OPPOSITION DIVISION

OPPOSITION No B 2 756 123

Pharmadom, société anonyme coopérative à conseil d'administration, 66 rue

Escudier, 92100 Boulogne-Billancourt, France (opponent), represented by Marie

Paule Dauquaire, 9 rue de Montevideo, 75116 Paris, France (professional

representative)

a g a i n s t

IRF s. r. o., Turnianska 1, 85107 Bratislava, Slovakia (applicant), represented by

PRELIMINARY REMARK — APPLICABLE REGULATIONS

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 078 645 . The opposition is

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.

Decision on Opposition No B 2 756 123 page: 2 of 11

The opposition is based on more than one earlier trade mark. The Opposition

Division finds it appropriate to first examine the opposition in relation to the

opponent’s French trade mark registration No 12 3 929 829, ‘WELL AND WELL’.

powders and oils; preparation for slimming purposes; make-up removing

preparations; hair lotions and creams; shampoos; hair dyes; dentifrices; dental

preparations; depilatory preparations; shaving preparations; nail care preparations

including nail lacquers and varnishes.

Class 5: Pharmaceuticals; pharmaceutical preparations; sanitary preparations for

medical purposes; dietetic food and substances adapted for medical use; appetite

suppressants for medical purposes; food for babies; dietary supplements;

disinfectants; cotton for medical purposes; materials for dressings; plasters;

medicines for human purposes; preparations for pharmaceutical purposes; lotions for

pharmaceutical purposes; pharmaceuticals for body care; vaccines; disinfectants;

organization consultancy; business information and inquiries; business research;

cost price analysis; procurement services for others; administrative processing of

purchase orders; commercial management assistance; communications

(presentation of goods and services on communication media); price comparison

services; commercial information and advice for consumers; business management

consultancy; professional business consultancy; mail advertising; arranging

newspaper subscriptions for others; arranging subscriptions to telecommunication

services; direct mail advertising, leaflets, prospectuses, printed matter, samples;

distribution of samples; business appraisals; business management including

purchasing, sales, order and stock management; organization of exhibitions,

space; market studies; market research; sponsorship search; sponsorship;

sponsorship (advertising); news clipping services; employment agencies; sales

promotion for others; advertising; on-line advertising on a computer network;

advertisement; dissemination of advertising matter; publication of publicity texts;

public relations; outsourcing services (business assistance); personnel recruitment;

marketing; referencing of goods and services; demonstration of goods; production of

Decision on Opposition No B 2 756 123 page: 3 of 11

advertising films; advertising film management; rental of vending machines; rental of

advertising materials including data processing equipment; drawing up of statements

of accounts; data search in computer files for others.

Class 44: Health care; medical assistance; advise and information relating to para-

pharmaceuticals; pharmaceutical assistance; pharmacy services; pharmacy advice;

Cosmetics, Hair lotions; Dentifrices.

Class 5: Pharmaceutical, veterinary and medical preparations; Sanitary preparations

for medical purposes; Dietetic food and substances adapted for medical or veterinary

materials for dressings; Material for stopping teeth, dental wax; Disinfectants;

Preparations for destroying vermin; Fungicides, herbicides.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments;

Artificial limbs, Artificial eyes and Artificial teeth; Surgical suture materials.

and instruments, artificial limbs, eyes and teeth, surgical suture materials;

Advertising, brokerage and consultancy in the aforesaid fields, offering the aforesaid

goods on the internet; Commercial administration of the licensing of the goods and

services of others, Publicity material rental; Rental of advertising space, Marketing

studies, Opinion polling; Direct mail advertising, distribution of advertising materials

(leaflets, prospectuses, printed material, samples), Dissemination of advertising

matter; Issuance, publication, announcements and declaration of publicity materials;

Advertising; Outsourcing services (business assistance); Business management;

Business administration; Office functions.

Contested goods in Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing,

scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair

lotions; dentifrices are identically covered by both marks.

Decision on Opposition No B 2 756 123 page: 4 of 11

Contested goods in Class 5

The contested pharmaceutical preparations; sanitary preparations for medical

purposes; food for babies; plasters; materials for dressings; disinfectants;

preparations for destroying vermin; fungicides, herbicides are identically covered by

veterinary preparations. Therefore, these goods are identical.

Further, given that ‘medical use’ covers ‘veterinary use’, it has to be considered that

the contested dietetic food and substances adapted for medical or veterinary use

medical use, to which they are thus identical.

The contested medical preparations are synonyms of the opponent’s medicines for

human purposes. These goods are thus identical.

The contested material for stopping teeth; dental wax are similar to a high degree to

The opponent’s suture material includes as a broader category the contested

surgical suture materials. These goods are thus considered identical.

The contested artificial limbs are included in the opponent’s broad category

orthopedic apparatus and articles. Therefore, these goods are identical.

The contested artificial teeth are highly similar to the opponent’s dental apparatus as

they have the same purpose. They can coincide in producer, end user and

distribution channels. Furthermore they are complementary.

Contested services in Class 35

Advertising is identically covered by both lists of services.

Decision on Opposition No B 2 756 123 page: 5 of 11

The contested services advertising […] in the aforesaid fields are included in the

opponent’s broader category advertising. Therefore, these services are considered

identical.

The contested services of consultancy [in the aforesaid fields] are included in the

opponent’s broader category business management consultancy. Therefore, these

of others; rental of advertising space; marketing studies; direct mail advertising,

distribution of advertising materials (leaflets, prospectuses, printed material,

samples), dissemination of advertising matter; business management; outsourcing

services (business assistance) are identically covered by both marks in spite of the

The opponent’s rental of advertising time on communication media; rental of

advertising space cover the same activities as the contested publicity material rental.

