommunications access services; air to ground telecommunications services; telegraph telecommunications services; telecommunication gateway services; telecommunication gateway services; telecommunications via telephone; rental of telecommunications lines; operation of a telecommunications network; operation of telecommunications satellites; satelite capacity provision [telecommunications]; telecommunication of information (including web pages); digital network telecommunications services; providing electronic telecommunication connections; telecommunications services between computer networks; telecommunications services provided via fiber optic, wireless and cable networks; telecommunications services between financial institutions; internet based telecommunication services; information about telecommunication; data transmission; data transmission and data broadcasting; international data transmission; electronic transmission of data; electronic transmission of data; electronic data interchange services; digital transmission of data; international data transmission; transmission of data by telefacsimile; transmission of data by teletypewriter; wireless transfer of data via wireless application protocols; provision of wireless application protocol services including those utilising a secure communications channel; provision of wireless application protocol services including those utilising a secure communications channel; transmission of interactive entertainment software; cable television broadcasting; television broadcasting; communications by television for meeting; broadcasting and transmission of television programs; satellite television broadcasting; provision of communications via television transmissions; televisual communication services; streaming of television over the internet; communication of information by television; broadcasting of financial information by television; broadcasting of motion pictures by television; broadcast of information by means of television; dissemination of television programmes relayed by microwave link to television receivers; leasing of cable television equipment; provision of televised information relating to radiophones; operation of television cable networks; operation of earth-to-satellite television transmitters; subscription television broadcasting; transmission of interactive television program guides; rental of satellite broadcast receiving aerials; transmission of computerised data by means of television; dissemination of television programmes relayed by extra-terrestrial satellite; pay-per-view television transmission services; provision of telecommunication access to video and audio content provided via an online video-on-demand service; television screen based text transmission services; interactive telecommunications services; provision of telecommunication facilities; information about telecommunication; telecommunications by e-mail; rental of telecommunication equipment; telecommunications services for aircraft passengers; telecommunications routing and junction services; telecommunications services for typesetting; rental of telecommunications apparatus and installations; providing access to telecommunication networks; news agency services for telecommunications; providing telecommunications connections to the internet; mobile telecommunication network services; provision of telecommunication facilities for educational purposes; charitable services, namely telecommunication services; operation of wide-band telecommunications networks; telecommunications services for the distribution of data; professional consultancy relating to telecommunications; transfer of telephone or telecommunications calls; remote transmission of data by means of telecommunications; provision and rental of telecommunications facilities and equipment; delivery of digital audio and/or video by telecommunications; automatic transfer of digital data using telecommunications channels; telecommunications services to obtain information from data banks; telecommunications services for facsimile transmission of information; providing third party users with access to telecommunication infrastructure; providing of access to telecommunication warehousing services; telecommunication services provided via internet platforms and portals; providing telecommunications connections to databases; on-line information services relating to telecommunications; communications via multinational telecommunication networks; telecommunications by computer terminals, via telematics, satellites, telegraphs, telephones; provision of telephone directory information to assist in telecommunications; data transmission and reception services via telecommunication means; provision of telecommunications connections for telephone chat lines; telecommunications services provided via the internet, intranet and extranet; leasing of telecommunication lines for access to computer networks; providing telecommunications connections to the internet in a cafe environment; providing access to telecommunication channels for teleshopping services; remote transmission of audio signals by means of telecommunications; data transmission services over telecommunications networks; provision of telecommunication access to video content provided via the internet; providing telecommunications connections to a global communication network or databases; provision of telecommunication access and links to computer databases and to the internet; telephone telecommunications services provided via prepaid telephone calling cards; information, consultancy and advisory services relating to telecommunications; providing telecommunications connections to the internet or databases; providing telecommunications connections to connections to the internet or databases; providing telecommunications connections to a global computer network; rental of telecommunication devices and equipment enabling connection to networks; transmission of database information via telecommunications networks; telecommunications services, namely intercepting and preventing unsolicited calls from telemarketers; provision of telecommunication access and links to computer databases and to the internet; transmission of stock market information with the help of telecommunication media; provision of telecommunication access and links to computer databases and to the internet; provision of telecommunication access and links to computer databases and to the internet; signal transmission for electronic commerce via telecommunication systems and data communication systems; transmission and reception [transmission] of database information via the telecommunication network; electronic exchange of data stored in databases accessible via telecommunication networks; transmission of short messages [SMS], images, speech, sound, music and text communications between mobile telecommunications devices; high bit-rate data transmission services for telecommunication network operators; transmission and reception [transmission] of database information via the telecommunication network; electronic exchange of data stored in databases accessible via telecommunication networks; providing communication services through the use of phone cards or debit cards; interactive telecommunications services; operation of telecommunications systems; providing virtual facilities for real-time interaction among computer users; communication via interactive voice response; transmission of sound and vision via satellite or interactive multimedia networks; interactive communications services by means of computer; providing telecommunications connections to a global computer network or databases; none of the aforementioned being, or related to electronic publications (downloadable), printed publications, magazines and books, publication of texts (other than publicity texts), use of on-line electronic publications (not downloadable by data transmission), on-line publication of electronic books and journals (not downloadable), publication of books, publishing services and services for the production of radio programmes.

