CANCELLATION No C 41 721 (INVALIDITY) 

 

Healthyco AB, Finngatan 12, 223 62 Lund, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)

 

a g a i n s t

 

Aminosports Nutrientes Esenciales, S.L., c/ Cobalto, 11, 08907 Hospitalet de Llobregat, Spain  (EUTM proprietor), represented by Gt. De Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative).

On 15/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.		European Union trade mark No 18 087 200 is declared invalid for all the contested goods, namely: Class 5: Protein dietary supplements.
3.	The European Union trade mark remains registered for all the uncontested goods, namely: Class 3: Non-medicated cosmetics and toiletry preparations.

 

4.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

REASONS

 

On 26/02/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 087 200 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 5. The application is based on Swedish trade mark registration No 533 240 PROTEINELLA (word mark). The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The case for the applicant

The applicant argues that the verbal part of the contested mark in black and red is the most dominant element on a white background. It claims that the signs to be compared are thus ‘PROTEINELLA’ and ‘PROTELLA’. The applicant argues that the signs are visually and phonetically highly similar. It argues that both signs will be understood as having the concepts of ‘PROTEIN’ and the female name ‘ELLA’ and the signs are overall very similar. It claims that the goods in conflict are either identical or highly similar to the earlier goods. The applicant contends that the relevant consumers level of attention is low as they are frequently purchased goods that are not very expensive. It claims that as the earlier mark has a normal degree of inherent distinctiveness coupled with all of the similarities mentioned above, that there is a likelihood of confusion. It states that the same conclusion was found in the opposition B 3 110 124. Therefore, the application should be fully upheld.

The case for the EUTM proprietor

 

The EUTM proprietor denies any likelihood of confusion. It claims that the overall appreciation of both signs is different. It states that both marks are registered for protein related goods and that is referenced in the beginning of both signs. This element is descriptive so it cannot be exclusively claimed in relation to the goods. Therefore, it claims that a moderately-informed consumer will know how to differentiate the two products which are composed of proteins in the first two syllables and there will be no confusion. It points out the different syllables in the signs and argues that they are phonetically different as a result. It further argues that as the contested mark is written in black and red and over two lines while the earlier mark is a word mark these visual differences can distinguish the signs. It states that there are differences between the goods. It argues that there is a difference between food complements, which are concentrated sources of nutrients or other authorised food substances that have a nutritional effect, while food supplements, help to give the body the necessary nutrients when those administered through the food are not sufficient, that is, they are in charge of ensuring that the necessary vitamins, minerals, herbs, amino acids and enzymes are obtained. Therefore, they are not similar products.

It claims that ‘the consumer is accustomed to designating the good by the element that is the most characteristic, so that in this reduction it is generalized and becomes normal, even in the graphics, to the point of ruling out other components of the sign, which lose their individuality and move to the background, even being diffused in the market with the dominant expression, which, therefore, is evocative of the object or service that is marketed. The reducing process is not exclusive of the average consumer, when referring to normally used goods, but rather it also occurs in those who have high purchasing power in relation to high-priced products. It states that consumers evaluate the goods before buying them and after they have verified whether they have the relevant characteristics’. It argues that without any similarity between the signs there can be no likelihood of confusion. Therefore, the application for invalidity should be rejected.

In reply to the applicant’s observations, the proprietor it claims that both marks can co-exist on the market due to their clear phonetic differences. It provides evidence of the use of the sign on social media. It argues that the earlier mark is recognized by the mark ‘HEALTHYCO’ and not ‘PROTEINELLA’ as this is only a sub-product. Whereas the contested mark has more than double the followers, over 47,000, and the sign ‘PROTELLA’ always appears as the principle element and there are multiple accounts for different countries which shows a greater entrenchment in the population. It argues that there is no page that is completed dedicated to the earlier mark ‘PROTEINELLA’ as it is always named ‘HEALTHYCO’. Therefore, the proprietor uses the mark without confusion but the applicant does not. Moreover, it claims that the appearance of the products are different, the contested mark appears as registered on a bread spread with a white lid. Whereas the earlier mark is placed on a brown jar with a blue top and a pink label with the name ‘HEALTHYCO’ and ‘PROTEINELLA’ and the words ‘added protein’. Therefore, it insists that the visual and phonetic differences are enough to rule out a likelihood of confusion and the application for invalidity must be rejected.

The proprietor submitted the following evidence in support of its observations:

 Annex 1: An extract from Instagram for the applicant’s page www.instgram.com/healthyco/ showing 22,400 followers and an extract from Instagram for the proprietor’s page www.instagram.com/protella/ showing 47,000 followers.

 Annex 2: An extract from www.healhyco.se which shows products bearing the signs ‘HEALHYCO’ and ‘PROTEINELLA’.

 Annex 3: Photos of the applicant’s and proprietor’s goods.

 

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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. 

