OPPOSITION No B 3 067 049

Alert Life Sciences Computing, S.A., Rua Daciano Baptista Marques 245, Arrabida Lake Towers, 4400‑617 Vila Nova de Gaia, Portugal (opponent), represented by Daniel Reis, Avenida da Liberdade, n. 224, 1250-148 Lisbon, Portugal (professional representative)

a g a i n s t

Holland & Barrett International Limited, Samuel Ryder House, Barling Way, Eliot Park, Nuneaton, Warwickshire CV10 7RH, United Kingdom (applicant), represented by HGF Limited, Cavendish House, 39‑41 Waterloo Street, Birmingham B2 5PP, United Kingdom (professional representative).

On 14/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 049 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 and services of European Union trade mark application No 17 901 624 for the figurative mark . The opposition is based on Portuguese trade mark registration No 483 268 and international trade mark registration No 1 199 864, designating, inter alia, the European Union, for the word mark ‘HEALTH BOX’. 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.

PRELIMINARY REMARK

The substantiation of the earlier Portuguese mark No 483 268 was questioned during the opposition proceedings. The Opposition Division does not consider it necessary to assess the validity of this earlier right since it would not alter the outcome of the opposition, as will be seen in detail hereunder.

a) The goods and services

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

Class 9: Computer software with specific application in healthcare.

Class 38: Rental of access time to an online database containing information about medical, pharmaceutical and health issues; rental of access time to an online database containing information about diseases treatment and prevention, as well as monitoring of convalescence; rental of access time to an online database containing medical studies and medical literature; rental of access time to an online database containing information about scientific issues; providing access to databases; providing access to online computer databases containing information in the medical, pharmacy and health field; providing access to online computer databases containing information concerning prevention, treatment and follow up of diseases treatment; providing access to online computer databases containing medical studies and medical literature; providing access to online computer databases containing scientific information.

Class 44: Health services; medical and health care services; monitoring and care of patients; medical diagnostic services, analysis and diagnostics; services related to prevention, treatment and follow up of diseases treatment; medical information and consultancy.

The contested goods and services are the following:

Class 16: Packaging boxes of cardboard; boxes of paper or cardboard.

Class 35: Retail services connected with the sale of subscription boxes containing dietetic preparations, dietetic supplements, dietetic foodstuffs, dietary supplements, herbal supplements and herbal extracts, herbal beverages, teas, coffee, preparations for making beverages, non-alcoholic beverages, vitamins, vitamin preparations, minerals, mineral preparations, vitamin and mineral food supplements, food supplements, food and foodstuffs; retail services in relation to dietetic preparations, dietetic supplements, dietetic foodstuffs, dietary supplements, herbal supplements and herbal extracts, herbal beverages, teas, coffee, preparations for making beverages, non-alcoholic beverages, vitamins, vitamin preparations, minerals, mineral preparations, vitamin and mineral food supplements, food supplements, food and foodstuffs; online retail services in relation to dietetic preparations, dietetic supplements, dietetic foodstuffs, dietary supplements, herbal supplements and herbal extracts, herbal beverages, teas, coffee, preparations for making beverages, non-alcoholic beverages, vitamins, vitamin preparations, minerals, mineral preparations, vitamin and mineral food supplements, food supplements, food and foodstuffs; mail order retail services related to dietetic preparations, dietetic supplements, dietetic foodstuffs, dietary supplements, herbal supplements and herbal extracts, herbal beverages, teas, coffee, preparations for making beverages, non-alcoholic beverages, vitamins, vitamin preparations, minerals, mineral preparations, vitamin and mineral food supplements, food supplements, food and foodstuffs; wholesale services in relation to dietetic preparations, dietetic supplements, dietary supplements, dietetic foodstuffs, herbal supplements and herbal extracts, herbal beverages, teas, coffee, preparations for making beverages, non-alcoholic beverages, vitamins, vitamin preparations, minerals, mineral preparations, vitamin and mineral food supplements, food supplements, food and foodstuffs; distribution of samples.

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 16

The contested packaging boxes of cardboard; boxes of paper or cardboard have nothing in common with the opponent’s goods in Class 9, which is software with specific application in healthcare, nor with the services in Class 38, which are mainly the provision of access time to online databases in the medical and scientific field, and nor with the services in Class 44, which are mainly health services and medical information and consultancy services. They have a different nature and purpose and have different distribution channels, points of sale and providers. They are neither in competition nor complementary to each other. They are therefore dissimilar.

Contested services in Class 35

The contested services, which can be summarised as retail and wholesale services of health- and nutrition related products and supplements as well as of all kind of beverages, have nothing in common with the opponent’s goods in Class 9, which is software. They have a different nature, serve different needs, have different distribution channels, points of sale and providers and are not in competition nor complementary to each other. They are therefore dissimilar.

Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled since the goods at issue (software) are dissimilar. The same principle applies to the wholesale services.

The opponent argues that the retail and wholesale services in Class 35 may be included in the ‘health services’ covered by the earlier mark. The Opposition Division disagrees with this finding for the following reasons.

Retail and wholesale services are commonly defined as the action or business of selling goods. Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. The same principle applies to the wholesale services.

Therefore, the contested services in Class 35 have nothing in common with the opponent’s services in Classes 38 and 44, which are specific services provided by specialists in the field of medicine or IT. Even if the retail and wholesale services refer to health-related products, this remote link is insufficient to find any degree of similarity between them. They have a different nature and purpose, are offered by different companies, target different consumers, and are neither in competition nor complementary to each other. For these reasons, and contrary to the opponent’s view, these services are considered to be dissimilar to the opponent’s services.

b) 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.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Valeria ANCHINI

Sylvie ALBRECHT

Meglena BENOVA

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.