OPPOSITION No B 2 946 740

Hero Nutritional Products, L.L.C., 991 Calle Negocio, San Clemente, California 92673, United States of America (opponent), represented by Boult Wade Tennant LLP, Verulam Gardens, 70 Gray’s Inn Road, London, WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

YummyHealth, LLC, 50 Main Street, White Plains, New York, New York 10606, United States of America (applicant), represented by Kilburn & Strode LLP, Lacon London, 84 Theobalds Road, London, WC1X 8NL, United Kingdom (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 946 740 is upheld for all the contested goods.

2. European Union trade mark application No 16 679 508 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should 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 of European Union trade mark application No 16 679 508 for the figurative mark . The opposition is based on European Union trade mark registration No 8 476 392 for the word mark ‘YUMMI’. 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 and services

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

Class 5: Pharmaceutical preparations; dietetic substances for medical use; dietetic foodstuffs for invalids and for medical purposes; herbal preparations for medical purposes; herbal supplements and herbal extracts; herbal beverages; vitamins, vitamin preparations; minerals, mineral preparations; vitamin and mineral food supplements; food supplements.

Class 30: Coffee, coffee essences, coffee extracts, mixtures of coffee and chicory; chicory and chicory mixtures, all for use as substitutes for coffee, tea, cocoa, natural sweeteners, rice, tapioca, sago, all for food for human consumption; sauces (condiments); spices; bran products (for food); vinegar, salt, pepper, condiments, mustard, spices, seasonings, culinary herbs; desserts and spreads ice cream; edible ices.

Class 35: Retail services relating to the sale of health foods and other foodstuffs, health products, vitamins, minerals, nutritional supplements, food supplements, sports nutrition products and herbal products.

The contested goods are the following:

Class 5: Nutritional supplement energy bars.

Class 30: Cheese flavored snack, namely, cheese chips, corn chips, flour-based chips, grain-based chips, pita chips and tortilla chips; cereal based energy bars; ready to eat, cereal derived food bars; health bars, namely, high-protein cereal bars.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 5

The contested nutritional supplement energy bars overlap with the opponent’s dietetic foodstuffs for invalids and for medical purposes. Therefore, they are identical.

Contested goods in Class 30

Bran is the husk of wheat, barley, oats or other grain, separated from the flour after grinding. It is often used for human consumption, to enrich breads and breakfast cereals, especially for the benefit of those wishing to increase their intake of dietary fibre.

The opponent’s bran products (for food) in Class 30 include various products such as chips, bars or snacks. The contested cheese flavored snack, namely, cheese chips, corn chips, flour-based chips, grain-based chips, pita chips and tortilla chips; cereal based energy bars; ready to eat, cereal derived food bars; health bars, namely, high-protein cereal bars have the same nature in a broad sense, as they are all grain-derived products. Moreover, the purpose, relevant public and usual producers of these goods are the same. They are distributed through the same channels. Therefore, they are considered similar.

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 at the public at large. The degree of attention is deemed average.

3. The signs

YUMMI
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 verbal elements of the marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division considers it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as Hungarian- and French-speaking consumers.

The earlier sign consists of the verbal element ‘YUMMI’.

The contested sign is a figurative mark containing the verbal elements ‘Yummy’ and ‘Health’ depicted in stylised white letters on a black background, in a combination of lower and upper case, with a particularly stylised letter ‘e’ in the word ‘Health’.

The contested sign has no element that could be considered clearly more dominant than other elements.

The word ‘YUMMI’ of the earlier mark is not meaningful and is, therefore, distinctive.

The verbal elements ‘Yummy’ and ‘Health’ of the contested sign are not meaningful either and are also distinctive to an average degree.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the initial part the first to catch readers’ attention.

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). This principle is particularly applicable to the present case, because the graphic depiction of the verbal element in the contested sign has a merely decorative purpose.

Visually, the signs coincide in their first four letters, ‘YUMM*’, which form almost the whole of the earlier mark and of the first element of the contested mark. They differ in the last letter of those verbal elements, ‘I’ versus ‘Y’, in the figurative depiction of the verbal elements in the contested sign and in the second word of the contested sign, ‘Health’.

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

Aurally, the pronunciation of the signs coincides in the sound of the elements ‘YUMMI’ and ‘yummy’, which are pronounced identically by the analysed public. The signs differ in the second verbal element, ‘Health’, of the contested sign, which has no counterpart in the earlier sign.

Therefore the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public under consideration. 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 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.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical or similar. The signs are visually and aurally similar to an average degree, and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public is average and the earlier mark enjoys a normal degree of distinctive character, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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).

Moreover, account is taken of the fact that 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).

The signs coincide almost entirely in their distinctive verbal elements: ‘YUMMI’, the only verbal element of the earlier mark, and ‘Yummy’, the first verbal element of the contested sign. The differences result mainly from the second element of the contested mark, ‘Health’.

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 come from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer 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 non-English-speaking public, such as the Hungarian- and French-speaking parts 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 8 476 392. It follows that the contested trade mark must be rejected for all the contested goods.

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 (formerly 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

Catherine MEDINA

Anna ZIÓŁKOWSKA

Pedro JURADO MONTEJANO

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.