  

a) The goods

 

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 goods on which the application is based are the following: 

 

Class 5: Protein dietary supplements; Food supplements; Soy protein dietary supplements; Wheat dietary supplements; Food supplements consisting of amino acids; Dietary supplements for humans not for medical purposes

The contested goods are the following: 

 Class 5: Protein dietary supplements.

The Cancellation Division notes that the contested goods first need to be clarified. In the original application, in the first language, Spanish, the goods were initially listed in Class 5 as:

Suplementos alimenticios a base de proteínas; Complementos alimenticios a base de proteínas.

However, the English version of these goods was originally translated as protein dietary supplements only. The reason being that in the Nice classification the English term ‘protein dietary supplements’ in Class 5, which is term No 050435, is translated in Spanish as both suplementos alimenticios a base de proteínas, and complementos alimenticios a base de proteínas.

On 14/11/2019 the proprietor requested the restriction of the specification of the EUTM by the deletion of suplementos alimenticios a base de proteínas, thus the remaining goods in the first language of the EUTM in Class 5 were complementos alimenticios a base de proteínas.

However, as the terminology in English places both of these terms under the same heading, the English version of the goods did not change and remains protein dietary supplements which are identical to the earlier goods protein dietary supplements.

The proprietor has argued that there is a difference between food complements and food supplements. It states that food complements are defined as a concentrated source of nutrients or other authorised food substances that have a nutritional effect. They contain a variety of nutrients and their purpose is to complement the food in order to obtain greater benefits in the body.

However, it claims that food supplements help to give the body the necessary nutrients when those administered through the food are not sufficient, that is, they are in charge of ensuring that the necessary vitamins, minerals, herbs, amino acids and enzymes are obtained.

Even taking into account these alleged differences between food complements and supplements as laid forth by the proprietor and assuming that food complements were the remaining contested goods they would still be at least highly similar as their nature and purpose are the same, namely, they are goods taken in order to improve the health of the user by increasing their nutrition. They both have a nutritional effect and whether it is taken to obtain greater benefits or to make up for a deficiency these goods both have a nutritional effect on the user. They can be produced or sold by the same companies and are sold through the same distribution channels and their end users are the same. These goods could be in competition with each other also. Therefore, whether the contested goods are protein dietary complements or supplements the goods are at least highly similar if not identical. Therefore, the proprietor’s arguments in this regard must be rejected.

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 at least highly similar are directed at the public at large and at business customers with specific professional knowledge or expertise in nutrition.

The degree of attention for these goods will be at least higher than average, as they can affect the health of the relevant consumer. 

 

c) The signs

 

PROTEINELLA
Earlier trade mark	Contested sign

 

 

The relevant territory is Sweden.  

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The earlier mark is a word mark comprised of one term ‘PROTEINELLA’. Word marks without any irregular capitalization are protected for both upper and lower case typeface. Moreover, as it is a word mark it has no elements that could be considered clearly more dominant than other elements. Although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). The relevant consumer in Sweden will clearly understand the word ‘PROTEIN’ at the beginning of the earlier mark, especially in relation to the registered goods which are protein dietary supplements. This element is descriptive in relation to these goods and non-distinctive. The applicant argues that the final element ‘ELLA’ is a female name. Although in principle this may be true, it is more likely that the consumer will not view this element as a female name within the sign but will see it as a fanciful element and it is thus distinctive and the only distinctive part of the sign.

The contested sign is a figurative sign consisting of two elements ‘pro’ and ‘tella’ in lower case mildly stylized cursive italic letters, with the first letters ‘p’ and ‘t’ of each term in black and with the remaining letters in red. The term ‘pro’ is placed slightly to the left and above the term ‘tella’ and both are slanting upwards from left to right. The element ‘pro’ will be recognized by the relevant consumer as being the abbreviation of the word ‘protein’ in relation to the relevant goods which are protein dietary supplements (complements). Therefore, this element is weak. The word ‘tella’ has no particular meaning and is distinctive to a normal degree. The stylization of the typeface is no so fanciful or original and the use of two different colours and the position and layout of the term merely are decorative and secondary in nature as they serve to highlight the word element and divide it into two separate parts. The most distinctive part of the contested sign is the element ‘tella’. There is no element which is more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in the letters ‘PRO’, ‘T’ and ‘ELLA’. They differ in the additional letters ‘IN’ in the earlier mark and the fact that it is written as one single term, and in the contested sign the colours, stylization, layout and the fact that it is comprised of two words. The proprietor argues that as the contested mark is written in black and red and over two lines while the earlier mark is a word mark these visual differences can distinguish the signs.

 

However, it is noted that 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Moreover, the figurative component of the contested mark is merely decorative and secondary as mentioned above. Although it has a certain impact of course it is not enough to completely distinguish the signs as the proprietor claims.