Class 42: Scientific and technological services and research and design relating thereto; industry analysis and research services; design and development of computer hardware and software; cloud computing; consulting in the field of cloud computing networks and applications; providing virtual computer systems through cloud computing; programming of operating software for accessing and using a cloud computing network; rental of operating software for accessing and using a cloud computing network; providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; consulting in the field of cloud computing networks and applications; computer virus protection services; computer programming services for electronic data security; monitoring of computer systems for detecting unauthorized access or data breach; development of technologies for the protection of electronic networks; computer disaster recovery planning; disaster recovery services for data communications systems; recovery of computer data; computer security services for protection against illegal network access; electronic monitoring of personal identification information for detecting identity theft via the internet; computer programming services for data warehousing; data warehousing; data mining; digital compression of computer data; electronic data storage; off-site data backup; maintenance of data bases; data migration services; development of data bases; rental of data carriers; recovery of computer data; rental of application software; application service provider services; application service provider [ASP], namely, hosting computer software applications of others; providing temporary use of web-based applications; application system testing consultancy; writing of computer programs for medical applications; application service provider services; writing of computer programs for biotechnological applications; development of computer software application solutions; hosting of computerized data, files, applications and information; development of computer software application solutions; advisory services relating to planning applications; application service provider services; technical consultancy relating to the application and use of computer software; information services relating to the application of computer networks; information services relating to the application of computer systems; advice and consultancy in relation to computer networking applications; installation and customisation of computer applications software; engineering services for applications on large and medium-sized computer systems; providing temporary use of non-downloadable software applications accessible via a web site; providing temporary use of online, non-downloadable computer software for use in broadcast monitoring applications; updating of computer software; software engineering; configuration of computer software; computer software design; rental of software; software creation; installation of software; software creation; software creation; upgrading of computer software; testing of computer software; writing of computer programs; repair of computer software; maintenance of software; computer software consultancy; computer software research; repair of computer software; maintenance of software; programming of educational software; software as a service [SaaS]; updating of computer programs; computer software design; maintenance and updating of computer software; updating of computer programs; updating of computer programs; software design and development; copying of computer software; computer software design; maintenance and repair of software; computer software development for others; development of virtual reality software; development of interactive multimedia software; repair of computer software; rental of computer hardware; maintenance of software; computer software design; diagnosis of faults in computer software; installation and maintenance of computer programs; software customisation services; configuration of computer software; computer software design; updating of computer software; maintenance and upgrading of computer software; computer software development for others; quality control relating to computer software; rental of computer software and programs; rental and maintenance of computer software; programming of telecommunications software; rental of computer software relating to travel; development and maintenance of computer software; configuring computer hardware using software; consultancy in the field of security software; computer software technical support services; design of graphic software systems; installation and maintenance of computer programs; computer software design; custom design of software packages; computer software design; design of virtual reality software; rental of computer hardware and computer software; design of computer game software; computer software programming services; creating, maintaining, and modernizing computer software; research and development of computer software; computer software design; computer software design; project studies relating to software; software design for others; installation and maintenance of computer programs; computer hardware development; design of computer hardware; testing of computer hardware; design of computer hardware; design and development of computer hardware; computer hardware development; design of computer hardware; design of computer hardware; design of computer hardware; design of computer hardware; advice relating to the design of computer hardware; research in the field of computer hardware; consultancy in the field of computers; computer hardware time sharing facilities; advisory and consultancy services relating to computer hardware; computer hardware and software consultancy; conducting feasibility studies relating to computer hardware; consultation services relating to computer hardware; design and development of computer hardware architecture; development of computer hardware for computer games; design of computer hardware; consultation services relating to computer hardware; troubleshooting of computer hardware and software problems; troubleshooting of computer hardware and software problems; research and development services relating to computer hardware; technical project studies in the field of computer hardware and software; advisory services relating to computer hardware design; design of hardware for compression and decompression of multimedia contents; design of hardware for digital signal processing; computer hardware and software consultancy; design of computer hardware for the manufacturing industries; professional advisory services relating to computer hardware; development of hardware for audio and video operators; development of hardware for compression and decompression of multimedia contents; development of hardware for processing and distribution of multimedia contents; design and development of computer hardware for the storage and recovery of multimedia data; design and development of hardware for signal amplification and transmission; design of hardware for data and multimedia content conversion from and to different protocols; development of computer hardware for the manufacturing industries; design services relating to computer hardware and to computer programmes; technical project studies in the field of computer hardware and software; diagnosing computer hardware problems using software; computer hardware and software consultancy; technical project studies in the field of computer hardware and software; telecommunications engineering; testing of telecommunication signals; analysis of telecommunication signals; monitoring of telecommunication signals; computer programming for telecommunications; telecommunications technology consultancy; telecommunications engineering consultancy; design of telecommunications apparatus and equipment; technical design and planning of telecommunications equipment; testing, analysis and monitoring of telecommunication signals; hosting of computerized data, files, applications and information; design and development of software in the field of mobile applications; computer system monitoring services; platform as a service [PaaS]; hosting platforms on the internet; creation of computing platforms for third parties; programming of software for information platforms on the internet.

