OPPOSITION Nо B 3 028 308

 

Woodbolt Distribution, LLC., 715 North Main Street, 77803 Bryan, United States of America and Woodbolt Distribution, LLC. D/b/a Nutrabolt, 3891 S. Traditions Drive, 77807 Bryan, United States of America (opponents), represented by WP Thompson, 138 Fetter Lane, London EC4A 1BT, United Kingdom (professional representative)

 

a g a i n s t

 

Wellness Direct, 51 Route De Rouquairol, 30900 Nimes, France (applicant), represented by Fidal, 6, Impasse Serge Reggiani Cs 40082, 44814 Saint-Herblain, Cedex, France (professional representative).

 

On 18/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 028 308 is rejected in its entirety.

 

2.	The opponents bear the costs, fixed at EUR 300.

 

REASONS

 

The opponents filed an opposition against some of the goods and services of European Union trade mark application No 17 299 421  (figurative mark), namely against all the goods and services in Classes 5, 32, and 35. The opposition is based on European Union Trade Mark registration No 14 894 034, C4 (word mark) and European Union Trade Mark registration No 11 501 574, C4 EXTREME (word mark). The opponents 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 opponents submit proof of use of the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 05/10/2017.

Earlier trade marks  No  14 894 034 and No 11 501 574 were registered on 23/03/2016 respectively 30/05/2013. Therefore, the request for proof of use is inadmissible as the grace period applies.

 

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 EUTM registration No 14 894 034.

a) The  goods and services

 

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

 

Class 5: Dietary and nutritional supplements. 

The contested goods and services are the following:

 

Class 5: Dietary and nutritional supplements; Probiotic supplements; Protein dietary supplements; Dietary supplements and dietetic preparations; Metabolic detoxifying agents; Multi-vitamin preparations.

Class 32: Protein-enriched sports beverages.

Class 35: Direct or online retailing of dietary and nutritional supplements, probiotic supplements, dietary supplements containing protein, dietary supplements and dietetic preparations, metabolic detoxification agents, multi-vitamin preparations, beverages containing protein for athletes.

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

The contested dietary and nutritional supplements are identically contained in both lists of goods.

The remaining contested Probiotic supplements; protein dietary supplements; dietary supplements and dietetic preparations; metabolic detoxifying agents; multi-vitamin preparations are included in the broad category of, or overlap with, the opponent’s dietary and nutritional supplements. Therefore, they are identical.

Contested goods in Class 32

The contested Protein-enriched sports beverages are similar to the opponents Dietary and nutritional supplements in Class 5, as they can coincide in the distribution channels, the sales outlets, the producers, the method of use and also be in competition with each other.

Contested services in Class 35

The contested Direct or online retailing of dietary and nutritional supplements, probiotic supplements, dietary supplements containing protein, dietary supplements and dietetic preparations, metabolic detoxification agents, multi-vitamin preparations, beverages containing protein for athletes are similar at least to a low degree to the opponents Dietary and nutritional supplements in Class 5, because of the close connection between them on the market from the perspective of the consumer. Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at and are of interest to the same public. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets.

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 and services found to be identical or similar to various degrees are directed at the public at large, but also at business customers with specific professional knowledge or expertise.

The degree of attention will vary between higher than average and high, depending on the specialised nature of the goods, the frequency of purchase and their price.

In particular, as all the relevant goods or services concern health related products, they will be subject to a greater degree of scrutiny on purchase than typical, everyday consumer goods (see also (10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81,§ 42-46 and therein cited case-law).

c) The signs

 

C4
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 earlier right is a word mark and consists of the letter ‘C’ and the numeral ‘4’. Word marks are protected as such, regardless of the typeface used. 

The verbal element ‘C’, due to the nature of the goods and services at issue (dietary supplements, in Class 5 and protein-enriched beverages in Class 32 and related retail services), will suggest at least to the majority of the relevant public a vitamin C content in these goods in the whole relevant territory (see decision of 27/03/2017, R 2251/2016‑5, Colon C, § 24), and will hence be of a low distinctive character. For the remaining part of the public, that does not perceive such an association, the letter ‘C’ will be of normal distinctive character.

The numeral 4 however has no meaning with respect to the relevant goods and is hence of normal distinctive character.

The contested sign is a figurative mark. It consists of a rectangular frame, separated in two half’s by a vertical line. The left half contains the letter ‘C’, and the right half the numeral ‘2’, whereby the ‘C’ and the ‘2’ both touch and merge in the vertical line.

Concerning the letter ‘C’, reference is made to the findings above.

The element ‘2’ of the contested sign has no meaning for the relevant public with respect to the goods and services at issue and is, therefore, distinctive.

The stylization of the contested sign is considered to be a less distinctive figurative element due to its more decorative nature.

 

Therefore, the numeral element ‘2’ is more distinctive than the figurative stylization .

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

  

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

  

Visually, the signs coincide in the letter ‘C’, which is however of a low distinctive character. They differ in the numerals ‘4’ and ‘2’, and the figurative stylization of the contested sign. Even if the stylization is of a more decorative nature, taking into account the particular depiction of the letter ‘C’ and the numeral ‘2’, it cannot be neglected. 

 

Therefore, the signs are similar to a low degree.

 

Aurally, the signs coincide in the letter ‘C’, which is however of a low distinctive character. They differ in the pronunciation of the numerals ‘4’ and ‘2’. The figurative element will not be pronounced.  

Therefore, the signs are similar to a no more than low degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived by the majority of the relevant public as referring to the letter ‘C’, which is however of a low distinctive character, and as such can hardly indicate the commercial origin. Furthermore, the signs also present the different numerals ‘4’ and ‘2’. Hence the signs are conceptually similar to an at most low degree.

 

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 distinctiveness of the earlier mark as a whole must be seen as normal, despite the presence of the letter ‘C’ in the mark, whose distinctiveness is low, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

Assessment of the similarity between two signs involves more than taking just one component of a composite trade mark and comparing it with another mark. Assessing the degree of similarity between the signs is based on the overall impression conveyed by them, bearing in mind, in particular, their distinctive and dominant components.

In the present case, the contested goods and services are identical and similar to the opponent’s goods. The relevant public’s degree of attention varies from higher than average to high. The earlier mark has an average distinctiveness.

The signs in dispute both consist of a letter and a number; both are, consequently, short marks and it is considered that the fact that they differ in their  numeral elements is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

 

While the signs are similar to a low degree, the perception of the target public is a critical factor in this assessment. Short signs are grasped in their totality at a glance. The difference at their second element, namely the numerals ‘4’ and ‘2’, bearing in mind the low distinctive character of the common letter ‘C’ for the majority of the relevant public, is more than sufficient to transform the visual, conceptual and the aural characteristics of a sign. Such a transformation would not go unnoticed by consumers, given that they must be deemed reasonably observant and circumspect (26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 62), especially when considering the low distinctive character of the coinciding element and the at least normal distinctive character of the remaining parts of the two signs.

Considering all the above and taking into account the ways the marks are presented, their differences and the low distinctive character of the coinciding letter ‘C’, there is no likelihood of confusion for the public.

Therefore, the opposition must be rejected.

  

Concerning EUTM registration No 11 501 574, C4 EXTREME (word mark), the Opposition Division notes that as this mark is even less similar to the one that has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

 

 

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 opponents are the losing parties, they must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Peter QUAY

Karin KLÜPFEL

Marta Maria CHYLIŃSKA

 

 

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.