Therefore, these services are considered identical.

The broad category of the contested services issuance, publication, announcements

includes the opponent’s personnel recruitment. As the Opposition Division cannot

dissect ex officio the broad category of the contested services, they are considered

identical.

The contested office functions include as broader category the opponent’s data

search in computer files for others. As the Opposition Division cannot dissect ex

officio this broad category of contested services, they are considered identical to the

opponent’s services.

As regards the remaining contested services in Class 35, it has to be borne in mind

holds true for wholesaling services.

Moreover, since the contested services offering the aforesaid goods on the internet

cover the same activities as retailing of goods, the same holds true for these

contested services.

Decision on Opposition No B 2 756 123 page: 6 of 11

As seen above, bleaching preparations and other substances for laundry use,

cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential

oils, cosmetics, hair lotions, dentifrices, pharmaceuticals, medical and veterinary

preparations, sanitary preparations for medical purposes, dietetic food and

substances adapted for medical or veterinary use, food for babies, dietary

supplements for humans and animals, plasters, materials for dressings, disinfectants,

preparations for destroying vermin; fungicides; herbicides (in Class 5) and surgical,

medical, dental and veterinary apparatus and instruments; orthopedic apparatus and

articles; suture materials (in Class 10).

other substances for laundry use, cleaning, polishing, scouring and abrasive

preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices,

pharmaceuticals, medical and veterinary preparations, sanitary preparations for

medical purposes, dietetic food and substances adapted for medical or veterinary

use, food for babies, dietary supplements for humans and animals, plasters,

materials for dressings, disinfectants, preparations for destroying vermin, fungicides,

identical. This condition is not fulfilled as regards the material for stopping teeth and

dental wax which are not identical to any of the opponent’s goods.

As a result, the contested services wholesaling and retailing of material for stopping

teeth, dental wax; artificial eyes and teeth; offering the aforesaid goods on the

internet are dissimilar to the opponent’s goods in Classes 3, 5 and 10. Moreover,

they are also dissimilar to the opponent’s services in Classes 35 and 44. Indeed, they

have different natures and purposes, they do not usually come from the same

undertakings and they are not distributed through the same channels. Finally, they

are neither in competition nor complementary.

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, part of the goods and services found identical or similar to

varying degrees are directed at the public at large and the remaining part are

Decision on Opposition No B 2 756 123 page: 7 of 11

addressed exclusively to professionals, for example, some of the services in

Class 35 and some of the goods in Class 10.

The degree of attention may vary from average to high, depending on the target

public, the specialised nature of the goods or services, the frequency of purchase

and their price.

holds true for all the relevant goods in Class 5 as well as for the goods in Class 10

since they also affect state of health.

However, the level of attention displayed will be average for other goods and services

14/04/2011, T-466/08, ACNO FOCUS, EU:T:2011:182, § 49).

c) The signs

WELL AND WELL

Earlier trade mark Contested sign

The relevant territory is France.

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).

‘MediWell’ displayed in a blue typeface. Notwithstanding the fact that it consists of a

single word element, since the first part ‘Medi’ is displayed in bold letters while the

second part ‘Well’ is displayed in thin and slightly stylised letters, and both elements

begin with a capital letter, it has to be assumed that the relevant public will break

down the contested sign into these identifiable components.

The element ‘Well’ identically present in both signs is an English adverb that has no

meaning in French. In that regard it has to be recalled that, unless where the word is

very basic and is commonly used in the relevant territory, knowledge of a foreign

language cannot be presumed. Therefore, contrary to the applicant’s contention it

has to be considered that this English term is meaningless for a substantial part of

Decision on Opposition No B 2 756 123 page: 8 of 11

the French public (see for example, in this regard, the decisions of 23/08/2017 in

case B 2 650 193, B-WELL and of 08/05/2017 in case B 2 657 032, wellpharmashop

(fig.).

On the other hand, the element ‘and’ (‘et’ in French), being a very basic English word,

can be safely assumed to be understood by the whole relevant public as a connector

in question (06/10/2011, T-247/10, deutschemedi.de, EU:T:2011:579, § 40 to 44, by

analogy).

As regards the graphical representation of the contested sign, it has to be borne in

the verbal component of the sign usually has a stronger impact on the consumer than

the figurative component (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289,

§ 37).

It follows from all the aforesaid that the element ‘Well’ is the most distinctive element

of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in ‘Well’, present identically in both

signs which, however, is repeated twice in the earlier mark.

The pronunciation differs in the syllable ‘and’ in the middle of the earlier mark and in

the sound of the element ‘Medi’ at the beginning of the contested sign, which has no

counterpart in the earlier mark. The signs also differ in their structure, rhythm and

intonation.

above. Therefore, 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.

Decision on Opposition No B 2 756 123 page: 9 of 11

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

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on

market, the association which can be made with the registered mark, the degree of

similarity between the marks and between the goods or services identified. 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).

Even if the element ‘Well’ has no meaning and, hence, is distinctive, in the perception

of the French public, the coincidence between the marks in such element is not

sufficient to lead them to confuse the mark ‘MediWell’ with the earlier mark ‘Well and

Well’.

The differences between the signs, namely, the element ‘Medi’ of the contested sign,

the repetition of the word ‘Well’ and the additional element ‘and’ of the earlier mark

are clearly perceivable and provide a completely different structure to the signs,

which will not go unnoticed.

In view of the above, the Opposition Division considers that a likelihood of confusion

between the marks in question can be safely excluded even in the context of identical

goods.