OPPOSITION Nо B 3 110 590

 

Grupo Viveplus, S.L., Av. M-40, portal 17, oficinas 68 y 69., 28925 Madrid/Alcorcón, Spain (opponent), represented by Kapler, Calle Orense, 10, 12º D, 28020 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Manju BV, Economiestraat 39 Bu08, 6433 Kc Hoensbroek, Netherlands (applicant), represented by Peter Reinert, Technologiepark Köln Eupener Strasse 137, 50933 Köln, Germany (professional representative).

On 31/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 110 590 is partially upheld, namely for the following contested goods and services:

 

Class 5: all the contested goods in this class. Class 29: all the contested goods in this class except for the contested terms lecithin for culinary purposes and alginates for culinary purposes. Class 32: all the contested goods in this class. Class 35: Retailing and wholesaling, including via the internet, in the fields of vitamin preparations, dietary supplements, dietetic preparations, medical and veterinary preparations and articles; retailing and wholesaling, including via the internet, in the fields of essential oils, food supplements, sanitary preparations and articles, medicated preparations and articles, foodstuffs and beverages; retailing and wholesaling, including via the internet, in relation to pharmaceutical goods, veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters and dressings; retailing and wholesaling, including via the internet, in relation to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, dentifrices and dietary supplements; retailing and wholesaling, including via the internet, in relation to orthopaedic bandages, medicinal teas, beverages for medical purposes; online mail order services featuring pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; online mail order services featuring disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, toothpastes, food supplements; online mail order services featuring orthopaedic bandages, medicinal teas, beverages for medical purposes; mail order services relating to pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; mail order services relating to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care; mail order services relating to hair lotions, dentifrices, food supplements, orthopedic bandages, medicinal teas, beverages for medical purposes Class 42: Scientific consultancy, evaluation, testing, monitoring in the fields of biology, bacteriology, chemistry and pharmacology; research in the fields of biology, bacteriology, chemistry and pharmacology; providing a search engine for medical and pharmaceutical subjects for the internet; services of a chemical and/or biological laboratory; chemical, biological, medical laboratory services; chemical analysis; conducting of pharmaceutical analyses for scientific research purposes; chemical analysis; setting up of a database (installation of database software); research (biological -); bacteriological research; technological research and development relating to the chemical and pharmaceutical industry; research and scientific analysis relating to drug discovery and development for others; research, development and consultancy in the field of biomedicine and cell culture engineering; bacteriological research; chemical research; cosmetic research; industrial analysis and research services; clinical research; medical analysis for scientific research purposes; medical research; medical and pharmacological research services; pharmaceutical drug development services; pharmaceutical research and development; pharmaceutical research and development; technical consultancy; scientific research; scientific and industrial research; scientific and technological services and research and design relating thereto. Class 44: all of the contested services except for medical equipment rental (listed twice).

2.

European Union trade mark application No 18 134 214 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

 

On 05/02/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 134 214 ‘ViVe Supplements’ (word mark), namely against all the goods and services in Classes 3, 5, 29, 32, 35, 41, 42 and 44. The opposition is based on EUTM registration No 14 695 597 (figurative mark) EUTM registration No 16 803 538, (figurative mark), Spanish trade mark registration No M3 715 763 (figurative mark), and on Spanish trade mark registration No M3 665 094 (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 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 EUTM registration No 14 695 597 .

a) The goods and services

 

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

Class 3: Abrasive preparations; Perfumes, essential oils, cosmetics, hair lotions; Dentifrices.

Class 5: Pharmaceutical, veterinary and sanitary preparations; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Materials for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices, ice.

Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruit and vegetables, fresh fruits; Seeds, natural plants and flowers; Animal feed, malt.

Class 32: Beer; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks, fruit juices; Syrups, cordials and other preparations for making beverages.

Following the decision of the Office in opposition No B 3 111 727 dated 11/12/2020 rejecting all the contested goods in Class 3, the remaining contested goods and services are the following:

