OPPOSITION No B 3 111 727

Alpheios B.V., In de Cramer 8 A, 6411 RS Heerlen, The Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative)

a g a i n s t

Manju BV, Economiestraat 39 BU08, 6433 KC Hoensbroek, The Netherlands, (applicant), represented by Peter Reinert, Technologiepark Köln Eupener Strasse 137, 50933 Köln, Germany (professional representative).

On 11/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 111 727 is upheld for all the contested goods, namely

Class 3: All the goods in this Class.

2. European Union trade mark application No 18 134 214 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 134 214 for the word mark ‘ViVe Supplements’, namely against all the goods in Class 3. The opposition is based on Benelux trade mark registration No 863 658 for the figurative sign . 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.

a) The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3: Make-up removing preparations; astringents for cosmetic purposes; alkali-free soaps; aloe vera preparations for cosmetic purposes; antiperspirants [toiletries]; aromatherapy preparations; breath freshening strips; breath freshening sprays; ethereal essences; essential oils; essential oils and aromatic extracts; cedarwood (essential oils of -); eyebrow cosmetics; eyebrow pencils; bath preparations; bath salts, not for medical purposes; bath preparations, not for medical purposes; laundry bleach; extracts of flowers [perfumes]; polish for furniture and flooring; floor wax; antiperspirants [toiletries]; deodorants for personal use [perfumery]; deodorant soap; scented wood; scented oils; sachets for perfuming linen; perfume water; shower gels; depilatory preparations; wax (depilatory -); moisturising creams; flower perfumes (bases for -); conditioning preparations for the hair; shampoo; hair lotion; skin and hair care products [included in Class 3]; cosmetic creams; skincare cosmetics; adhesives for cosmetic purposes; cologne; toiletries; body cleaning and beauty care preparations; cosmetics; cosmetic kits; cosmetic pencils; baths (cosmetic preparations for -); skin lotion; skincare cosmetics; oils for cosmetic purposes; cosmetic preparations for slimming purposes; herbal extracts for cosmetic purposes; lavender oil; creams for leather; preservatives for leather [polishes]; lipstick; lotions for cosmetic purposes; make-up preparations; almond milk for cosmetic purposes; slimming aids [cosmetic], other than for medical use; cosmetics; products for dental hygiene; mouthwashes, not for medical purposes; nail varnish removers; natural essential oils; bath preparations, not for medical purposes; non-medicated cosmetics; non-medicated toiletry preparations; oils for toilet purposes; oils for cosmetic purposes; massage oils; oils for cleaning purposes; oils for perfumes and scents; perfumery; perfumery and fragrances; perfumed oils; perfume; aromatics; flavourings for beverages [essential oils]; pomades for cosmetic purposes; oral hygiene preparations; furbishing preparations; shaving sets, comprised of shaving cream, shaving gel and aftershave; after-shave preparations; fumigation preparations [perfumes]; joss sticks; cleaning and fragrancing preparations; cleansing milk for toilet purposes; furbishing preparations; dentures (preparations for cleaning -); grinding preparations; make-up preparations; make-up preparations; make-up powder; cosmetic masks; antiperspirant soap; soaps; soap for foot perspiration; soaps in solid and liquid form; shampoo; sunscreen preparations; tanning preparations; tea-tree oil; terpenes [essential oils]; cosmetics for animals; animal grooming preparations; shampoos for pets [non-medicated grooming preparations]; toiletries; toilet soap; tissues impregnated with cosmetic lotions; laundry preparations; laundry preparations; cotton wool for cosmetic purposes; incense; dentifrices.

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.

