OPPOSITION No B 2 615 618

Staks Of Limited, 17 The Squirrels, Bushey Heath, Bushey, Hertfordshire WD234RT, United Kingdom (opponent)

a g a i n s t

Vitevo Health Limited, 1 Minnowbrook, Terenure Road West, Dublin 6, Ireland (applicant).

On 27/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 615 618 is upheld for all the contested goods.

2. European Union trade mark application No 14 512 917 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 512 917. The opposition is based on European Union trade mark registration No 13 321 948. The opponent invoked Article 8(1)(b) and 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.

1. The goods

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

Class 5: Dietary supplements; food supplements; vitamin supplements; mineral supplements; nutritional supplements; amino acid supplements; protein supplements; whey protein supplements; carbohydrate supplements; herbal supplements; creatine supplements; fat loss supplements; anti ageing supplements; hormone supplements; fibre supplements; joint supplements; antioxidants; oils (medicinal); cod liver oil; meal replacement powders; nutritional drink mixes for use as a meal replacements; dietary preparations for slimming purposes; food supplements (non-medicated) being glucose confectionery.

Class 25: Clothing; footwear; headgear.

Class 29: Vitamin, protein and mineral enriched foods and foodstuffs and beverages; nutritional foodstuffs; protein based nutritional drink mixes for use as a meal replacements; dried milk-based products for meal replacements; milk based beverages; edible oils and fats; protein shakes; protein based drinks and foodstuffs; drinks and foodstuff for use during exercise and for sporting and slimming purposes; drinks and foodstuffs fortified with carbohydrate; drinks and foodstuff fortified with fibre for muscle maintenance and health benefits; whey protein.

Class 30: Flapjacks; caramel confectionery; caramel and hazelnut confectionery; flavouring for food and beverages; carbohydrate-based nutritional drink mix for use as a meal replacements; herbal extracts other than for medical purposes; chocolate coated protein based confectionery; plain protein based confectionery; energy bars; nutritional energy protein and weight-gain confectionery bars including meal replacement bars and sweets for health, fitness and well-being markets; energy bars; high protein cereal bars.

Class 32: Mineral and aerated drinks; non-alcoholic drinks; energy gels and drinks; sports gels and drinks; fruit drinks and fruit juices; preparations for making energy drinks and sports drinks; drinks fortified with protein; drinks fortified with vitamins; drinks fortified with minerals; drinks fortified with carbohydrate; drinks fortified with fibre; drinks fortified with dietary supplements; isotonic beverages; beverages for meal replacement.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; diet capsules; dietary and nutritional supplements; dietary supplements consisting of vitamins; dietary supplemental drinks; food supplements consisting of trace elements; food supplements consisting of amino acids; food supplements; mixed vitamin preparations; mineral food supplements; multi-vitamin preparations; nutraceuticals for use as a dietary supplement; nutritional supplement meal replacement bars for boosting energy; nutritional supplements; vitamins and vitamin preparations; vitamin preparations; vitamin supplements; vitamin preparations in the nature of food supplements.

Contested goods in Class 5

Dietary supplements; dietary and nutritional supplements (the latter listed twice in the contested application); food supplements; vitamin supplements are identically contained in both lists of goods.

The contested dietetic preparations include as a broader category the opponent’s dietary supplements. Since the Opposition Division cannot dissect ex officio the broad category of the opponent’s goods, they are considered identical to the contested goods.

The contested dietary supplements consisting of vitamins are included in the broader category of the opponent’s dietary supplements. Therefore, they are identical.

The contested diet capsules; dietary supplemental drinks overlap with the opponent’s dietary supplements. It is impossible for the Opposition Division to separate clearly these categories of goods. Therefore, they are considered identical.

The contested food supplements consisting of trace elements; food supplements consisting of amino acids; mineral food supplements are included in the broad category of the opponent’s food supplements. Therefore, they are identical.

The contested mixed vitamin preparations; multi-vitamin preparations; vitamins and vitamin preparations; vitamin preparations; vitamin preparations in the nature of food supplements overlap with the opponent’s vitamin supplements. It is impossible for the Opposition Division to separate clearly these categories of goods. Therefore, they are considered identical.

The contested nutraceuticals for use as a dietary supplement; nutritional supplement meal replacement bars for boosting energy cannot be clearly separated from the opponent’s nutritional supplements. These broad categories of goods overlap and are, therefore, considered identical.

2. 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 are directed at the public at large. The goods at issue are specialised goods targeting business customers with specific professional knowledge or expertise, such as nutritionists. The degree of attention will vary from average to higher than average.

3. The signs

STAKS	STAX
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, ‘STAKS’.

The contested sign is a word mark, ‘STAX’.

Neither of the signs, as such, has a meaning for the relevant public.

However, it cannot be excluded that part of the relevant public will associate the signs with the English word ‘stacks’ due to the similar spelling and identical pronunciation. This part of the public will perceive the elements ‘staks’ and ‘stax’ as meaning, inter alia, the plural of ‘a pile of objects, typically one that is neatly arranged’ (information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com). Taking into account the nature of the goods in question, namely dietary supplements and preparations, and considering that this English word does not describe, or even allude to, any of their essential characteristics, the distinctiveness of the marks at issue must be seen as normal.

The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than others.

Visually, the signs coincide in the sequence of letters ‘STA’ at their beginnings. The signs differ in the letters ‘KS’ at the end of the earlier sign and the letter ‘X’ at the end of the contested sign.

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

Aurally, the relevant public in question will pronounce the letter ‘X’ of the contested sign and the letters ‘KS’ of the earlier mark identically.

Therefore, the signs are aurally identical, because they will both be pronounced as ‘staks’.

Conceptually, part of the public in the relevant territory will perceive both signs as meaning the plural of ‘a pile of objects, typically one that is neatly arranged’. This is due to the similarity of the signs ‘STAX’ and ‘STAKS’ to the English word ‘stacks’. To this extent, and for this part of the public, the signs are conceptually identical.

For the remaining part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical. The signs are visually similar to an average degree, aurally identical and, for part of the relevant public, conceptually identical.

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the trade marks and between the goods covered. Accordingly, a lesser degree of similarity between these goods 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). In the present case, this principle is of particular importance, as the goods are identical.

It has been established that the earlier mark is of normal distinctiveness in relation to the goods in question.

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods in question, and 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; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38). The relevant public for the goods in question includes the public at large and the professional public. The degree of attention will vary from average to higher than average.

Considering all the above and, in particular, the principle of imperfect recollection, as well as the considerable similarities between the signs under comparison and the identity between the goods, it is concluded that 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 European Union trade mark registration No 13 321 948. It follows that the contested trade mark must be rejected for all the contested goods.

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(5) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Gueorgui IVANOV

Gailė SAKALAITĖ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.