Class 5: Evacuants; slimming pills; decongestants; general anesthetics; aloe vera preparations for pharmaceutical purposes; amino acid tablets for medical purposes; analgesics; anaesthetics; anti-allergy preparations; antibacterial pharmaceuticals; bacteria fighting cleanser; anti-bacterial soap; antibiotic ointments; antihistamines; pediculicidal shampoos; antioxidants; anti-oxidant food supplements; anti-oxidants for dietary use; anti-oxidants for medicinal use; anti-oxidants comprising enzymes; antiseptics; appetite stimulant preparations; appetite suppressants; appetite suppressants for medical purposes; arginine capsules for medical purposes; medicine; medicines for human purposes; pharmaceuticals and natural remedies; medicated supplements for foodstuffs for animals; medical kits; asthmatic tea; eye compresses; eye drops; anti-oxidants derived from honey; anti-oxidants derived from plants; infant formula; baby food; bath preparations for medical purposes; bactericides; fibre (dietary -); dietary fiber to aid digestion; bandages for dressings; bark for nutraceutical purposes; bark extract for nutraceutical use; BCAA tablets for medical purposes; tranquillizers; beta alanine for medical purposes; bee pollen for use as a dietary food supplement; bee pollen for nutraceutical use; biological preparations for medical and veterinary use; haematogen; medicated candy; sweets for medical purposes, in particular chest and throat sweets; emetics; bread products for diabetics; chemicals for medical use; chemical preparations for veterinary use; chemical testing agents for medical purposes, in particular reagents, mass solutions, indicators and nutritive media; disinfectants; urinary tract disinfectants; disinfectants and antiseptics; disinfectant soap; diabetic bread adapted for medical use; diabetic fruit nectars adapted for medical purposes; diabetic fruit juice beverages adapted for medical purposes; diagnostic preparations and materials; diagnostic substances for medical use; diastase for medical purposes; diet shakes for medical purposes; diet shakes for culinary purposes (supplements); dietetic infusions for medical use; dietary supplements for athletes; dietary supplement drink mixes; food supplements; dietary supplements in powder, capsule, or tablet form made from processed oils, fats and nuts; dietetic substances for babies; dietetic products for invalids; dietetic preparations for children; dietetic preparations adapted for medical use; dietetic beverages for babies adapted for medical purposes; herbal dietary supplements for persons special dietary requirements; dietetic food and substances, namely vitamins and mineral supplements for medical or veterinary purposes; dietetic foods adapted for medical use; dietetic food preparations adapted for medical use; dietary supplements and dietetic preparations; dietetic preparations and dietary supplements adapted for medical use, in particular in the form of beverages, powders, tablets and capsules; dietetic substances (for medical purposes); dietetic sweeteners for medical purposes; dietetic and nutritional preparations; dietary and nutritional supplements for general health and well being; dietary and nutritional supplements in the form of protein powder, bars containing protein, and ready to drink shakes containing protein; dietary and nutritional supplements containing protein for building body mass; dietetic sugar substitutes for medical use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; dietetic foods for use in clinical nutrition; dietetic foods adapted for invalids; dietetic foods adapted for medical use; dietetic confectionery adapted for medical purposes; dietetic sugar for medical use; enema preparations; albuminous preparations for medical purposes; protein bars (dietary supplements); protein bars for medical purposes; electrolyte drinks for medical purposes; anti-inflammatories; anti-inflammatory preparations; enzyme preparations for medical purposes; anti-oxidant supplements; first aid kits for domestic use; ground flaxseed fiber for use as a dietary supplement; ferments for pharmaceutical purposes; greases for medical purposes; febrifuges; antipyretics; antipyretic analgesics; fish meal for pharmaceutical purposes; fish oil for medical purposes; liquid dietary supplements; liquid herbal supplements; liquid vitamin supplements; rubbing alcohol; hygienic articles for women, namely sanitary towels, feminine tampons and panty liners; chilblain preparations; nutraceuticals for use as a dietary supplement; athlete's foot lotions; freeze-dried food adapted for medical purposes; first-aid boxes, filled; gelatine for medical purposes; royal jelly for medical purposes; flavourless BCAA powder as a dietary supplement; flavourless BCAA powder for medical purposes; flavourless beta-alanine powder as a dietary supplement; flavourless beta-alanine powder as a food supplement; beverages adapted for medicinal purposes; meal replacement and dietary supplement drink mixes; powdered fruit-flavored dietary supplement drink mix; glucose for use as an additive to foods for medical purposes; glutamine powder for medical purposes; adhesives for dentures; throat lozenges; diuretic pharmaceutical preparations; dietary supplements consisting primarily of calcium; skin care medical preparations for treating scars; skin care preparations for treating wounds; yeast for pharmaceutical purposes; adhesive plasters; medicinal herbs in dried or preserved form; extracts of medicinal herbs; health foods for medical purposes; ointments for treating nappy rash; beta-hydroxy beta-methylbutyrate acid as a dietary supplement; hmb (hydroxy-3-methylbutyric acid) for medical purposes; homogenized food adapted for medical purposes; homeopathic pharmaceuticals; homeopathic anti-inflammatory ointments; homeopathic pharmaceuticals; homeopathic supplements; hops (extracts of -) for pharmaceutical purposes; corn remedies; corn rings for the feet; antitussives; cough mixtures; sanitary preparations for medical purposes; hygienic preparations and articles; immunostimulants; irish moss for medical purposes; camphor oil for medical purposes; capsules for medicines; cachets for pharmaceutical purposes; allergy capsules; chewing gum for medical purposes; adhesive bands for medical purposes; adhesive bands for medical purposes; caffeine capsules as a dietary supplement; caffeine capsules for medical purposes; caffeine preparations for medical use; compresses; herbal medicine; herbal extracts for medical purposes; herbal preparations for medical use; herbal teas for medicinal purposes; creatine powder as a dietary supplement; creatine powder for medical purposes; artificial sweeteners adapted for diabetics; l-carnitine for weight loss; l-carnitine capsules as a dietary supplement; l-carnitine capsules for medical purposes; cod liver oil; cod-liver oil capsules; cod-liver oil drops; flaxseed for pharmaceutical purposes; linseed meal for medical purposes; lecithin for medical purposes; solutions for contact lenses; air freshener sprays; lysine preparations; magnesia for pharmaceutical purposes; meal replacement powders; almond milk for pharmaceutical purposes; medical preparation for slimming purposes; bath salts for medical purposes; medicated bath preparations; medicated creams; beverages adapted for medicinal purposes; medicated hair care preparations; medical skin care and oral hygiene preparations; medicated skin lotions; medicated compresses; medicinal infusions; medicated lotions; medicated handwash; medicated brush-on oral care gels; medicated food supplements; medicated nasal spray preparations; medicated lozenges; medicated plasters; medical preparations; medicated preparations for skin treatment; preparations for use as additives to food for human consumption [medicated]; medical soaps in solid and liquid form; medicinal tea; medicated toiletry preparations; medicated dry shampoos; medicated and sanitising soaps and detergents; medicated dentifrices; chewing