The opposition was at first also directed against the services in Class 39. However, on 24/11/2017, the applicant requested their deletion from the list of goods and services, which was confirmed by the Office on 27/11/2017. The opponent continued with the opposition proceeding. Consequently, the contested services are the following:

Class 35: Advertising; business management; business administration; office functions; shows (conducting business -); advertising services provided via the internet; organisation of exhibitions and events for commercial or advertising purposes; investigations of marketing strategy; dissemination of advertising for others via the internet; dissemination of advertising for others via an on-line communications network on the internet; promotional marketing; advertising, marketing and promotional services; promotion, advertising and marketing; promotion, advertising and marketing of on-line websites; rental of advertising space on the internet; providing and rental of advertising space on the internet; administration relating to marketing; advertising and marketing consultancy; advertising and marketing; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertisement for others on the internet; advertising via electronic media and specifically the internet; advertising and marketing; advertising services provided via the internet; advertising, marketing and promotional services; advertising, marketing and promotional services; advertising, promotion and marketing; compilation of directories for publication on the internet; compilation of directories for publishing on global computer networks or the internet; compilation of advertisements for use on the internet; compilation of advertisements for use as web pages on the internet; business analysis, research and information services; business assistance, management and administrative services.

Class 38: Transmission of data or audio visual images via a global computer network or the internet; broadcasting of programmes via the internet; webcasting services; internet radio broadcasting services; provision of internet access services; provision of access to the internet for others; providing on-line chat rooms for social networking; provision of internet access services; access to content, websites and portals; providing access to web sites on the internet; providing internet chatrooms; providing chat lines utilising the internet; providing an online interactive bulletin board; providing internet chatrooms; chatroom services for social networking; providing on-line chat rooms for transmission of messages among computer users; provision of on-line forums; providing on-line forums for transmission of messages among computer users; provision of access to computer networks and the internet; internet based telecommunication services; internet telephony services; communications via a global computer network or the internet; provision of on-line communications services; live transmissions accessible via home pages on the internet [webcam]; simulcasting broadcast television over global communication networks, the internet and wireless networks; streaming of video material on the internet; distribution of data or audio visual images via a global computer network or the internet; arranging access to databases on the internet; web messaging; web site forwarding services; transmission of greeting cards online; broadcasting of video and audio programming over the internet; telecommunication services; telecommunications.

