OPPOSITION No B 2 836 321

ViiV Healthcare UK Limited, 980 Great West Road, TW8 9GS Brentford, United Kingdom (opponent), represented by CSY London, 10 Fetter Lane, EC4A 1BR London, United Kingdom (professional representative)

a g a i n s t

Farminveste – Investimentos, Participaçõese Gestão, S.A., Travessa de Santa Catarina, 8, 1200 403 Lisboa, Portugal (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 16/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 836 321 is upheld for all the contested goods.

2. European Union trade mark application No 15 783 202 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 783 202 for the figurative mark . The opposition is based on European Union trade mark registration No 8 516 213 for the figurative mark . The opposition was initially also based on international trade mark registration No 979 600 designating the European Union for the word mark ‘VIIV’ but, in its further observations, the opponent informed that it did no longer wish to pursue opposition on the basis of this earlier right. The opponent invoked Article 8(1)(b) and Article 8(5) 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 and services

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

Class 5: Pharmaceutical and medicinal preparations and substances; vaccines.

Class 10: Medical and surgical apparatus and instruments, inhalers, parts and fittings for all the aforesaid goods.

Class 41: Educational services, namely conducting seminars regarding health and health awareness and dissemination of materials in connection therewith.

Class 42: Research and development services in the fields of drug discovery, drug discovery products, pharmaceuticals, medicinal diagnostics, biological products, medical apparatus, devices and instruments; conducting clinical trials; scientific consulting; supply of information in the area of laboratory technology; medical laboratory services; provision of scientific information via Internet portals.

Class 44: Providing health and medical information about medical disorders; counselling and charitable services, namely providing information and assistance with respect to health and health awareness; provision of medical information via Internet portals; all the aforesaid consultations and services also provided by means of a database.

The contested goods are the following:

Class 3: Cosmetics; Cosmetic moisturisers; Milks (cosmetics); Cosmetic creams; Mineral oils [cosmetic]; Sun blocking preparations [cosmetics]; Tissues impregnated with cosmetics; Cosmetics for the use on the hair.

Class 5: Pharmaceuticals; Medicine; Dietary and nutritional supplements; Dietetic foods adapted for medical use.

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 ‘namely’, used in the opponent’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.

In relation to the applicant’s references to the specific nature of the parties’ businesses, it is noted that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

In relation to the comparison of goods in Classes 3 and 5, the parties refer to previous decisions of the Board of Appeal to support their arguments. In the decision of 22/05/2017, R 1406/2016-5, ÔMIA LABORATOIRES Sole Sicuro (fig.) / Ombia, referred to by the applicant, it was considered that the contested goods were ‘ingredients or semi-processed products for further use in pharmaceutical industry’. However, the broad category of the opponent’s pharmaceutical preparations in Class 5, includes goods, such as skin lotions and cleaners, with medical properties (26/06/2019, R 30/2019-4, Senederm / Sensoderm et al., § 14). The contested goods in Class 3 include preparations used to enhance or protect the appearance or odour of the human body and they are also often fragranced to add a pleasant smell. Insofar as the opponent’s pharmaceutical preparations in Class 5 comprise products, such as skin or haircare preparations with medical properties, which may aim to treat skin or hair conditions and, by bringing them back to good condition, improve the appearance of the skin and hair, the contested goods in Class 3 and the opponent’s pharmaceutical preparations in Class 5 may coincide in purpose. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies. Therefore, these goods are considered to be similar (26/06/2019, R 30/2019-4, Senederm / Sensoderm et al., §§ 14-15).

Contested goods in Class 5

The contested pharmaceuticals and medicine are identical to the opponent’s pharmaceutical and medicinal preparations and substances, either because they are identically contained in both lists (although worded differently) or because the opponent’s goods include the contested goods.

The contested dietary and nutritional supplements and dietetic foods adapted for medical use include substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical preparations in Class 5 (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

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 are directed at the public at large and professionals in the field of health, nutrition and cosmetics.

The degree of attention may vary between average and relatively high. It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention is likely to be above average also in relation to the goods in Class 5 intended either for a specific diet or to meet medical requirements insofar as those goods affect the consumers’ health, (24/01/2017, T-258/08, Diacor, EU:T:2017:22, § 50; 02/12/2014, T-75/13, Momarid, EU:T:2014:1017, § 50; 10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 46 and 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).

For the remaining goods in Class 3, the degree of attention is considered to be average (13/05/2016, T-62/15, MITOCHRON / mito (fig.) et al., EU:T:2016:304, § 22).

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs contain English words that are related to the relevant goods (see below). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark contains the verbal elements ‘ViiV’ and ‘Healthcare’. The word ‘ViiV’ has no meaning for the relevant public taken into consideration and is distinctive to a normal degree. Any association of the element ‘ViiV’ with HIV treatment, as suggested by the applicant, is too remote to materially affect the distinctiveness of this word. The word ‘HEALTHCARE’, on the other hand, means ‘[t]he organized provision of medical care to individuals or a community’ (information extracted from Lexico at https://www.lexico.com/definition/healthcare). Bearing in mind that the relevant goods are pharmaceutical and medicinal preparations and substances, this word is non-distinctive for these goods.