gum for medical purposes; melissa water for pharmaceutical purposes; milk ferments for pharmaceutical purposes; milk sugar; milk sugar for pharmaceutical purposes; mineral food supplements; mineral dietary supplements for humans; preparations of minerals; mineral supplements for foodstuffs and mineral preparations; mineral waters for medical purposes; mineral water salts; calcium fortified candy; burns (preparations for the treatment of -); antiflatulants; diarrhea medication; anti-nauseants; motion sickness treatment preparations; flavoured weight-loss preparations for medical purposes; flavoured weight-loss preparations for food; gastrointestinal cleaning agents; mud for baths; multi-vitamin preparations; multi-vitamin preparations; flavoured muscle-building preparations; flavoured muscle-building preparations for food; nutritional drink mix for use as a meal replacement; albuminous foodstuffs for medical purposes; nutritional supplement meal replacement bars for boosting energy; nutritional additives to foodstuffs for animals, for medical purposes; dietary supplemental drinks; nutritional supplements; acai powder dietary supplements; mineral nutritional supplements; wheat dietary supplements; albumin dietary supplements; alginate dietary supplements; food supplements consisting of amino acids; dietary supplements consisting of amino acids in tablet form; dietary supplements consisting of amino acids, namely arginine capsules; dietary supplements consisting of amino acids, namely BCAA tablets; dietary supplements consisting of amino acids, namely beta-alanine; enzyme dietary supplements; royal jelly dietary supplements; glucose dietary supplements; yeast dietary supplements; casein dietary supplements; pine pollen dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; lecithin dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; food supplements consisting of trace elements; dietary supplements consisting of vitamins; wheat germ dietary supplements; dietary supplements for body building; food supplements; dietary food supplements used for modified fasting; dietary supplements for humans; dietary supplements for humans and animals; dietary supplements for humans not for medical purposes; dietary supplements for animals; dietary supplements in the form of powdered drinks and powdered drink mixes for use in nutritional and dietary health regimens; protein supplements in capsule form; protein supplements in tablet form; protein powder dietary supplements; dietary supplements with a cosmetic effect; nutritional and dietary supplements for muscle building, relaxation, natural optimal hormone regulation, and promoting the oxidation of fat cells, body fat reduction and muscle recovery; suplementy diety poprawiające kondycję i wytrzymałość; dietary supplements for reducing body fat; dietary supplements for enhancing strength; dietary supplements for enhancing sports performance; dietary supplements for increasing bodyweight; dietary supplements for controlling cholesterol; dietary supplements for increasing muscle mass; dietary supplement concentrates for medical purposes; ganoderma lucidum spore powder dietary supplements; health food supplements for persons with special dietary requirements; dietary supplements for infants; powdered nutritional supplement drink mix; food for medically restricted diets; nasal sprays for medical purposes; nasal rinse; sodium and potassium salts for medical purposes; natural dietary supplements for treating claustrophobia; by-products of the processing of cereals for dietetic or medical purposes; food supplements for non-medical purposes; neutraceutical preparations for humans; nutraceutical preparations for therapeutic or medical purposes; ear drops; paracetamol; lozenges for pharmaceutical purposes; mint for pharmaceutical purposes; plant extracts for pharmaceutical purposes; herbal supplements; plasters, materials for dressings; vitamin supplement patches; pharmaceutical drugs; pharmaceutical cold preparations; pharmaceuticals; pharmaceutical preparations for use in discouraging the smoking habit; pharmaceutical preparations; sunburn preparations for pharmaceutical purposes; pharmaceutical preparations for dental use; pharmaceutical cough preparations; pharmaceutical preparations for treating digestive system disorders; prebiotic supplements; preparations for health care; urinary tract preparations; lipotropic factor preparations; preparations for treating colds; preparations for supplementing the body with essential vitamins and microelements; probiotic supplements; protein as a dietary supplement, including in powdered form and in the form of protein powder optionally containing minerals, vitamins, and herbal ingredients; protein for use as a dietary supplement, including in powder form and as powder for making protein shakes; protein powder based on dairy products as a dietary supplement; protein bars being dietary supplements; protein bars for medical purposes; protein supplements in powder form as a dietary supplement; portable first-aid kits; medicine cases, portable, filled; non-prescription medicines; smelling salts; castor oil for medical purposes; ointments for medical purposes; ointments for pharmaceutical purposes; low-salt bread adapted for medical use; salts for medical purposes; salts for mineral water baths; hypnotic sedatives; soporifics; diet capsules; slimming tea for medical purposes; pain relief preparations; analgesics; protein supplement shakes; syrups for pharmaceutical purposes; soy protein dietary supplements; soy isoflavone dietary supplements; food for diabetics; protein-based sports bars as a dietary supplement; sports bars for medical purposes; starch for dietetic use; invigorating supplements containing parapharmaceutical preparations used prophylactically and for recuperating; sanitary sterilising preparations; artificial tea [for medicinal use]; test strips for diabetes, for pregnancy tests and for cholesterol tests; bath (therapeutic preparations for the -); tinctures for medical purposes; tonics [medicines]; glucose for medical purposes; tribulus (puncture vine) as a dietary supplement; tribulus (puncture vine) for medical purposes; ready-to-drink beverages for nutritional and dietetic use, for medical purposes; health food supplements made principally of minerals; health food supplements made principally of vitamins; dressings, medical; medical dressings, coverings and applicators; surgical dressings; protein-based dietary supplements ready for consumption, in particular protein powder and protein bars; veterinary preparations; vitamin and mineral supplements; vitamin enriched bread for therapeutic purposes; vitamin A preparations; vitamin B preparations; effervescent vitamin tablets; vitamin C preparations; vitamin D preparations; vitamins and vitamin preparations; gummy vitamins; vitamin drinks; mixed vitamin preparations; vitamin preparations; prenatal vitamins; vitamin preparations in the nature of food supplements; vitamin tablets; vitamin drops; vitamin supplements; vitamin supplements for use in renal dialysis; dietary supplements consisting primarily of iron; nutritional supplements consisting primarily of iron; nutritional supplements consisting primarily of calcium; dietary supplements consisting primarily of magnesium; nutritional supplements consisting primarily of magnesium; nutritional supplements consisting of fungal extracts; nutritional supplements consisting primarily of zinc; wart removing preparations; wart pencils; wadding for medical purposes; flavoured wheat protein concentrates as a dietary supplement; flavoured wheat protein concentrates for medical purposes; diapers for babies or toddlers; diapers for incontinence; dental preparations and articles, and medicated dentifrices; zinc supplement lozenges; SMA (zinc monomethionine aspartate) as a dietary supplement; ZMA (zinc monomethionine aspartate) for medical purposes; sugar for medical purposes; sugar substitutes for diabetics.

