OPPOSITION No B 2 685 330

Myolabs, Kortrijksesteenweg 198, 8530 Harelbeke, Belgium (opponent), represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830 Sint-Martens-Latem, Belgium (professional representative)

a g a i n s t

LifeVantage Corporation, 9785 South Monroe Street, Suite 300, Sandy Utah 84070, United States of America (applicant), represented by Mitscherlich Patent- Und Rechtsanwälte PartMBB, Sonnenstraße 33, 80331 München, Germany (professional representative)

On 29/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 693 516330 is partially upheld, namely for the following contested goods:

Class 5: Dietary and nutritional supplements; nutraceuticals for use as dietary and nutritional supplements; functional foods for use as dietary or nutritional supplements, namely, dietary and nutritional supplements and functional foods used for health and weight management; powdered nutritional supplement drink mix and concentrate; nutritional additives sold separately to be used with beverages; whey protein supplements; nutritional supplement bars; protein supplements; nutritional supplement shakes; protein supplement shakes; appetite suppressants; nutritional supplements in the nature of nutritionally soft chews; pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals.

Class 32: Nutritional drink mix; nutritional additives for use in beverages, namely, beverages for health and weight management; sports drinks and energy drinks enhanced with nutritional additives

2. European Union trade mark application No 14 981 7163 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 981 7163. The opposition is based on European Union trade mark registration No 11 785 144. 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.

1. The goods

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

Class 5: Nutritional supplements.

The contested goods are the following:

Class 5: Dietary and nutritional supplements; nutraceuticals for use as dietary and nutritional supplements; functional foods for use as dietary or nutritional supplements, namely, dietary and nutritional supplements and functional foods used for health and weight management; powdered nutritional supplement drink mix and concentrate; nutritional additives sold separately to be used with beverages; whey protein supplements; nutritional supplement bars; protein supplements; nutritional supplement shakes; protein supplement shakes; appetite suppressants; nutritional supplements in the nature of nutritionally soft chews; pharmaceutical 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; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 32: Beverage mix; nutritional drink mix; nutritional additives for use in beverages, namely, beverages for health and weight management; sports drinks and energy drinks enhanced with nutritional additives; beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

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 nutritional supplements are identically reproduced in both lists of goods.

The contested dietary supplements; dietary supplements for humans and animals overlap with the opponent’s nutritional supplements in the sense that they are all intended to add further nutritional value to the diet. Therefore, these goods are considered identical.

The contested nutraceuticals for use as dietary and nutritional supplements; functional foods for use as dietary or nutritional supplements, namely, dietary and nutritional supplements and functional foods used for health and weight management; powdered nutritional supplement drink mix and concentrate; nutritional additives sold separately to be used with beverages; whey protein supplements; nutritional supplement bars; protein supplements; nutritional supplement shakes; protein supplement shakes; appetite suppressants; nutritional supplements in the nature of nutritionally soft chews are all intended to provide nutrients that may otherwise not be consumed in sufficient quantities, whether classified as food or drugs. Therefore, they are either included in or overlap with the opponent’s broad category of nutritional supplements and consequently considered identical.

The contested pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use share the same general purpose with nutritional supplements to the extent that they can prevent diseases. They are being sold through the same distribution channels and target the same public, either for humans or animals. Therefore, these goods are similar.

However, the remaining contested sanitary preparations for medical purposes; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides have no points of contact with the opponent’s goods. They do not share the purpose of nutrition or prevention of diseases, they are not produced by the same companies and not distributed through the same channels of sale, consequently they do not target the same public; they are neither complementary nor in competition with each other. Consequently, these goods are dissimilar.

Contested goods in Class 32

The contested nutritional drink mix; nutritional additives for use in beverages, namely, beverages for health and weight management; sports drinks and energy drinks enhanced with nutritional additives share the same purpose with the opponent’s goods in that they serve to compensate for nutritional value by consumption of – in this case – beverages. They are produced by the same companies and target the same public. Moreover, they can be bought in the same specialized shops, like for instance in sports nutrition and food supplement stores. Consequently, these goods are similar.

However, regular beverages or preparations for making them of the remaining contested goods beverage mix; beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages do not share such purpose with the opponent’s goods and thus are not in competition, nor are they being produced by the same companies or sold through the same channels. Consequently these goods are dissimilar.

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 or similar are directed partly both at the public at large and at customers with specific professional knowledge or expertise in the field of nutrition (e.g. nutraceuticals for use as dietary and nutritional supplements in Class 5 may target both the average consumer and dieticians). The degree of attention varies from average to higher than average, depending on the exact nature and purpose of the goods and the health effects that they may have.

Further, it is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

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.

3. The signs

PHYSIQ	LIFEVANTAGE PHYSIQ
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, and for reasons of procedural economy, 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 the word mark ‘PHYSIQ’ and the contested sign is a word mark composed of two words ‘LIFEVANTAGE PHYSIQ’.

The coinciding element ‘PHYSIQ’ will be perceived in the relevant territory as referring to the ‘physique’, namely the form, size, and development of a person’s body. However, as the word is not sufficiently direct in relation to the relevant goods, contrary to the applicant’s arguments, it is not descriptive of the goods or otherwise weak and therefore enjoys a normal degree of distinctiveness.

As to the contested sign’s first word element ‘LIFEVANTAGE’ in the context of the relevant goods, consumers will perceive this term as an informative indication, in a semantic unit, of the characteristics of the goods, namely that they afford advantage to someone’s life. Therefore, this element is considered weak.

Visually, the signs coincide in the word ‘PHYSIQ’ which makes up the entire earlier mark. They differ in the element ‘LIFEVANTAGE’. However, considering that the word ‘PHYSIQ’ is the only element of the earlier mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘PHY-SIQ’ present identically in both signs and to that extent the signs are aurally similar. The pronunciation differs in the syllables ‘LI-FE-VAN-TA-GE’ of the contested sign, which has no counterpart in the earlier mark. As stated above, the word ‘LIFEVANTAGE’ in the contested sign is weak in relation to the goods in question.

Therefore, it is considered that the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the perception of the marks by the relevant public and therefore it is concluded that they are similar to the extent that they both contain the element ‘PHYSIQ’.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case and as explained under c) the earlier trade mark has no direct meaning for any of the goods in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the goods are partly identical, partly similar and partly dissimilar and the degree of attention paid by the relevant public varies from average to higher than average.

The signs are, on all levels, similar to an average degree.

Under these circumstances, the differences between the signs, resulting from the verbal element ‘LIFEVANTAGE’, – although it appears at the beginning of the contested sign, which is the part of a sign to which more attention is generally paid - is not sufficient to counteract the fact that the earlier mark is entirely incorporated in the contested sign and that the differentiating verbal element ‘LIFEVANTAGE’ is weak.

Taking the above into account, the Opposition Division considers that the similarity between the signs might lead at least part of the relevant public, even with a high degree of attention, to think that the contested goods and the opponent’s goods come from the same undertaking or from economically-linked undertakings and that the contested sign is a sub-brand of goods connected to the earlier mark.

Considering all the above, including the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union.

Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 11 785 144. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ioana MOISESCU

Cynthia DEN DEKKER

Jessica LEWIS

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.