The contested make-up removing preparations; astringents for cosmetic purposes; alkali-free soaps; aloe vera preparations for cosmetic purposes; antiperspirants [toiletries] (listed twice); eyebrow cosmetics; eyebrow pencils; bath preparations; bath salts, not for medical purposes; bath preparations, not for medical purposes; deodorants for personal use [perfumery]; deodorant soap; shower gels; depilatory preparations; wax (depilatory -); moisturising creams; conditioning preparations for the hair; shampoo; hair lotion; skin and hair care products [included in Class 3]; cosmetic creams; skincare cosmetics; toiletries (listed twice); body cleaning and beauty care preparations; cosmetics; cosmetic kits; cosmetic pencils; baths (cosmetic preparations for -); skin lotion; skincare cosmetics; oils for cosmetic purposes; cosmetic preparations for slimming purposes; lipstick; lotions for cosmetic purposes; make-up preparations; almond milk for cosmetic purposes; slimming aids [cosmetic], other than for medical use; cosmetics; nail varnish removers; bath preparations, not for medical purposes; non-medicated cosmetics; non-medicated toiletry preparations; pomades for cosmetic purposes; make-up preparations; make-up preparations; make-up powder; cosmetic masks; antiperspirant soap; soaps; soap for foot perspiration; soaps in solid and liquid form; shampoo; sunscreen preparations; tanning preparations; cosmetics for animals; toilet soap; aromatherapy preparations; tissues impregnated with cosmetic lotions; oils for toilet purposes; oils for cosmetic purposes; massage oils; shaving sets, comprised of shaving cream, shaving gel and aftershave; after-shave preparations are identical to the opponent’s cosmetics, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested ethereal essences; essential oils (listed twice) and aromatic extracts; cedarwood (essential oils of -); scented oils; herbal extracts for cosmetic purposes; lavender oil; natural essential oils; oils for cleaning purposes; oils for perfumes and scents; perfumed oils; aromatics; flavourings for beverages [essential oils]; tea-tree oil; terpenes [essential oils]; flower perfumes (bases for -) are identical to the opponent’s essential oils, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested animal grooming preparations; shampoos for pets [non-medicated grooming preparations] are included in the broad category of, or overlap with, the opponent’s soaps. Therefore, they are identical.

The contested laundry bleach; laundry preparations (listed twice) are included in the broad category of, or overlap with, the opponent’s bleaching preparations and other substances for laundry use. Therefore, they are identical.

The contested polish for furniture and flooring are included in the broad category of the opponent’s polishing preparations. Therefore, they are identical.

The contested cleaning preparations; cleansing milk for toilet purposes; are included in the broad category of the opponent’s cleaning preparations. Therefore, they are identical.

The contested grinding preparations overlap with the opponent’s abrasive preparations. Therefore, they are identical.

The contested dentifrices; products for dental hygiene; mouthwashes, not for medical purposes; oral hygiene preparations are identical to the opponent’s dentifrices, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested extracts of flowers [perfumes]; perfume water; perfume; cologne; fumigation preparations [perfumes]; perfumery; perfumery and fragrances; fragrancing preparations; joss sticks; incense are identical to the opponent’s perfumery, either because they are identically contained in both lists or because the opponent’s goods include, or overlap with, the contested goods.

The contested scented wood; sachets for perfuming linen; furbishing preparations (listed twice) are similar to the opponent’s perfumery. They usually coincide in producer, relevant public and distribution channels.

The contested cotton wool for cosmetic purposes are similar to the opponent’s cosmetics. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested dentures (preparations for cleaning -); breath freshening strips; breath freshening sprays are similar to the opponent’s dentifrices. They have the same purpose. They usually coincide in relevant public and distribution channels.

The contested floor wax; creams for leather; preservatives for leather [polishes] are similar to the opponent’s polishing preparations. They can be found in the same areas in supermarkets, target the same public and can coincide in their providers.

The contested adhesives for cosmetic purposes are similar to a low degree to the opponent’s cosmetics. They usually coincide in producer, relevant public and distribution channels.

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 found to be identical or similar (to varying degrees) are directed at the public at large. The degree of attention is average.

c) The signs

	ViVe Supplements
Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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

The earlier mark is a figurative mark composed of the verbal element ‘vive’ written in low case letters. It contains a figurative element resembling a stylised leaf placed on a grey oval and covering the first letter ‘v’, on the left.