Class 29: Alginates for culinary purposes; powdered eggs; albumen for culinary purposes; white of eggs; vegetable extracts and meat extracts for nourishment purposes; fish meal for human consumption; jellies; gelatine for food; jellies; vegetables, dried; linseed oil for culinary purposes; lecithin for culinary purposes; maize oil for food; milk and dairy products, in particular protein shakes, ready to drink protein shakes, concentrates for making protein shakes, powder for making protein shakes, protein enriched smoothies, ready to drink protein enriched smoothies, concentrates for making protein enriched smoothies, powder for making protein enriched smoothies; milk protein, whey protein; ferments (milk -) for culinary purposes; milk beverages, milk predominating; milk products; milk protein concentrate; dried milk; milk shakes; whey protein powder; whey protein concentrates; foods and snacks made from processed oils, fats, and nuts; protein enriched powdered milk; sesame oil for food; snack foods based on cooked nuts; snack foods based on dried nuts; snack foods based on roasted soy nuts; soups; preparations for making soup; vegetable soup preparations; milk; milk based drinks; meat, fish, poultry and game extracts; soya bean oil for food; sunflower oil for food; edible fats; oils for food; soup (preparations for making -); dry powdered mixtures, namely mixes for making soup; seeds, prepared.

Class 32: Soft drinks; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; fruit nectars, non-alcoholic; non-alcoholic beverages; ready-to-drink, concentrated, or powdered non-alcoholic beverages; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea; non-alcoholic beverages and powdered or concentrated preparations for making non-alcoholic beverages; powders for effervescing beverages; pastilles for effervescing beverages; energy drinks; energy drinks with added bcaa (not for medical purposes); energy drinks with added caffeine; energy drinks with added minerals; energy drinks with added vitamins; aerated water (preparations for making -); essences for making beverages; fruit beverages and fruit juices, including caffeinated fruit beverages and fruit juices; fruit drinks and fruit juices and other preparations for making beverages; vegetable juices [beverages]; sports drinks, in particular for use in training, in particular in the field of athletics; powdered mixtures for making beverages; isotonic drinks; aerated water; concentrates for making energy drinks, sports drinks, smoothies, fruit flavoured drinks, isotonic drinks; mineral waters and aerated waters and other non-alcoholic beverages, soft drinks; minerals and aerated waters and other non-alcoholic drinks, syrups and other preparations for making beverages; non-alcoholic beverages; preparations for making beverages; protein-enriched sports beverages; powder used in the preparation of sport drinks, energy drinks, smoothies, fruit flavoured drinks, isotonic drinks; powders for making beverages; syrups for beverages; syrups and other preparations for making beverages; sports drinks containing proteins, minerals and vitamins.

Class 35: Issuing of customer cards without a payment and discount function for conducting customer loyalty campaigns in the context of marketing; advertising, marketing and promotional consultancy, advisory and assistance services; provision of an on-line marketplace for buyers and sellers of goods and services; procurement services for others [purchasing goods and services for other businesses]; order placement, delivery and invoice management with regard to medicines and customary pharmacy articles; support for pharmacies with regard to marketing issues; support for drugstores in marketing matters; business analysis, research and information services; office functions; import and export services; loyalty, incentive and bonus program services; auctioneering services; retailing and wholesaling, including via the internet, in the fields of vitamin preparations, dietary supplements, dietetic preparations, medical and veterinary preparations and articles; retailing and wholesaling, including via the internet, in the fields of essential oils, food supplements, sanitary preparations and articles, medicated preparations and articles, foodstuffs and beverages; retailing and wholesaling, including via the internet, in relation to pharmaceutical goods, veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters and dressings; retailing and wholesaling, including via the internet, in relation to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, dentifrices and dietary supplements; retailing and wholesaling, including via the internet, in relation to orthopaedic bandages, medicinal teas, beverages for medical purposes; consumers (commercial information and advice for -) [consumer advice shop]; business management, in particular of pharmacies or pharmacy cooperatives; trade show and commercial exhibition services; business assistance, management and administrative services; commercial administration of the licensing of the goods and services of others; planning and conducting of customer loyalty schemes in terms of advertising and marketing aspects; marketing services; marketing studies; public relations services; public relations services; online mail order services featuring pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; online mail order services featuring disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, toothpastes, food supplements; online mail order services featuring orthopaedic bandages, medicinal teas, beverages for medical purposes; product demonstrations and product display services; shop window dressings; telemarketing services; business consultancy, in particular in relation to pharmacies or a cooperation of pharmacies; business administration; negotiation and conclusion of commercial transactions for third parties; arranging of contracts for the buying and selling of medicines and standard pharmaceutical goods, in particular with wholesalers and pharmaceutical manufacturers; mail order services relating to pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; mail order services relating to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care; mail order services relating to hair lotions, dentifrices, food supplements, orthopedic bandages, medicinal teas, beverages for medical purposes; distribution of advertising, marketing and promotional material; administrative order processing; advertising, in particular for pharmacy services; advertising, marketing and promotional services; provision of advertising space, time and media; collection of goods, for others, for presentation and sales purposes.

Class 41: Education information; providing of training; providing of online publications regarding healthcare, rehabilitation and care; education; coaching; conducting of diet courses, including via the internet; conducting of nutrition courses, including via the internet; education services relating to nutrition; education services relating to nutrition; nutritional education for parents; education; health and wellness training; online publications about health care, rehabilitation and nursing, other than for advertising purposes; organising and arranging of conferences, congresses, colloquiums, symposiums, seminars and workshops on nutrition, nutritional supplementation, health care, rehabilitation and nursing; training in the field of health care; instruction courses relating to health; arranging of seminars and courses on healthcare, rehabilitation and care; publication of printed matter relating to nutrition, nutritional supplements, healthcare, rehabilitation and nursing, in particular periodicals and customer information.

Class 42: Scientific consultancy, evaluation, testing, monitoring in the fields of biology, bacteriology, chemistry and pharmacology; research in the fields of biology, bacteriology, chemistry and pharmacology; providing a search engine for medical and pharmaceutical subjects for the internet; services of a chemical and/or biological laboratory; chemical, biological, medical laboratory services; chemical analysis; conducting of pharmaceutical analyses for scientific research purposes; chemical analysis; setting up of a database (installation of database software); research (biological -); bacteriological research; technological research and development relating to the chemical and pharmaceutical industry; research and scientific analysis relating to drug discovery and development for others; research, development and consultancy in the field of biomedicine and cell culture engineering; bacteriological research; chemical research; cosmetic research; industrial analysis and research services; clinical research; medical analysis for scientific research purposes; medical research; medical and pharmacological research services; pharmaceutical drug development services; pharmaceutical research and development; pharmaceutical research and development; technical consultancy; issuing of certificates and/or proof of quality standards for services, substances, materials, products, documents and information documents tested and monitored by certified companies or service providers; scientific research; scientific and industrial research; scientific and technological services and research and design relating thereto.

