OPPOSITION Nо B 3 108 399

Bionspharma Lab, S.L., C/ Puerto Rico, 4, 28220 Majadahonda (Madrid), Spain (opponent), represented by Dionisio De La Fuente Fernández, Plaza de Castilla Nº 3 bis, 28046 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 Cologne, Germany (professional representative).

On 09/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 399 is partially upheld, namely for the following contested services:

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; 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; 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; 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.

2. European Union trade mark application No 18 143 614 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

On 10/01/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 143 614 (figurative mark), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 16 483 695 (figurative mark). The opponent invoked Article 8(1)(a) EUTMR and 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 services

The services on which the opposition is, inter alia, based are the following:

Class 35: Retailing and wholesaling in shops or via global computer networks of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, dietary supplements, in particular composed of vitamins, amino acids, minerals and trace elements, medicinal creams for the skin, dietetic substances adapted for medical use, vegetable preparations prepared for consumption or preservation, including coadjuvants for improving the taste of food, cereals for human consumption, coffee, tea, cocoa, sugar, rice, tapioca, sago and artificial coffee, beers, mineral and aerated water and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, isotonic beverages, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, pomades for medical purposes, bandages and splints, surgical prostheses, electromedical apparatus, cosmetic creams, beverage receptacles, sanitary preparations, contact lenses, spectacles, cleaning and care fluids for spectacles and contact lenses, energy bars, wigs, silicone prostheses; commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; import and export services; retailing and wholesaling in shops or via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

The contested services are the following:

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.

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

The term ‘in particular’, used in the opponent’s and applicant’s lists of services, indicates that the specific 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).

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 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; support for pharmacies with regard to marketing issues; support for drugstores in marketing matters; loyalty, incentive and bonus program services; planning and conducting of customer loyalty schemes in terms of advertising and marketing aspects; marketing services; marketing studies; public relations services (listed twice); product demonstrations and product display services; shop window dressings; telemarketing services; distribution of advertising, marketing and promotional material; advertising, in particular for pharmacy services; advertising, marketing and promotional services; provision of advertising space, time and media are included in the broad category of the opponent’s advertising, marketing and promotional services. Therefore, they are identical.

The contested order placement, delivery and invoice management with regard to medicines and customary pharmacy articles; business analysis, research and information services; office functions; business management, in particular of pharmacies or pharmacy cooperatives; business assistance, management and administrative services; commercial administration of the licensing of the goods and services of others; business consultancy, in particular in relation to pharmacies or a cooperation of pharmacies; business administration; administrative order processing are included in the broad categories of, or overlap with, the opponent’s business assistance, management and administrative services; business analysis, research and information services. Therefore, they are identical.

Import and export services are identically contained in both lists of services.

The contested auctioneering services; consumers (commercial information and advice for -) [consumer advice shop] overlap with the opponent’s commercial trading and consumer information services. Therefore, they are identical.

The contested procurement services for others [purchasing goods and services for other businesses]; 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 include services when a third party puts prospective sellers and buyers in contact, negotiates between them and receives a commission for these services.

The opponent’s import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the import country and the export country. They are, therefore, preparatory or ancillary to the commercialisation of goods. These services are business intermediary services. They can be rendered by the same specialist undertakings with the purpose of helping other businesses to resolve their business-related problems. Both services target the same professional public and can be distributed through the same channels. Therefore, they are similar.

The contested trade show and commercial exhibition services; collection of goods, for others, for presentation and sales purposes are similar to the opponent’s advertising, marketing and promotional services as these services have the same purpose, and usually coincide in producer and relevant public.