Class 41: Providing publications from a global computer network or the internet which may be browsed; provision of information relating to entertainment online from a computer database of the internet; provision of educational services relating to health; performances (presentation of live -); vocational education relating to avoidance of health related problems; information relating to entertainment, provided on-line from a computer database or the internet; information relating to entertainment, provided on-line from a computer database or the internet; provision of educational health and fitness information; education services relating to health; education services relating to health; education services relating to health; education services relating to health; entertainment services provided on-line from a computer database or the internet; instruction courses relating to health; publication of material which can be accessed from databases or from the internet; entertainment provided via the internet; education, entertainment and sport services; publishing and reporting; translation and interpretation; sporting and cultural activities; providing of training; entertainment; educational instruction.

Class 42: Testing, authentication and quality control; science and technology services; scientific and technological services and research and design relating thereto; industrial research.

Class 44: Information services relating to health care; advisory services relating to medical problems; health advice and information services; providing health care information by telephone; health care consultancy services [medical]; professional consultancy relating to health care; consultancy services relating to personal behaviour; advisory services relating to health; providing health information; advisory services relating to health; medical services; human healthcare services; technical consultancy services relating to medical health; animal healthcare services; agriculture, aquaculture, horticulture and forestry services; animal grooming; human hygiene and beauty care; veterinary services; animal healthcare services; medical services; beauty care for human beings; medical services; animal grooming.

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 services in Class 35

The contested advertising; advertising services provided via the internet; dissemination of advertising for others via the internet; dissemination of advertising for others via an on-line communications network on the internet; promotional marketing; advertising, marketing and promotional services; promotion, advertising and marketing; promotion, advertising and marketing of on-line websites; advertising and marketing consultancy; advertising and marketing; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertisement for others on the internet; advertising via electronic media and specifically the internet; advertising and marketing; advertising services provided via the internet; advertising, marketing and promotional services; advertising, marketing and promotional services; advertising, promotion and marketing; providing and rental of advertising space on the internet; rental of advertising space on the internet; investigations of marketing strategy are identical to the opponent’s sales promotion for others (EUTM 1), because the opponent’s services include, are included in, or overlap with, the contested services.

The contested organisation of exhibitions and events for commercial or advertising purposes; administration relating to marketing; compilation of directories for publication on the internet; compilation of directories for publishing on global computer networks or the internet; compilation of advertisements for use on the internet; compilation of advertisements for use as web pages on the internet; shows (conducting business-) are similar to the opponent’s sales promotion for others (EUTM 1). The services have the same purpose, usually coincide in provider and relevant public. When compared to the organisation of trade fairs for commercial or advertising purposes, the latter are the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. The conducting business shows is also a fair in which businesses can find and purchase the goods and services their business needs. Therefore, it is an opportunity to present themselves in an environment that enables unrivalled face-to-face networking. These services are normally provided by specialised companies in their specific field. As such, the services in question are considered similar to sales promotion for others (advertising services), since these could be offered to third parties in the form of the organisation, arranging and conducting of an exhibition or trade fair on their behalf (01/12/2014, R 557/2014‑2, TRITON WATER (FIG. MARK) / TRITON COATINGS TRITON (FIG. MARK) et al., § 31).

The contested business management; business research and information services; business assistance, management services are similar to a low degree to the opponent’s sales promotion for others (EUTM 1). Sales promotion for others is essentially 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 goods and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. These services are similar to a low degree to business management (in broad terms), as they have the same purpose, namely to facilitate running a successful business. They may also have the same providers and relevant public.