Class 44: Dietary and nutritional guidance; developing medication plans as a medical service; providing nutritional information about food; consultancy in the field of healthcare and nutrition; nutrition consultancy; pharmacy consultancy, namely by a pharmacist or chemist; consultancy in the field of pharmacy, namely from a pharmacist; providing of medical information in the form of films, video clips, blogs and video blogs; provision of medical information by means of web sites, digital media and data banks; nutrition consultancy; diet planning and supervision; pharmacy; pharmacy services, namely preparation of pharmaceutical preparations and medicines, for others, on the basis of medical prescriptions; services rendered by a dietician; health services, in particular conducting medical tests, medical laboratory investigations, hygiene surveys and evaluating pharmaceutical products; health centers; services of medical supply centres and outpatient nursing services in connection with the treatment of patients; conducting therapies; dietetic advisory services; nutritional consultancy for pregnant women; providing information relating to medical and pharmaceutical services; providing of medical information; health and nutrition consultancy for consumers regarding medicine, medical products, dietary supplements, dietetic food and food; hygienic and beauty care for human beings or animals; advisory services relating to health; health advice relating to homeopathic medicines; hygienic care for human beings; animal healthcare services; consultancy services relating to cosmetics; medical nursing; health cure advice for hygienic purposes; medical services; medical services, in particular pharmacy services; medical services, namely providing of healthcare information stored on machine-readable data media, chip cards and integrated circuit cards (smart cards); medical services, namely providing medical information about disease symptoms, medical experiences, supporting community from an interactive patient and caregiver platform; medical services, namely providing of medical information for patients and information relating to medical and health-related subjects and methods on the internet; care services; pharmaceutical consultancy and consultancy services in connection with determining individual pharmaceutical and cosmetic requirements; physical therapy; beauty care for human beings; animal beautician services; providing support in the observation, monitoring, adherence and compliance of patients to medical treatments; medical equipment rental; medical equipment rental; introduction of patients to doctors, pharmacies and clinics; preparation of pharmaceutical preparations and medicines for others on the basis of medical prescriptions; preparation of prescriptions by pharmacists; providing information relating to dietary and nutritional guidance; providing information about dietetic supplements and nutrition, and dietary supplements.

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

 

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 5

All of the contested goods in this class are either identical to the opponent’s pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides either because they are identically contained in both lists (including synonyms)(e.g. pharmaceuticals) or because the opponent’s said goods include, are included in, or overlap with, the contested goods, or are otherwise at least similar to the opponent’s goods in Class 5 (e.g. the contested air freshener sprays) because they have the same general purpose and/or coincide in distribution channels, end users, and producers.

Contested goods in Class 29

Meat extracts for nourishment purposes, jellies (listed twice); vegetables, dried; milk; milk products; edible fats; oils for food are identically included in both lists of goods (including synonyms).

The contested milk and dairy products, in particular protein shakes, ready to drink protein shakes, concentrates for making protein shakes, powder for making protein shakes, protein enriched smoothies, ready to drink protein enriched smoothies, concentrates for making protein enriched smoothies, powder for making protein enriched smoothies; milk protein, whey protein; ferments (milk -) for culinary purposes; milk beverages, milk predominating; milk protein concentrate; dried milk; milk shakes; whey protein powder; whey protein concentrates; protein enriched powdered milk; milk based drinks; are included within the broader categories of the earlier milk and milk products. Therefore, they are identical.

The contested fish meal for human consumption is included within the broader category of the earlier fish. Therefore, they are identical.

The contested linseed oil for culinary purposes; maize oil for food; sesame oil for food; soya bean oil for food; sunflower oil for food are included within the broader category of the earlier edible oils and fats. Therefore, they are identical.

The contested seeds, prepared are at least similar to the opponent’s preserved, dried and cooked fruits which may include strawberry seeds. These goods have the same nature and purpose, they can originate from the same undertakings and they can have the same distribution channels.

The contested gelatine for food are at least similar to the opponent’s jellies since these goods may be manufactured by the same undertakings, intended for the same public and sold via the same distribution channels.

The contested powdered eggs; albumen for culinary purposes; white of eggs are similar to the earlier eggs as they have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore they are in competition.

The contested vegetable extracts for nourishment purposes, being food extracts, are similar to the earlier preserved, dried and cooked vegetables as they have the same nature and usually share distribution channels, producers and relevant consumers.

The contested soups and the earlier meat extracts can coincide in nature (both can take liquid or dried forms), method of use (add water), distribution channels, relevant public and producer/provider. They are also in competition in the sense that one can be used in substitution of the other, however this interchangeability works only one way where meat extracts can be used as simple bouillon broths. They do not, however, have the same purpose where the purpose of meat extracts is to provide additional flavour to dishes, or to act as an ingredient for broths/soups. Furthermore, they are not complementary as one is not indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking. Accordingly, for the same reasons explained above the contested preparations for making soup; vegetable soup preparations; soup (preparations for making -); dry powdered mixtures, namely mixes for making soup must be held to be similar also to the said earlier goods.

The contested fish, poultry and game extracts are similar to the opponent’s meat extracts as they have the same broad purpose and may share distribution channels, producers and relevant consumers.

The contested foods and snacks made from processed oils, fats, and nuts; snack foods based on cooked nuts; snack foods based on dried nuts; snack foods based on roasted soy nuts are similar to the opponent’s preserved, dried and cooked fruits as they may share distribution channels, producers, and relevant consumers. They may also be in competition.

