OPPOSITION No B 2 741 034

Nutridays, Immeuble la Vigie 3 Impasse la Vigie, 35400 Saint Malo, France (opponent), represented by Cabinet Le Guen Maillet, 3 Impasse de la Vigie Cs 71840, 35418 Saint-Malo Cedex, France (professional representative)

a g a i n s t

Jurijus Gleba, Hausvogteiplatz 14, 10117 Berlin, Germany (applicant), represented by SNP Schlawien Partnerschaft mbB, Merzhauser Straße 161, 79100 Freiburg Germany (professional representative).

On 13/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 741 034 is upheld for all the contested goods, namely:

Class 5: Preparations for use as additives to food for human consumption [medicated].

2. European Union trade mark application No 15 349 905 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 349 905, namely, after partial rejection following the Opposition decision No B 2 740 820 it is now directed against all the goods in Class 5. The opposition is based on French trade mark No 103 772 641  and French trade mark No 103 770 462 for the word mark ‘NUTRINOMADE’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely French trade mark No 103 772 641  and French trade mark No 103 770 462 for the word mark ‘NUTRINOMADE’. For reasons of procedural economy, the Opposition Division will first examine the evidence in relation to No 103 772 641  .

The date of filing of the contested application is 18/04/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 18/04/2011 to 17/04/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Dietetic substances adapted for medical use.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; milk beverages, milk predominating.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; yeast, baking-powder; ice for refreshment; sandwiches; pizzas; cookies; cakes; chocolate; beverages based on cocoa, coffee, chocolate or tea.

Class 32: Beers; mineral and aerated waters; fruit beverages and fruit juices; syrups and other preparations for making beverages; lemonades; fruit nectars, non-alcoholic; sodas water; aperitifs, non-alcoholic

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 14/09/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 19/11/2017 to submit evidence of use of the earlier trade marks. This time limit was extended until 19/01/2018. On 11/01/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• A product picture and a technical specification sheet of in French with translation into English which states that it is a preparation for flavoured high-protein beverage available in different flavours such as chocolate, orange, grapefruit, peach and mango.

• 17 invoices covering the period from 2012-2015 out of which at least seven contain reference to the full name ‘BOISSON NOMADE HP’ with addition of the flavour such as ‘‘BOISSON NOMADE HP ORANGE’, ‘BOISSON NOMADE CAFÉ HP’, ‘BOISSON NOMADE CHOCOLAT HP’. The remaining invoices do not include the full name but they also refer to ‘BOISSON NOMADE’ with the omission of ‘HP’. The total sale value amounts to around 400 euros taking into account only the invoices with the full product description.

• A table with sales figures of ‘BOISSON NOMADE HP ORANGE’ covering the period from 2011-2016 for France.

• Affidavit from the Nutridays accountant Mr Daniel Quiniou dated 12/12/2017 stating that Nutridays has been selling ‘NOMADE’ and ‘NUTRI-NOMADE’ products since 2011.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The applicant further argues that the declaration cannot be considered as admissible evidence according to Article 78(1)(f) EUTMR since it is a simple written declaration.

However, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up.

Furthermore, although it is true that statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Furthermore, although certain pieces of evidence stem from the opponent, such as invoices, they have been provided to third parties or are used publicly or demonstrate public use and, therefore, show external use of the mark in the context of commercial activity.

The applicant argues that the trade mark does not appear on the invoices. In the present case, ‘BOISSON NOMADE HP is depicted in a clearly visible position on the invoices and on commercial material, so that a link between the use of ‘BOISSON NOMADE HP’ and the relevant goods can be established. This is, moreover, further confirmed by the fact that the earlier mark is the only sign used to identify the goods, as all the remaining elements are descriptive, so that consumers will see the earlier mark necessarily as an indication of origin of these goods. Therefore, the use of ‘BOISSON NOMADE HP’ on the invoices, is considered sufficient to prove use of it as a trade mark.

The invoices show that the place of use is France. This can be inferred from the language of the documents (‘French’) and some addresses in France. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial sales volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

The documents filed, namely invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the invoices are not numerous they are spread over a considerable part of the relevant period and they are widely spread throughout the territory of France. Moreover, the use of the mark need not be quantitatively significant for it to be deemed genuine. At least some of the invoiced products bear the full name ‘BOISSON NOMADE HP’ and a short description of the product which enables the Opposition Division to identify the goods to which they refer. The invoices together with the remaining evidence show that the trade mark has been genuinely used in the relevant territory.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the additional elements indicating the flavour of the goods such as ‘CHOCOLAT’ or ‘ORANGE’ lack distinctive character and, as such, they do not alter the distinctive character of the mark in the form in which it was registered.

