OPPOSITION No B 2 755 356

Fit Foods Ltd., 1589 Kebet Way, V3C 6L5 Port Coquitlam, Canada (opponent), represented by Bap IP bvba - Brantsandpatents, Charles de Kerchovelaan 17, 9000 Gent, Belgium (professional representative)

a g a i n s t

Monster Energy Company, 1 Monster Way, 92879 Corona, United States (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, EC4A 1JP London, United Kingdom (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 755 356 is upheld for all the contested goods.

2. European Union trade mark application No 15 426 711 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 426 711 ‘M MUTANT’. The opposition is based on, inter alia, European Union trade mark registration No 8 385 924 ‘MUTANT MASS’. 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.

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 European Union trade mark registration No 8 385 924 since it has the broader scope of protection.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Dietary and nutritional supplements; drink mixes used as a meal replacement; all the aforementioned goods for medical and for non-medical purposes.

Class 29: Protein based nutritional drink mixes, protein preparations in the form of liquids, meal replacement bars, protein based snack bars, protein bars; all the aforementioned goods for non-medical purposes; protein powders.

The contested goods are the following:

Class 5: Nutritional supplements.

Class 32: Non-alcoholic beverages.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Nutritional supplements are identically contained in both lists of goods.

Contested goods in Class 32

The opponent’s protein based nutritional drink mixes; all the aforementioned goods for non-medical purposes in Class 29 are drinks composed of protein that may be milk mixed with other substances such as fruits. Therefore, the contested non-alcoholic beverages are considered to be similar to these goods of the opponent since they have the same purpose. They usually coincide in relevant public and distribution channels and furthermore, they are in competition.

b) 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 at the public at large and in the case of nutritional supplements in Class 5 also at professionals in the medical and pharmaceutical fields. These latter goods in Class 5 are health related and can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect. For the remaining goods, the degree of attention is average.

c) The signs

MUTANT MASS	M MUTANT
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.

The common element ‘MUTANT’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public since it is more prone to confusion due to its comprehension of the common element composing the sings.

The element ‘MUTANT’ in the earlier mark refers to ‘an animal or plant that is physically different from others of the same species because of a change in its genes’ (Collins English Dictionary). Since it has not a direct meaning in relation to the relevant goods, it is considered distinctive.

The element ‘MASS’ in the earlier mark refers to, among other meanings, ‘the size of a body; bulk’, this latter meaning referring to ‘a large person’s body or to their weight or size’ (Collins English Dictionary). Bearing in mind that the relevant goods are nutritional supplements and protein based nutritional drink mixes, all the aforementioned goods for non-medical purposes, this element is weak for these goods, since it indicates the intended purpose of these goods.

The element ‘M’ in the contested sign will be associated to the concept of the letter it represents; since it does not have any meaning in relation to the relevant goods, it is distinctive.

The element ‘MUTANT’ in the contested sign will be perceived with the same meaning explained above, and, for the same reasons of not having a direct meaning as regards the relevant goods it is considered to be distinctive.

Visually and aurally, the signs coincide in the element ‘MUTANT’ and in the syllables MU-TANT. However, they differ in the letter and sound ‘M’ of the contested sign and in the element and syllable ‘MASS’ of the earlier mark which is a weak element.

Therefore, the signs are visually and aurally 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, the 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.

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 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 weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar and target the public at large and the professional public in the medical and pharmaceutical fields. The degree of the public’s attention will vary from average to high depending on the nature of the goods concerned as explained above (higher in the case of goods of Class 5).

The signs have been considered visually and aurally similar to an average degree and conceptually similar to a high degree to the extent that they coincide in the distinctive element ‘MUTANT’ and differ in the letter ‘M’ of the contested sign and in the weak element ‘MASS’ at the end of the earlier mark.

Furthermore, it must be pointed out that likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones. In the present case, it is likely that the contested mark will be associated by the public with the earlier mark, creating an impression that the goods originate from the same undertaking or economically linked undertakings, especially as both signs have the abovementioned element ‘MUTANT’ in common, and the contested sign with its additional element ‘M’ represents a new line or a parallel line of the opponent’s products (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Even if part of the public might pay special attention during the purchase of the goods in Class 5, the fact that the signs share significant similarities, together with the fact that both signs cover identical goods in that Class, might lead consumers to think that the goods come from the same or economically-linked undertakings. Accordingly, even if the level of attention might be higher than average in relation to the goods involved, this will not be enough as to avoid such confusion and/or association under the present circumstances.

Considering all the above, 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 the opponent’s European Union trade mark registration No 8 385 924. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 8 385 924 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

Aldo BLASI

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.