OPPOSITION Nо B 3 121 428

 

Jupiter Laboratories LLC, 1209 Main Street, Unit 114, 33458 Jupiter, United States of America (opponent), represented by A2 Estudio Legal, Calle Javier Ferrero, 10, 28002 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Globamos Inc., Sl55 Tower, Av. Samuel Lewis, Panama City, Panama (applicant), represented by Friederike Lemme, Nürnberger Straße 24a, 10789 Berlin, Germany (professional representative).

On 04/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.		Opposition No B 3 121 428 is partially upheld, namely for the following contested goods:
	Class 5: Nutritional supplements.
2.	European Union trade mark application No 18 217 115 is rejected for all the above goods. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 18/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 217 115 ‘JOINTFUEL’ (word mark). The opposition is based on European Union trade mark registration No 18 127 617, (figurative mark). 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.

a) The goods and services

 

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

Class 5: Vitamin supplements.

The contested goods and services are the following:

 

Class 5: Nutritional supplements.

Class 35: Advertising; marketing; advertising and marketing; publicity and sales promotion services.

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 nutritional supplements overlap with the opponent's vitamin supplements. Therefore, they are identical.

Contested services in Class 35

Advertising, marketing, publicity and sales promotion services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and then create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. The nature and purpose of advertising services are fundamentally different from the manufacture of goods or from the provision of many other services. Therefore, advertising and marketing services are generally dissimilar, even to the goods or services being advertised. As such, the contested advertising; marketing; advertising and marketing; publicity and sales promotion services are dissimilar to the opponent's vitamin supplements, because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 are directed at the public at large, as well as business customers with specific professional knowledge or expertise in the nutrition field.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same applies to nutritional supplements which may have an effect on the consumer’s health. The degree of attention will, therefore, be above average.

c) The signs

 

	JOINTFUEL
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 differing and secondary verbal elements ‘ADVANCED JOINT FORMULA’ in the earlier mark will be immediately understood by the English-speaking part of the public as referring to a modern and well-developed method used to promote good joint health (information extracted from Cambridge Dictionary on 25/05/2021 at https://dictionary.cambridge.org/dictionary/english/advanced, https://dictionary.cambridge.org/dictionary/english/joint and https://dictionary.cambridge.org/dictionary/english/formula). Given the nature of the relevant goods, this part of the public will perceive this expression as a mere descriptive indication with laudatory connotation devoid of any trade mark significance which will not even be read when consumers refer to the mark. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which the likelihood of confusion will be higher.

Given the clear meaning suggested by the components ‘JOINT’ and ‘FUEL’ the coinciding element ‘JOINTFUEL’, being the dominant verbal element in the earlier mark and the sole element of the contested sign, will be perceived by the relevant public as alluding to a substance that provides power for the joints and as such has a lower than average degree of distinctiveness. Indeed, while ‘JOINT’ will be immediately perceived as referring to ‘a place in your body where two bones are connected’ (see dictionary reference above), ‘FUEL’ will be attributed the meaning of ‘a substance which is used to provide power, usually by being burned’ (information extracted from Cambridge Dictionary on 25/05/2021 at https://dictionary.cambridge.org/dictionary/english/fuel).

Despite the allusive connotation, the coinciding element ‘JOINTFUEL’ is on equal footing concerning its distinctiveness in both marks and is anyway the most distinctive and dominant element of the earlier mark given that it is only accompanied by very weak or non-distinctive elements, or elements of purely decorative nature. Indeed, the depiction of a joint positioned in the letter ‘O’ of the verbal element ‘JOINTFUEL’ describes the parts of the body for which the relevant goods will have beneficial effects. The secondary element ‘360’, positioned inside of an arrow which is pointing a circular direction directly informs consumers that the relevant goods provide a complete (360 degree) vitamin intake and, as such, it has only a minimal degree of distinctiveness (if any) and will not be read by consumers. Furthermore, the rather standard stylisation of the verbal elements composing the earlier mark will be perceived as having a decorative nature and will not be attributed trade mark significance.

Therefore, the signs are only differentiated by very weak or non-distinctive elements of the earlier mark that will have a minimal impact (if any) in the consumer’s perception. It follows that the signs are visually and conceptually highly similar and aurally identical.

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.

Considering what has been stated above in section c) of this decision with regard to the distinctiveness of the elements of the earlier mark, as well as taking into account that the expression ‘JOINTFUEL’, understood as already described above, alludes to the characteristics and purpose of use of the relevant goods, the distinctiveness of the earlier mark must be overall seen as below average for the relevant goods in Class 5.

e) Global assessment, other arguments and conclusion

 

The goods concerned are partly identical and partly dissimilar. The public’s degree of attentiveness is above average. The distinctiveness of the earlier mark is below average. However, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment, and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T 112/03, Flexi Air, EU:T:2005:102).

In the present case, the contested sign is identically incorporated in the earlier mark where it is the most dominant and distinctive element the sign. The differences between the signs are confined to elements of the earlier mark that are non-distinctive, of minimal distinctiveness (if any) or of purely decorative nature. This results in the signs being visually and conceptually highly similar and aurally identical.

Even considering the lower than average degree of distinctiveness of the earlier mark and the above average degree of attention of the public, the striking similarities between the signs implies that consumers will not be able to distinguish between them.

Considering all the above, the Opposition Division finds that there is a clear likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As already 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.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The contested services in Class 35 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

 

With regard to these services the opponent claimed that ‘the requirements of the Article 8(1)(b) are cumulative’ and as such, ‘having explained the reasons why there is high risk of confusion between both trade marks, it would not be necessary to compare the goods and services offered’. To support its argument, the opponent referred to the judgements ANA DE ALTUN y ANA, 18/09/27, T-86/16, EU:T:2017:627 and easyHotel, 22/01/09, T-316/07, EU:T:2009:14. However, in the cited cases the General Court stated that, for the purposes of applying Article 8(1)(b), a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar and that these conditions are cumulative. Therefore, the opponent’s statement, in addition to being clearly contrary to the principles provided by the Article 8(1)(b) EUTM, is not supported by the cited case law. Therefore, the cited case law does not affect the assessment of the likelihood of confusion with regard to the services in Class 35 in the case at hand, as these services were found to be dissimilar to the opponent’s 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Inés GARCIA LLEDO

Rosario GURRIERI

Cynthia DEN DEKKER

 

 

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.