However, the remaining contested goods in this Class, namely the contested lecithin for culinary purposes and alginates for culinary purposes have no relevant points of contact with the opponent’s goods. Lecithin is used as an emulsifier to stabilise a mixture and ensure consistency. As an emulsifier, the lecithin prevents water and oil from separating. Alginates for culinary purposes can be included in the category of "additives for foods". They are additives for culinary purposes of a very specific nature and purpose and target specialized end users such as the producers of foodstuffs, whereas the opponent’s foodstuffs target the general public or health care professionals in case of the pharmaceuticals in Class 5. Consequently, they are not complementary or in competition with each other and they differ in their distribution channels and usual origin from the goods of Classes 3, 5, 29, 30, 31 and 32 of the earlier mark, and must, therefore, be considered dissimilar.

Contested goods in Class 32

All of the contested goods in this class are identical to the opponent’s mineral and aerated waters and other non-alcoholic drinks; fruit drinks, fruit juices; syrups, cordials and other preparations for making beverages either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because 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 services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing and wholesaling, including via the internet, in the fields of vitamin preparations, dietary supplements, dietetic preparations, medical and veterinary preparations and articles; retailing and wholesaling, including via the internet, in the fields of essential oils, food supplements, sanitary preparations and articles, medicated preparations and articles, foodstuffs and beverages; retailing and wholesaling, including via the internet, in relation to pharmaceutical goods, veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters and dressings; retailing and wholesaling, including via the internet, in relation to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, dentifrices and dietary supplements; retailing and wholesaling, including via the internet, in relation to medicinal teas, beverages for medical purposes; online mail order services featuring pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; online mail order services featuring disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care, hair lotions, toothpastes, food supplements; online mail order services featuring medicinal teas, beverages for medical purposes; mail order services relating to pharmaceuticals, veterinary preparations, sanitary preparations for medical purposes, dietetic substances for medical use, food for babies, plasters, dressings; mail order services relating to disinfectants, hygiene products for personal use, soaps, perfumery, essential oils, products for personal and beauty care; mail order services relating to hair lotions, dentifrices, food supplements, medicinal teas, beverages for medical purposes are similar to the relevant goods of the opponent in Classes 3, 5, and 32 on the basis that each of the subject goods of the contested services is identical with (including by being included within the broader category of) the corresponding earlier goods, namely perfumes, essentials oils, cosmetics, hair lotions, dentifrices (in Class 3), pharmaceutical, and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants (in Class 5) and non-alcoholic drinks (in Class 32).

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

With respect to the reference to orthopedic bandages in the contested services in this class, it may be noted that plaster bandages for orthopaedic purposes are similar to a high degree to plasters, material for dressings. These goods can have the same purpose, distribution channels and points of sale, are frequently used in a complementary way and target the same consumers.

Consequently, the contested retailing and wholesaling, including via the internet, in relation to orthopaedic bandages; online mail order services featuring orthopaedic bandages; mail order services relating to orthopedic bandages are similar to a low degree to the earlier plasters, materials for dressings in Class 3.

None of the remaining contested services in Class 35 has relevant points in contact with the earlier goods of the opponent in class 3 (being abrasive preparations; perfumes, essential oils, cosmetics, hair lotions; dentifrices), class 5 (being pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides), classes 29 and 30 (being essentially various foodstuffs), 31 (being agricultural, horticultural and forestry products and grains, not included in other classes; live animals; fresh fruit and vegetables, fresh fruits; seeds, natural plants and flowers; animal feed, malt), or class 32 (being essentially various kinds of beverages and preparations therefor) such as to justify a finding of similarity: they have different natures and purposes, being neither in competition nor complementary, with different producers/providers and distribution channels. Therefore, contrary to the submission of the opponent arguing for similarity on the basis that the contested services are related to the commercialization, retailing, or advertising of goods they must be held to be dissimilar.

Contested services in Class 41

None of the contested services in this class has relevant points in contact with the earlier goods of the opponent in classes 3, 5, 29, 30, 31 or 32, as set out or summarised already above, such as to justify a finding of similarity: they have different natures and purposes, being neither in competition nor complementary, with different producers/providers and distribution channels. Therefore, they must be held to be dissimilar.

For these reasons, the submissions of the opponent arguing that the contested services in this class are similar to the earlier goods on the basis that they are complementary, or that they are similar because they have the same purpose of improving health, must be dismissed as unfounded.

Contested services in Class 42

It is known that pharmaceutical companies often try to improve their products through research, development and innovation. It cannot be ruled out that the relevant public may believe that the same company is responsible for both the manufacturing of the pharmaceutical products and the research services, or that a company offering the services in question is economically linked to the manufacturing company. Moreover, pharmaceutical companies promote and administer pharmaceutical studies for consumers and undertake research and development in cooperation with third parties. The relevant public for these goods and services overlaps insofar as professionals are concerned as they can be both users of the services and users of pharmaceutical products.

Therefore, the contested scientific consultancy, evaluation, testing, monitoring in the fields of biology, bacteriology, chemistry and pharmacology; research in the fields of biology, bacteriology, chemistry and pharmacology; providing a search engine for medical and pharmaceutical subjects for the internet; services of a chemical and/or biological laboratory; chemical, biological, medical laboratory services; chemical analysis; conducting of pharmaceutical analyses for scientific research purposes; chemical analysis; setting up of a database (installation of database software); research (biological -); bacteriological research; technological research and development relating to the chemical and pharmaceutical industry; research and scientific analysis relating to drug discovery and development for others; research, development and consultancy in the field of biomedicine and cell culture engineering; bacteriological research; chemical research; cosmetic research; industrial analysis and research services; clinical research; medical analysis for scientific research purposes; medical research; medical and pharmacological research services; pharmaceutical drug development services; pharmaceutical research and development; pharmaceutical research and development; technical consultancy; scientific research; scientific and industrial research; scientific and technological services and research and design relating thereto are similar to the earlier pharmaceutical, veterinary and sanitary preparations in Class 5 due to the close connection between them (14/06/2018, T 165/17, EMCURE / Emcur et al., EU:T:2018:346, § 47, 49-50).