The signs have identical beginnings and endings of their verbal elements. Overall, the signs have at least a low degree of similarity.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PRO-T-ELLA’ present identically in both signs.  The pronunciation differs in the sound of the additional letters ‛IN’ of the earlier mark, which have no counterpart in the contested mark. The proprietor argues that the signs have different syllables and argues that they are phonetically different as a result. It claims that both marks can co-exist on the market due to their clear phonetic differences. Even if the signs have some different syllables //PRO//TE//IN//E//LLA and //PRO//TE//LLA respectively, they coincide in the sound of many letters and have an identical first and very similar last syllable. Therefore, the signs have an average degree of phonetic similarity.

 

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘PROTEIN’ and ‘PRO’ included respectively in both signs, will be associated with ‘protein’ although this is descriptive in relation to the goods at issue. To that extent, the signs are conceptually similar to a 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 applicant 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 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.

 

e) Global assessment, other arguments and conclusion 

 

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). 

 

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.

The earlier mark has a normal degree of distinctive character. The relevant consumer is both the public at large and the professional customer and the level of attention is at least higher than average. In the present case the goods have been found to be at least highly similar if not identical. The signs in conflict were found to be visually at least similar to a low degree, phonetically similar to an average degree and conceptually similar to a low degree. However, the fact that the signs have a descriptive or otherwise non-distinctive or weak element in common does not suffice to deny all conceptual similarity between them. This fact does not alter the conceptual content of the signs (16/12/2015, T-491/13, TRIDENT PURE / PURE et al., EU:T:2015:979, § 93 and case-law cited; 15/10/2018, T-164/17, WILD PINK / PINK LADY et al., EU:T:2018:678, § 88-89). Both signs share the concept of protein and the remainder of the sign has no meaning for the public, although it coincides in the letters ‘ELLA’ in both signs, which is the only distinctive part of the earlier mark and part of the most distinctive part ‘tella’ of the contested mark. When it comes to buying these goods the public may visually view them first on a shelf or they may also have to request them orally from a shop attendant, as such the aural similarities between the signs are still important.

The proprietor argues that the descriptive element referring to protein cannot be exclusively claimed in relation to the goods. Therefore, it claims that a moderately-informed consumer will know how to differentiate the two products which are composed of proteins in the first two syllables and there will be no confusion. However, when recalling the sign the consumers will remember the concept of protein, although it is non-distinctive it is common to both signs and it is the only concept in both signs and furthermore, even the endings, although having no concept, also coincide in four letters ‘ELLA’.

The proprietor also argues that consumers evaluate the goods before buying them and after they have verified whether they have the relevant characteristics. It argues that without any similarity between the signs there can be no likelihood of confusion. However, for the reasons outlined above, there are similarities between the signs and therefore this argument must be rejected.

Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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; 21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). 

Therefore, a likelihood of confusion between the signs cannot be ruled out.

 

The EUTM proprietor argues that its EUTM has a reputation and has submitted various items of evidence to substantiate this claim. 

 

However, the right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM. Therefore, this argument must be rejected.

The proprietor also submitted some evidence of the use of the sign on social media. It argues that the earlier mark is recognized by the mark ‘HEALTHYCO’ and not ‘PROTEINELLA’ as this is only a sub-product. Whereas the contested mark has more than double the followers, over 47,000, and the sign ‘PROTELLA’ always appears as the principle element and there are multiple accounts for different countries which shows a greater entrenchment in the population. It argues that there is no page that is completed dedicated to the earlier mark ‘PROTEINELLA’ as it is always named ‘HEALTHYCO’. Therefore, the proprietor uses the mark without confusion but the applicant does not. Moreover, it claims that the appearance of the products are different, the contested mark appears as registered on a bread spread with a white lid. Whereas the earlier mark is placed on a brown jar with a blue top and a pink label with the name ‘HEALTHYCO’ and ‘PROTEINELLA’ and the words ‘added protein’. The Cancellation Division notes that for the present purposes it is irrelevant how the signs are actually being used on the market as what must be compared are the signs as registered. Furthermore, and merely for the sake of completeness, it is further noted that the applicant can use two or more signs simultaneously and therefore the house brand ‘HEALHYCO’ can be used alongside the product brand ‘PROTEINELLA’ without affecting the distinctive character of the sign as registered. The fact that the proprietor has more followers on social media than the applicant is also irrelevant for the present purposes as what must be determined is whether the signs as registered are similar. The proprietor did not claim that the signs peacefully co-exist but that merely they could due to the differences between the signs. Therefore, the above arguments fall outside the scope of the present proceedings and must be set aside.

 

Conclusion

 

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

 

Therefore, the application is well founded on the basis of the applicant’s Swedish trade mark registration No 533 240. It follows that the contested trade mark must be declared invalid for all the contested goods. The EUTM remains registered and valid for the uncontested goods.

 

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

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

 

 

The Cancellation Division

 

Zuzanna STOJKOWICZ

Nicole CLARKE

María Belén IBARRA DE DIEGO

 

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 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.