The contested sign contains the verbal elements ‘viv’ and ‘NUTRI’. The word ‘viv’ has no meaning for the relevant public and is distinctive to a normal degree. The element ‘NUTRI’ is likely to be perceived as an abbreviation of the English word ‘NUTRITION’ meaning ‘the process of providing or obtaining the food necessary for health and growth; food or nourishment’ (information extracted from Lexico at https://www.lexico.com/definition/nutrition). Therefore, this word is weak at best as it refers to nutritional properties of the relevant goods (29/06/2017, R 2253/2016-1, NUTRI+CAP NUTRITION (fig.) / NUTRICAP § 26).

Regarding the signs’ figurative elements and aspects, 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).

Furthermore, the figurative elements of the earlier mark, one in the form of an arch placed above the word ‘ViiV’ and another in the form of a horizontal line located at the bottom of the sign, are banal elements that are likely to be perceived by consumers as merely decorative and not as elements indicating the commercial origin of the goods. Therefore, they are non-distinctive. Likewise, the graphical depiction of the letters in standard grey characters with the initial and final letters ‘V’ larger than the middle letters ‘ii’ is not particularly elaborate and cannot be given much weight.

The rectangular green background of the contested sign is a noticeable feature. However, its importance should not be overestimated. It has the effect of making the white letters stand out, yet it does not have more impact on consumers than the letters. Furthermore, the slight stylisation of the letters ‘viv’ cannot be given much weight either.

In the earlier mark, the element ‘ViiV’ is the visually dominant element as it is the most eye-catching.

In the contested sign, the word ‘NUTRI’ is written in relatively small letters and, therefore, it is less eye-catching than the other elements, which dominate that sign.

In view of the abovementioned principle that the sign’s verbal component usually has a stronger impact on the consumer than the figurative component and since the impact of the signs’ figurative elements and aspects is further reduced for the reasons mentioned above and also considering that the words ‘ViiV’ of the earlier mark and ‘viv’ of the contested sign play an independent distinctive role in each sign respectively, the consumers’ attention will be attracted mainly to these elements.

Visually, the signs share similarities in the elements that have the strongest impact on the consumer, namely ‘ViiV’ of the earlier mark and ‘viv’ of the contested sign. These elements coincide in three letters (the initial and final letters ‘V’ and the letter ‘i’ in the middle) and differ in that the middle letter ‘i’ is doubled in the earlier mark. The signs differ in their colours, in the words which have less impact, namely ‘Healthcare’ of the earlier mark and ‘NUTRI’ of the contested sign, in the rectangular green background that does not have more impact than the verbal element ‘viv’ of the contested sign, in the non-distinctive banal figurative elements of the earlier mark and in the graphical representation of the signs’ letters, which cannot be given much weight.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the dominant verbal elements ‘ViiV’ of the earlier mark and ‘viv’ of the contested sign. The pronunciation differs in the sound of the word ‘HEALTHCARE’ of the earlier mark and of the word ‘NUTRI’ of the contested sign. Taking into account the size and position of these words within the signs and the fact that they have less impact and the tendency of the consumers to abbreviate a mark comprising a number of words to make it easier to pronounce, these differing words may even be omitted by consumers when they refer to the signs (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43, 44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34). However, even if these elements were pronounced, their impact is limited for the reasons explained above.

Therefore, the signs are aurally at least highly similar.

Conceptually, the words ‘ViiV’ of the earlier mark and ‘viv’ of the contested sign are not likely to evoke any concept for the public taken into consideration. Any association between the words ‘HEALTHCARE’ and ‘NUTRI’ based on the latter having connotation of dietetic, enriched, restorative and beneficial qualities and good health, as suggested by the opponent, is too remote to lead to a conceptual similarity between the signs. Furthermore, the element ‘HEALTHCARE’ of the earlier mark has no impact on the conceptual comparison of the signs as this word is non-distinctive and cannot indicate the commercial origin. The impact of the word ‘NUTRI’ of the contested sign, cannot be significant, if any, as this element is weak at best and secondary. Therefore, although the signs are not considered conceptually similar, this has no significant influence on the assessment of the similarity of the signs given the limited impact of the concepts of the signs’ meaningful elements.

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.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public taken into consideration in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are identical or similar.

The signs are visually similar to an average degree and aurally at least highly similar. The signs are not considered conceptually similar which has no significant influence given that the impact of the concepts of the signs’ meaningful elements is none or minimal.

The degree of distinctiveness of the earlier mark is normal and the level of attention of the public at large and professional public may vary between average and relatively high, depending on the goods at issue.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 view of the above, and taking into account that the similarities between the signs reside in the elements ‘ViiV’ of the earlier mark and ‘viv’ of the contested sign, which play independent distinctive roles within the signs, and that the differing elements do not have more impact or will not be given much weight, the consumers, even if their level of attention is heightened, are likely to believe that the identical or similar goods have the same or a related commercial origin.

In its observations, the applicant argues that it owns some European Union trade mark registrations that include the word ‘VIV’ and that coexist with the opponent’s mark. In addition, the applicant claims that the registrations of the opponent’s trade marks were granted during the period of validity of other trade mark registrations for ‘VIV’ for goods in Class 5.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Opposition Division is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why signs containing the same element coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 516 213. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Michele Maria BENEDETTI ALOISI

Justyna GBYL

Maria SLAVOVA

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.