However, the above principles do not relate to the contested issuing of certificates and/or proof of quality standards for services, substances, materials, products, documents and information documents tested and monitored by certified companies or service providers which services are usually provided by specialized undertakings providing certification and related services such that the relevant consumer would not believe that these contested services are provided by pharmaceutical undertakings. These services and the earlier pharmaceutical, veterinary and sanitary preparations in Class 5 have different natures and purposes; they do not compete with nor complement each other and are provided through distinct and different distribution channels. Therefore, they must be held to be dissimilar.

For these reasons, the submissions of the opponent arguing that the contested services, and so necessarily including the remaining contested services in this class, are similar to the earlier goods on the basis that they are complementary, or that they are similar because they have the same purpose of improving health, must be dismissed as unfounded.

For the sake of completeness, it may be added that the remaining earlier goods in classes 3, 5, 29, 30, 31, and 32, as set out or summarized already above, are even more remote from the said contested services and so also dissimilar thereto.

Contested services in Class 44

The contested term care services may include beauty care. Also, the term cosmetics in Class 3 includes goods such as animal grooming preparations. It follows that the contested hygienic and beauty care for human beings or animals; hygienic care for human beings; consultancy services relating to cosmetics; care services; beauty care for human beings; animal beautician services are similar to the opponent’s cosmetics in Class 3 as they may have the same purpose, they may be complementary, and may coincide both in end users and/or distribution channels.

Medical services and goods such as pharmaceutical or veterinary products are aimed at the same consumers, namely both professionals and the general public, and they pursue the same aim of treating disease and other healthcare issues. In hospitals, medical services often include the administration of pharmaceuticals. Thus, these goods and services may share the same distribution channels. Furthermore, these goods and services may be complementary insofar as the services are important or even indispensable for use of the goods. In particular, the provision of medical services may necessarily require the administration of pharmaceutical products. For this reason, the relevant public may believe that the same undertaking is responsible for both manufacturing the goods and providing the services.

Accordingly, on the basis of the foregoing, the contested dietary and nutritional guidance; developing medication plans as a medical service; providing nutritional information about food; consultancy in the field of healthcare and nutrition; nutrition consultancy; pharmacy consultancy, namely by a pharmacist or chemist; consultancy in the field of pharmacy, namely from a pharmacist; providing of medical information in the form of films, video clips, blogs and video blogs; provision of medical information by means of web sites, digital media and data banks; nutrition consultancy; diet planning and supervision; pharmacy; pharmacy services, namely preparation of pharmaceutical preparations and medicines, for others, on the basis of medical prescriptions; services rendered by a dietician; health services, in particular conducting medical tests, medical laboratory investigations, hygiene surveys and evaluating pharmaceutical products; health centers; services of medical supply centres and outpatient nursing services in connection with the treatment of patients; conducting therapies; dietetic advisory services; nutritional consultancy for pregnant women; providing information relating to medical and pharmaceutical services; providing of medical information; health and nutrition consultancy for consumers regarding medicine, medical products, dietary supplements, dietetic food and food; advisory services relating to health; health advice relating to homeopathic medicines; animal healthcare services; medical nursing; health cure advice for hygienic purposes; medical services; medical services, in particular pharmacy services; medical services, namely providing of healthcare information stored on machine-readable data media, chip cards and integrated circuit cards (smart cards); medical services, namely providing medical information about disease symptoms, medical experiences, supporting community from an interactive patient and caregiver platform; medical services, namely providing of medical information for patients and information relating to medical and health-related subjects and methods on the internet; pharmaceutical consultancy and consultancy services in connection with determining individual pharmaceutical and cosmetic requirements; physical therapy; providing support in the observation, monitoring, adherence and compliance of patients to medical treatments; introduction of patients to doctors, pharmacies and clinics; preparation of pharmaceutical preparations and medicines for others on the basis of medical prescriptions; preparation of prescriptions by pharmacists; providing information relating to dietary and nutritional guidance; providing information about dietetic supplements and nutrition, and dietary supplements are considered to be similar at least to a low degree to the opponent’s earlier pharmaceutical or veterinary products in Class 5.

However, the remaining contested services in this class - medical equipment rental (listed twice) – do not have relevant points in common such as to justify a finding of similarity. Even though a certain link cannot be denied due to the common general goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public, which may be either the general public (e.g. for goods such as domestic oxygen tanks) or professionals that rents medical equipment does not expect the undertaking that supplies medical equipment under rental, which are usually specialized in such services, to be one and the same as the undertakings that manufacture, for example, the earlier pharmaceutical, veterinary and sanitary preparations in Class 5. In contrast with the finding above of similarity for the other contested services in this class, these contested terms have different distribution channels and producers/providers. Consequently, it must be concluded that these contested services are dissimilar to the earlier said goods in Class 5. For the sake of completeness, it may be added that the remaining earlier goods in Classes 3, 5, 29, 30, 31, and 32, as set out or summarized already above, are even more remote from the said contested services and so also dissimilar thereto.

For these reasons, the submissions of the opponent arguing that the contested services, and so necessarily including the remaining contested services in this class, are similar to the earlier goods on the basis that they are complementary, or that they are similar because they have the same purpose of improving health, must be dismissed as unfounded.

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 goods and services found to be identical or similar (to varying degrees) are directed at the public at large and at business or professional customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average (e.g. for the foodstuffs in Class 29 or the beverages in Class 32) to high (e.g. for the pharmaceutical-related products in Class 5 or the medical-related services in Class 44, given the possible impact on the consumer’s health or well-being).

c) The signs

 

	ViVe Supplements
Earlier trade mark	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.

As the word ‘Supplements’ of the contested sign is both meaningful and at best weakly distinctive of the relevant goods and services for the English-speaking part of the relevant public as set out below, such that the impact of this word in the perception of the contested sign is reduced for this part of the public, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in Ireland and Malta.

The earlier mark consists of the stylized word ‘Vive’ depicted in shades of green, save for the dot over the letter ‘i’ which is the same shade of the colour pink as that of the small cross-shaped device, placed to the right of the verbal element.

