OPPOSITION No B 3 064 511

NB Seguros - Mediação De Seguros, Lda, Rua Elias Garcia, Nº 45 - C, 1000 148 Lisboa, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Fair Trade Handels AG, Seidenhofstrasse 2, 6003 Luzern, Switzerland (applicant), represented by Brödermann Jahn Rechtsanwaltsgesellschaft, ABC-Straße 15, 20354 Hamburg, Germany (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 511 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 896 911 (figurative mark). The opposition is based on Portuguese trade mark registration No 502 715  (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.

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.

1. The goods and services

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

Class 44: Dietetic counselling; lifestyle counselling; nutrition and dietetic consultancy; health consultancy; medical consultancy; medical, medicinal and therapeutic consultancy; providing information to patients in the field of administering medicines; providing information relating to dietary and nutritional guidance; providing information relating to dietary and nutritional supplements; providing information about dietary supplements and nutrition; consultancy and information services relating to biopharmaceutical products; consultancy and information services relating to pharmaceutical products; weight reduction diet planning and supervision; advisory services relating to weight control; advisory services relating to weight loss.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; Medicated food supplements; Mineral food supplements; Dietary supplemental drinks; Vitamin preparations.

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

The contested dietary supplements and dietetic preparations; medicated food supplements; mineral food supplements; dietary supplemental drinks; vitamin preparations are dissimilar to all the opponent's services in Class 44. Apart from being different in nature, given that services are intangible whilst goods are tangible, they serve different needs, as the purpose of the goods in Class 5 is to cure disease and enhance health, whereas the services in Class 44 aim to provide information and/or consultancy. Although it is undeniable that some of the contested goods may be provided in the opponent’s nutritional, dietary and medical consultancy, it is not common for the providers of these services to actually manufacture and sell their own brand of, inter alia, dietetic and vitamin preparations. They usually use or sell goods which have been manufactured by a third party and which consequently do not bear the mark of those providing the contested services. The sale of any such goods, if possible, would be merely ancillary and the consumers are normally well aware of the fact that another undertaking is responsible for the actual manufacture of the product at issue. Therefore, these goods and services are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Christian STEUDTNER

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.