Operating an online marketplace entails the provision of an e-commerce platform where the seller can display and offer its goods for sale to the buyer, without the platform operator being necessarily concerned about the type of product, the price, etc. Therefore, this is a passive service enabling the seller to price and put on display any goods it chooses to offer for sale, and simply pay a fee for the use of the space. Retail and wholesale services are more active as the service provider will be positively engaged in the promotion of the sale of the specific goods brought together for the customer. Specified retail (or wholesale) services and the provision of online marketplaces show a certain degree of similarity as the relevant public may be the same, whether this is as a prospective buyer or seller, and the purpose of the services, broadly speaking, may be the same, namely, to facilitate the sale of goods of others. Therefore, the contested provision of an on-line marketplace for buyers and sellers of goods and services is similar to a low degree to, inter alia, the opponent’s retailing and wholesaling in shops or via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

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. In addition, 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. They are of interest to the same consumers. 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 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 are similar at least to a low degree to the opponent’s retailing and wholesaling in shops or via global computer networks of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, dietary supplements, in particular composed of vitamins, amino acids, minerals and trace elements, medicinal creams for the skin, dietetic substances adapted for medical use, vegetable preparations prepared for consumption or preservation, including coadjuvants for improving the taste of food, cereals for human consumption, coffee, tea, cocoa, sugar, rice, tapioca, sago and artificial coffee, beers, mineral and aerated water and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, isotonic beverages, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, pomades for medical purposes, bandages and splints, surgical prostheses, electromedical apparatus, cosmetic creams, beverage receptacles, sanitary preparations, contact lenses, spectacles, cleaning and care fluids for spectacles and contact lenses, energy bars, wigs, silicone prostheses; retailing and wholesaling in shops or via global computer networks of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical and similar to varying degrees are directed at the public at large (e.g. retailing, including via the internet, in the fields of vitamin preparations) and at business customers with specific professional knowledge or expertise (e.g. import and export services).

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

c) The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

When a mark contains one verbal element, the relevant consumers, when perceiving the verbal element, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

As the element ‘vitamin’, identically present in both signs, is commonly known as referring to ‘an organic compound of which small quantities are needed in the diet in order to improve one’s health’, the relevant public will break down the signs into the elements ‘vitamin’ and ‘tek’, and ‘vitamin’ and ‘trend’ respectively. The relevant public are even more likely to dissect the earlier mark, as the two aforementioned elements are clearly separated visually by the use of two colours, as will be explained below.

The signs at issue are figurative marks. The earlier mark contains the verbal element ‘vitamintek’, written in fairly standard lower-case letters, with the element ‘vitamin’ in green and the element ‘tek’ in grey. This element is preceded by a circle, containing a stylised white letter ‘V’ on a green and grey background. The circle is a basic geometric shape, and the letter ‘V’ will be recognised as an abbreviation of the term that follows, namely, ‘vitamintek’. Therefore, this element is not particularly fanciful or original and serves a predominantly decorative function in the mark. The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign contains the verbal element ‘Vitamintrend’. The first letter is a large highly stylised fanciful grey letter ‘V’ that has a leaf- or plant-like shape and a three-dimensional effect, the following letters ‘itamintrend’ are in standard white lower case. The verbal element is placed in the middle of a grey rectangle, which is commonplace and non-distinctive. Due to its size, its three-dimensional effect and fanciful shape, the letter ‘V’ clearly attracts attention, but not (necessarily) more than the letters ‘itamintrend’, which, although substantially smaller, also catch the eye because their white colour contrasts sharply with the grey background. Therefore, the contested sign has no element that could be considered clearly more dominant than other elements.

As explained above, the relevant public will break down the signs’ verbal elements into two parts, ‘vitamin’ and ‘tek’, and ‘vitamin’ and ‘trend’ respectively. The element ‘vitamin’ is at best weak for the following services, which relate to goods serving health and hygiene purposes, as it relates to the kind or a component of these goods:

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.

In contrast, the element ‘Vitamin’ is distinctive to a normal degree for the remaining services as it does not refer to those services or any of their essential characteristics.

The element ‘tek’ will be understood as referring to the words ‘technology’ or ‘technical’, as this abbreviation is customary and has become part of general usage in word combinations (27/01/2017, R 1260/2016‑5, GALVOTEK LASER (fig.) / GRAVOTECH et al., § 28 and 13/05/2011, R 1150/2010‑2, ISOLATEK / ISOLA BAUCHEMIE (fig.), § 35). The services in question relate to goods that may be often technologically advanced or of a (medical) technical nature, therefore, this element is weak.