Although the word ‘Vive’ has a dictionary meaning in English, being an exclamation for long life or support for some specified person or thing (information extracted from Collins English Dictionary on 19/05/2021 at https://www.collinsdictionary.com/dictionary/english/vive), in the context of the goods and services in question, the Opposition Division takes the view that the majority of the public under analysis is likely to perceive this word as referring more generally to matters of health or well-being, taking into account the said cross device, which reinforces, for at least part of the relevant public, the idea of health and well-being, given the widespread use of a cross shape (albeit normally in the colour green) in these fields.

As the word ‘Vive’ merely alludes to the fact that the goods and services in question relate to health or well-being, without being descriptive of them in any material way, it enjoys normal distinctive character thereof. Consequently, the submission of the applicant arguing that the word ‘Vive’ lacks distinctive character is not well-founded and must be dismissed.

The device of a simple cross is a commonplace symbol that consumers encounter in a wide range of contexts. Hence, alone it is unlikely to be perceived as an indication of commercial origin (15/02/2010, R 1606/2008-4, Green Cross (fig.), § 12).

However, part of the public under analysis may also perceive the cross device as a stylised mathematical symbol ‘+’, used for addition operations and written and pronounced ‘plus’. When perceived as this mathematical sign, the ‘+’ will be perceived in relation to the goods and services in question as a laudatory or augmenting element, in that it generally indicates a superior value or quantity (03/03/2010, T-321/07, A+, EU:T:2010:64, § 41-42; 12/12/2014, T-591/13, News+, EU:T:2014:1074, § 29). In other words, it conveys an indefinite yet positive message of ‘something more’ and is therefore laudatory. Furthermore, it is frequently used in the course of trade merely to inform the public that the goods and services concerned are of better quality or have something extra with respect to the normal standard of goods and services on the market. Consequently, the mathematical symbol ‘+’ cannot fulfil the function of an indicator of origin and lacks inherent distinctiveness.

It follows that whether or not the device of a cross is perceived as a reference to the fields of medicine or health or well-being, or as a symbol representing the word ‘plus’, it will be at best weakly distinctive of the goods and services in question.

In any event, 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). This is so in the instant case having regard to the small size and position of the cross device.

The stylization and colours of the earlier mark are likely to be regarded as being primarily decorative in nature such that they will not play a significant role in the trade mark perception of this mark.

The contested sign consists of the words ‘ViVe Supplements’. The word ‘Vive’ will have the same meaning and distinctive character for the relevant goods and services as has been set out already above. Although the capitalization of the third letter ‘V’ in ‘ViVe’ is irregular, it will not prevent the aforesaid perception of this word by the public under analysis, taking into account that such public is accustomed to modern marketing techniques which often includes irregular or unexpected captialisation of dictionary words. Consequently, the Opposition Division will not refer hereafter to the particular manner of presentation of this word of the contested sign as being a relevant point of difference between the signs at issue.

Meanwhile, the word ‘Supplements’ will be understood by the public under analysis as referring to the idea of adding something in order to improve it (information extracted from Collins English Dictionary on 19/05/2021 at https://www.collinsdictionary.com/dictionary/english/supplement). For at least some of the relevant goods (e.g. dietetic products in Class 5) this word is non distinctive while for the remaining relevant goods and services, it is weakly distinctive given that it will be perceived as referring at least in a general sense to improving one’s health or well-being.

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.

Visually, the signs coincide in the word ‘Vive’ differing in the figurative/stylized elements of the earlier mark and also in the additional word ‘Supplements’ of the contested sign. Taking into account that all of the said differences have less impact for the reasons set out above, the Opposition Division considers that the signs at issue are visually similar to an average degree.

Aurally, the signs coincide in the sound of the coinciding word ‘VIVE’ differing in the sound of the additional word ‘Supplements’ of the contested sign. The Opposition Division considers that the cross device of the earlier mark is not likely to be sounded given its relatively small size and the fact that it is depicted as a symbol - + - rather than a verbal element. In any event, to the extent that it might be pronounced its impact is reduced for the reasons set out above.

Taking into account that the coinciding word comes first, where it has more impact, and that the differing word has less impact for the reasons set out above, the Opposition Division considers that the signs at issue are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same concept conveyed by the word ‘Vive’ and merely differing in the concept of the cross device of the earlier mark and the word ‘Supplements’, both of which have less impact than the coinciding word as explained above, the Opposition Division considers that the signs are conceptually similar to 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 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.

 

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

 

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 in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the signs have been found to be visually similar to an average degree, and both aurally and conceptually similar to a high degree. The goods and services are partly identical, partly similar to varying degrees, and partly dissimilar. The earlier mark as a whole is normally distinctive of the goods in question, and the degree of attention may vary depending on the goods or services, being average or high.

Taking the relevant factors into consideration, the Opposition Division considers that the similarities between the signs due to the coincidence in the distinctive word ‘Vive’ are not outweighed by the differences - pertaining to the figurative and stylized elements of the earlier mark as well as the additional word ‘Supplements’ of the contested sign – which have less impact than the coinciding word, for the reasons explained at section c) above.

The Office takes 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). 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).

Indeed, it is quite conceivable that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 No 14 695 597. 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 goods and services found to be identical or similar to those of the earlier trade mark. Moreover, this is so also for those goods/services for which a higher than average degree of attention may be exercised or which are similar merely to a low degree, taking into account the application of the interdependence principle referred to above and, in that regard, bearing in mind the high degree of aural and conceptual similarity between the signs at issue.

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) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

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

 

 

1. EUTM registration (EU) No 16 803 538,  ;

2. Spanish trade mark registration No M3 715 763,  ; and,

3. Spanish trade mark registration (Spain) No M3 665 094,  .

 

These other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements and/or additional words which are not present in the contested trade mark. Moreover, they cover the same or a similar scope of goods and services. For example, earlier mark No. 3 above is protected for bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations. Having regard to the fact that the opposition has already been rejected with respect to, inter alia, the opponent’s abrasive preparations in Class 3 for the earlier mark compared above, these earlier goods in Class 3 - which are clearly dissimilar to the remaining contested goods in Class 29 and services in Classes 35, 42, and 44 could not lead to a finding of identity/similarity with respect to the said remaining contested goods and services. Therefore, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and 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 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

 

 

Irena LYUDMILOVA LECHEVA

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

  

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.