The contested sign consists of the verbal elements ‘ViVe Supplements’. Although the verbal element ‘ViVe’ has an irregular capitalisation, it will not be divided into two separate words as the verbal element ‘ViVe’ has its own meaning (for those who will perceive it as meaningless, the separated verbal elements ‘Vi’ and ‘Ve’ have no meaning and the division is therefore unlikely).

The word ‘vive’ derives from Latin (i.e. the verb ‘vivere’) and in Ancient times meant ‘to live’ (information extracted from Latin Dictionary on 03/12/2020 at www.latin-dictionary.net/search/latin/vivere). Nowadays it is used in various forms in the
Neo-Latin languages, for example in French the word ‘vive’ stands for wishes of long life, admiration or approbation (information extracted from Larousse Dictionary on 03/12/2020 at www.larousse.fr). This word will be understood also by the majority of the Dutch- and German-speaking part of the public. Because the word ‘vive’ either lacks meaning (for part of the relevant pubic) or its meaning has no connection with the relevant goods, it has a normal degree of distinctive character.

The figurative element of the earlier mark as described above has no direct meaning for the goods in question and is, therefore, distinctive.

When signs consist of both verbal and figurative components, 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; 19/12/2011, R 233/2011-4 Best Tone/BETSTONE, § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the figurative element is of somehow reduced impact for this reason, despite its average degree of distinctive character.

Furthermore, the stylisation of the letters in the earlier mark is merely decorative and therefore less distinctive.

The word ‘Supplement’ of the contested sign will be understood by the public in the relevant territory as it exist as such or has close equivalents. For example in French (‘supplément’) it means ‘what we add to something already considered complete’ (‘ce qu'on ajoute à quelque chose déjà considéré comme complet’ - extracted from Dictionnaire Larousse at www.larousse.fr on 03/12/2020). This word exists in other relevant languages and has the same meaning (e.g. ‘Supplement, das’ / extracted from Duden Worterbuch at www.duden.de on 03/12/2020). Bearing in mind that the corresponding goods are mainly cosmetics, but also laundry, cleaning, polishing, and abrasive preparations, this element is weak in respect of the said goods as it could refer to the supplementary function of these goods.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘vive’/’ViVe’. However, they differ in the additional verbal element ‘Supplements’ of the contested signs and in the figurative device of the earlier mark described above and the stylisation of its letters.

Therefore, and also bearing in mind the distinctiveness issues, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛vive’/’ViVe’, present identically in both signs. The pronunciation differs in the sound of the letters ‛Supplements’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, and also bearing in mind the distinctiveness issues, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public who will understand the word ‘vive’, the signs will be associated with a similar meaning, and are, therefore, conceptually similar, bearing in mind the additional verbal and figurative elements (i.e. the symbol of a leaf in the earlier mark and the verbal element ‘Supplements’ of the contested sign). For the remaining part of the public in the relevant territory that will perceive only the figurative element in the earlier mark and the meaning of the element of the contested sign (i.e. the verbal element ‘Supplements’), as explained above, the signs are not conceptually similar.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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.

Account should also be 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).

In the present case, the contested goods have been found partly identical and partly similar (to varying degrees) to the opponent’s goods. The relevant public is the public at large with an average degree of attention.

The signs are visually similar to an average degree, and aurally highly similar. Conceptually, they are either conceptually similar to an average degree or not conceptually similar depending on whether the word ‘vive’ is perceived as meaningless or not. The distinctiveness of the earlier mark is normal.

As the conflicting signs consist of the same verbal element ‘vive’, consumers will be likely to perceive the similar and identical goods marketed under those marks as coming from the same source. In the absence of any sufficient differentiating elements, likelihood of confusion is the necessary conclusion. The differences consisting of the additional figurative element, the stylisation and colours of the earlier mark, as well as the additional verbal element ‘Supplements’ in the contested sign which has a weak degree of distinctiveness, are not sufficient to outweigh the significant similarities in the distinctive verbal element ‘vive’ of the marks and to exclude likelihood of confusion in this case.

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

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 863 658 for the figurative sign . It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Helen Louise MOSBACK

Michal KRUK

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.