The verbal element ‘trend’ will be understood at least by the English-speaking part of the public as a general direction in which a situation is changing or developing. Therefore, bearing in mind the services in question, it may allude to the popularity of the services or that they are trending or in trend, and as such, this verbal element is weak. It has a normal degree of distinctiveness for the part of the public for whom it is meaningless.

Visually and aurally, the signs coincide in the string of letters (sounds) of their first element ‘vitamin’. The signs differ in their last elements, ‘tek’ and ‘trend’ respectively, and their sounds. In relation to the visual comparison, they also differ in their figurative elements, with the contested sign’s figurative element, with its three-dimensional effect, impacting on its overall impression.

As the element ‘vitamin’ is at best weak for 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, it will not be seen as an indication of commercial origin and it has an extremely limited impact, if any, in relation to these services. Therefore, contrary to the opponent’s arguments that the signs are visually and aurally at least highly similar, they are similar to at most a low degree for these services.

As the element ‘vitamin’ is distinctive to a normal degree for the remaining services, and as in principle the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader, the signs are visually and aurally similar at least to an average degree for the remaining services in question.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks’ elements.

For the part of the public that does not understand the differing elements placed at the end of both signs, the element ‘vitamin’, included in both signs, will be associated with the meaning explained above. As this element is weak for 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, the signs are conceptually similar to only a low degree for these services. For the part of the public that understands all of the signs’ elements, the signs are also only similar to a low degree for these services as the coinciding element (‘vitamin’) is weak and the signs differ in other elements that – even though they are also weak– help in distinguishing between the contents conveyed by the respective signs.

As regards the remaining services, the signs are conceptually similar at least to a below-average degree, because the presence of the elements other than the element ‘vitamin’ (whether or not these are understood) does not distract from the overlap in the signs’ contents arising from the coinciding element ‘vitamin’, which is distinctive to a normal 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for 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.

The mark has a normal degree of distinctiveness for the remaining services, 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The services are identical or similar to varying degrees. The degree of attention of the relevant public varies from average to high.

As regards the contested 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; 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; 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; 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, the inherent distinctiveness of the earlier mark is normal, and the signs are visually and aurally similar at least to an average degree, and conceptually similar at least to a below-average degree, because their coinciding element ‘VITAMIN’ is distinctive to an average degree.

The signs’ similarities outweigh the differences between the signs, since they coincide in their first eight letters, ‘VITAMINT’, in the letter ‘E’ in their last part and have similar lengths. As regards the contested provision of an on-line marketplace for buyers and sellers of goods and services, which have been found similar to a low degree only, 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). In the present case, the similarity between the signs is sufficient to outweigh the low degree of similarity between these contested services and the opponent’s services, and therefore there is a likelihood of confusion in relation to them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 483 695. It follows from the above that the contested trade mark must be rejected for the aforementioned services.

However, the inherent distinctiveness of the earlier mark is low and the signs are visually, aurally and conceptually similar to a low degree only in relation to 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.

According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001‑3, ALL-DAY AQUA / Krüger All Day, § 50; and 14/05/2001, R 0257/2000‑4, e plus / PLUS, § 22). These differences reduce the likelihood of confusion between conflicting trade marks. This clearly applies to the present case for the aforementioned services, as the signs at issue can be safely distinguished. They coincide only in the element ‘vitamin’, which is weak, and differ in the respective endings, and also in their figurative elements.

Therefore, it is considered that in relation to these services the differences between the signs are sufficient to counteract the similarities. It can be safely concluded that the relevant public will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or economically linked undertakings.

Therefore, the opposition is not successful insofar as these services are concerned.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are clearly not identical.

COSTS

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

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

The Opposition Division

Andrea VALISA

Christophe DU JARDIN

Sylvie ALBRECHT

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.