Moreover, the picture of the product contains the sign whereas the earlier trade mark that is subject to the proof of use requirement is the following: . The word ‘BOISSON’ means beverage is French and as such it is purely descriptive in relation to the relevant goods. The most distinctive elements of the marks are ‘NOMADE HP’ and they appear in both marks. The graphic depiction plays merely a decorative role. Therefore, it is considered that the alterations do not affect the distinctive character of the earlier mark.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for preparations for making high-protein beverages (adapted for medical use). These goods can be considered to form an objective subcategory of dietetic substances adapted for medical use, namely preparations for making high-protein beverages (adapted for medical use). Therefore, the Opposition Division considers that the evidence demonstrates genuine use of the trade mark only for preparations for making high-protein beverages (adapted for medical use).

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: Preparations for making high-protein beverages (adapted for medical use).

The contested goods, after limitation following the Opposition decision No B 2 740 820 of 28/08/2017, are the following:

Class 5: Preparations for use as additives to food for human consumption [medicated].

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.

The contested preparations for use as additives to food for human consumption [medicated] are intended to be consumed in addition to a normal diet to supplement medical treatment. As such they are considered similar to a high degree to the opponent’s preparations for making high-protein beverages (adapted for medical use). These goods have a similar nature and purpose of enhancing the body condition. They can be distributed through the same channels, target the same public and have the same commercial origin.

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 similar to a high degree are directed at the public at large and at business customers with specific professional knowledge or expertise such as nutritionists.

As for the goods affect one’s state of health and nutrition, the relevant public, both professionals and the public at large, will display a high degree of attention for all the relevant goods. (23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64 and 10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 46).

3. The signs

	NOMAD
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).

The element ‘HP’ of the earlier mark has no evident meaning for the relevant public and is, therefore, distinctive.

In French, the element ‘NOMADE’ of the earlier mark refers to a member of the group of people that travels from one place to another instead of living in one place. The word ‘NOMAD’ of the contested sign, due to its close resemblance to the word ‘NOMADE’ will be understood in the same way. As this meaning is not related to the relevant goods, both elements ‘NOMADE’ and ‘NOMAD’ are normally distinctive.

The element ‘BOISSON’ of the earlier sign is the French word that means ‘a beverage’. Bearing in mind that the relevant goods are preparations for making beverages, this element is non-distinctive for these goods.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in ‘NOMAD’ which constitutes the whole contested sign. However, they differ in the non-distinctive word ‘BOISSON’, the distinctive element ‘HP’ which is placed at the end of the sign, the additional letter ‘E’ and the graphic depiction of the earlier sign. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Moreover, in the case of word marks, the words as such are protected or seek protection; therefore, it is immaterial for the visual comparison whether they are depicted in upper or lower case letters, or in which particular typeface they are presented.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‛NOMAD/NOMADE’ as the French public will not pronounce the final letter ‘E’ of the earlier sign. At the same time the word ‘NOMAD’ of the contested sign, that does not exist in French language as such, is likely to be pronounced the same as its French equivalent ‘NOMADE’ as the people will link these words with the same concept.

The pronunciation differs in the sound of the letters of the non-distinctive element ‛BOISSON’ and ‘HP’ of the earlier sign, which have no counterparts in the contested mark.

Therefore, the signs are at least similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the perception of the word ‘NOMADE’ and ‘NOMAD’ signs are conceptually highly similar.

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, 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods have been found similar to a high degree to the opponent’s goods and they target the public at large and professionals. The degree of attention is high.

The signs are conceptually similar to a high degree, aurally similar to at least an average degree and visually similar to an average degree.

The similarities are found in the distinctive element ‘NOMAD(E)’ and the differences between the signs are mostly confined to non-distinctive or secondary elements and aspects.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer, even with a high degree of attentiveness, will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark No 103 772 641  . It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right French trade mark No 103 772 641  leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). For the same reason there is no need to assess proof of use with regard to French trade mark No 103 770 462.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Kieran HENEGHAN

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.