The contested business analysis; business administration; business administrative services; office functions are dissimilar to the opponent’s goods and services. These services are aimed at supporting or helping other businesses to do or improve business. The business administration services are intended to help companies with the performance of business operations, they are the organising of people and resources efficiently so as to direct activities toward common goals and objectives. The services are not similar to advertising, as the professionals, who assist with the execution of business decisions or the performance of business operations, will not offer (usually) advertising strategies. The same is applicable to the back office support services of office functions. Furthermore, these contested services are dissimilar to the goods in Classes 9 and 16, as not only the nature between goods and service is different, their purpose, producer/provider, distribution channels and relevant public are also different. They are neither complementary nor in competition. That the company assisted in its business may produce these goods is no argument of their similarity. They are different from the services in Classes 38, 41 and 42, as their know-how and relevant public are not in the telecommunication segment, nor the education, entertainment, scientific, technological, industrial and design segments either. There are no relevant trade mark similarities between these contested services and the opponent’s.

Contested services in Class 38

The contested telecommunication services include, as a broader category, the opponent’s telecommunications, communications by computer terminals, communications by computer networks (EUTM 1). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested provision of internet access services; provision of access to the internet for others; provision of internet access services; providing access to web sites on the internet; provision of access to computer networks and the internet; internet based telecommunication services; internet telephony services; communications via a global computer network or the internet; provision of on-line communications services; live transmissions accessible via home pages on the internet [webcam] are identical to the opponent’s providing access to a global computer network (EUTM 1), either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested transmission of data or audio visual images via a global computer network or the internet; broadcasting of programmes via the internet; webcasting services; internet radio broadcasting services; simulcasting broadcast television over global communication networks, the internet and wireless networks; streaming of video material on the internet; distribution of data or audio visual images via a global computer network or the internet; broadcasting of video and audio programming over the internet; providing on-line chat rooms for social networking; access to content, websites and portals; providing internet chatrooms; providing chat lines utilising the internet; providing an online interactive bulletin board; providing internet chatrooms; chatroom services for social networking; providing on-line chat rooms for transmission of messages among computer users; provision of on-line forums; providing on-line forums for transmission of messages among computer users; arranging access to databases on the internet; web messaging; web site forwarding services; transmission of greeting cards online are included in, or overlap with, the broad category of the opponent’s telecommunication services and communications by computer networks (EUTM 1). Therefore, they are identical.

Contested services in Class 41

Education, entertainment and sports services; entertainment are identically contained in both lists of services (including synonyms).

The contested sporting and cultural activities include, as broader categories, the opponent’s arranging sports and cultural activities. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested education instruction is included in the broader category of the opponent’s education services. Therefore, they are identical.

The contested providing publications from a global computer network or the internet which may be browsed; publishing and reporting; publication of material which can be accessed from databases or from the internet are included in the opponent’s broader category of publishing services (EUTM 1). Therefore, they are identical.

The contested provision of information relating to entertainment online from a computer database of the internet; information relating to entertainment, provided on-line from a computer database or the internet; information relating to entertainment, provided on-line from a computer database or the internet; entertainment services provided on-line from a computer database or the internet; entertainment provided via the internet; performances (presentation of live -) are included in the broad category of, or overlap with, the opponent’s entertainment (EUTM 1). Therefore, they are identical.

The contested provision of educational services relating to health; vocational education relating to avoidance of health related problems; provision of educational health and fitness information; education services relating to health (included four times in the applicant list of goods and services); instruction courses relating to health; providing of training are included in the broad category of, or overlap with, the opponent’s education services (EUTM 1). Therefore, they are identical.

The contested translation and interpretation are dissimilar to all the opponent’s goods and services as the main service is to enable and support communication between people with different languages. This is a specialised know-how, which clearly differs from the opponent’s electronic apparatus and instruments (Class 9), publications (Class 16), retail services and advertisements (Class 35), telecommunication (Class 38), education and entertainment (Class 41) and scientific and technological services (Class 42). Consequently, the nature, purpose, producer/providers, distribution channels and relevant public are different. They are neither in competition nor complementary.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; industrial research are identically contained in both lists of services (including synonyms).

The contested science and technology services overlap with the broader categories of the opponent’s scientific and technological services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested testing, authentication and quality control include, as a broader category, or overlap with, the opponent’s testing, analysis and monitoring of telecommunication signals; quality control relating to computer software (EUTM 2). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 44

The contested information services relating to health care; advisory services relating to medical problems; health advice and information services; providing health care information by telephone; health care consultancy services [medical]; professional consultancy relating to health care; consultancy services relating to personal behaviour; advisory services relating to health; providing health information; advisory services relating to health; medical services (listed three times in the applicant’s list of goods and services); human healthcare services; technical consultancy services relating to medical health; animal healthcare services; veterinary services; animal healthcare services are all specialised human- and animal-related medical services, which might require laboratory services. The laboratory services are included in the opponent’s broader scientific services in Class 42. Consequently, these services are similar.

The contested beauty care for human beings; agriculture, aquaculture, horticulture and forestry services; animal grooming (listed twice in the applicant’s list of goods and services); human hygiene and beauty care are related to the hygiene and beauty of human beings and animals as well as agriculture, aquaculture, horticulture and forestry services, which are all dissimilar to the opponent’s goods and services. The hygiene and beauty care does not include any scientific work, and together with the rest of these services, have a different nature. Their purpose is also different to the opponent’s computer hardware, software, publishing and telecommunication services, advertising, wholesale, education and entertainment services, and scientific and industrial research. Furthermore, they have different providers, as the know-how of medical matters are very specific, and they have different distribution channels and relevant public, as do agriculture, aquaculture, and horticulture. These services are neither in competition nor complementary.

b) 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 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. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

EUTM 1 EUTM 2	viva
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 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 common elements are Spanish words with a specific meaning, namely ‘alive’, meaning ‘que tiene vida’ (information extracted from the Real Academia Española dictionary on 03/12/2020 at https://dle.rae.es/vivo). The only difference is the grammatical gender of the words, either finishing with the letter ‘o’ for masculine or ‘a’ for feminine. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, as these are more prone to confusion based on the conceptual similarity between the signs.

The earlier rights are the verbal elements ‘vivo’, depicted in slightly stylised, bold, clearly legible letters. EUTM 1 is in blue and EUTM 2 is in grey. Neither the stylisation nor the colour are considered to be distinctive in any manner, as the public often encounters bold letters in different colours, which make the signs more visible, but do not indicate the commercial origin of the goods and services.

The contested sign is the word mark ‘viva’ with the above stated meaning.

Considering the aforementioned meaning, all three signs are distinctive in relation to the relevant services, as they are neither descriptive nor in any other manner weak/non-distinctive regarding the characteristics of the services.

Visually and aurally, the signs coincide in their beginning, ‘viv*’. They differ in the last letters ‘o’/‘a’ (both vowels) and in the stylisation of the earlier signs. The stylisation and the colours (blue and grey), being rather of a decorative nature, do not clearly separate the signs visually. Although the different endings are aurally perceivable, both are vowels, and because of their position, they only have a minimal impact. Consequently, the signs are visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be perceived as ‘alive’, differing only in the gender, the signs are conceptually similar to at least a high degree.

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

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of non-distinctive (stylisation and colours) elements in the marks, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling them, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services are partly identical, partly similar (to varying degrees) and partly dissimilar. The signs are visually and aurally similar to a high degree and conceptually similar to at least a high degree. The relevant public is the general and professional public, who will pay an average to high degree of attention depending on the service specialisation required. The similarity of the sign lies on their highly similar concept based on the words ‘vivo’/‘viva’, differing only in the gender.

Account is taken of 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). 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). Consequently, whether the concept is feminine or masculine may not be recalled with certainty, but the concept of ‘alive’ will.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, the opposition is also successful insofar as the services that are similar to a low degree are concerned. As the relatively high degree of similarity between the signs counterbalances the low degree of similarity between some of the services. As the concept ‘alive’ is highly similar, differing ‘only’ in the gender, this is not enough to safely differentiate the signs, thus avoiding likelihood of confusion, even with a higher level of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar (even to a low degree) to those of the earlier trade marks.

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

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No 2 966 135 for the word mark ‘VIVO TELEFONICA’;

 Spanish trade mark registration No 2 966 131 for the word mark ‘VIVO MOVISTAR’.

The other earlier rights invoked by the opponent are less similar to the contested mark. They cover the same or a narrower scope of the services and they contain further (partly) distinctive verbal elements, such as ‘TELEFONICA’ and ‘MOVISTAR’, which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Renata COTTRELL

Astrid Victoria WÄBER

Claudia MARTINI

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.