OPPOSITION No B 2 442 112
FTWO B.V., Anholtseweg 36, 7081 CM Gendringen, the Netherlands (opponent), represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, the Netherlands (professional representative)
a g a i n s t
Performix LLC, 221 South Cherokee Street, Denver, Colorado 80223, United States of America (applicant), represented by Scott & York Intellectual Property Law, 45 Grosvenor Road, St Albans, Hertfordshire AL1 3AW, United Kingdom (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (as in force on the date of the notice of opposition), if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier Benelux trade mark was registered and the international trade mark registration has had protection in the designated countries for more than five years prior to the publication of the contested application.
The contested application was published on 03/09/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the Czech Republic, Ireland, Lithuania, Austria, Latvia, Italy, Slovenia, Portugal, Denmark, Poland, Greece, Germany and France, and in the Benelux countries, from 03/09/2009 to 02/09/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Class 5: Vitamins; mineral food supplements; nutritional supplements for medical use; dietetic preparations for medical use; lactobacilli preparations for medical use.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 08/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/09/2015 to submit evidence of use of the earlier trade marks. On 10/09/2015 and 11/09/2015, within the time limit, the opponent submitted the following documents:
Item 1: price list for 2014/2015 dated 01/07/2014. The price list is composed of two pages. The first is a cover page and the earlier marks ‘PERFORMAX’ are displayed on it affixed to three pill containers. There is contact information. In addition to the earlier marks, the following words are also written on the three containers: ‘Vitamin C Kompakt 1000 mg 60 Tabletten’, ‘Multi Vitamine & Mineralstoffe ESSENTIALS 30 Tabletten Vitamin B-Komplex’ and ‘Trimare Omega 3-Fettsäuren ESSENTIALS 65 Kapseln DHA200; von EPAX’. The second page contains a table. It is divided into three columns, headed ‘Produkt’, ‘Einheit’ (which includes numbers followed by ‘Tabletten’/‘Kapseln’/‘Gramm’) and ‘Preis’ (which includes prices in euros). The products are divided into several categories: ‘Essentials’, ‘Wellness’, ‘Extra’, ‘Lifestyle’, ‘Body-specials’ and ‘Bio-specials’. The earlier marks ‘PERFORMAX’ are included at the start of the name of each product listed. In addition to the earlier marks, the products listed include words such as ‘Multi’, ‘Vitamin C’, ‘Trimare Fischöl Omega 3’, ‘Vitamin D’, ‘Coenzym Q10-H active’, ‘Vitamin E’, ‘L-Carnitin’, ‘Magnesium’, ‘CLA-Clarinol’, ‘Vitamin B12’ and ‘Yolac’. The price list is in German and English. The opponent submitted a partial translation and part of the text is self-explanatory (e.g. ‘Vitamin C’, ‘Magnesium’, ‘Coenzym Q10’).
Item 2: six product leaflets named ‘Essentials’, ‘Age-essentials’, ‘Protectives’, ‘Body-Specials’, ‘Bio-Specials’ and ‘Energy-specials’. The earlier marks and the contact information of a German company are on all the pages. The date 10/01/11 is also on all the pages and, according to the opponent, the indication ‘110107’ at the bottom left of the pages refers to 07/01/2011. Although the text is in German, some of the headings and names of nutritional supplements are self-explanatory, for example ‘Multi’ on pages 2 and 3; ‘Vitamin A’, ‘Vitamin B1’, ‘Vitamin B2’, ‘Vitamin B3’, ‘Vitamin B5’, ‘Vitamin B6’, ‘Vitamin B12’, ‘Vitamin C’, ‘Vitamin D3’, ‘Vitamin E’, ‘Vitamin K1’, ‘Calcium’, ‘Magnesium’, ‘Jod’, ‘Mangan’, ‘Chrom’, ‘Bor’ and ‘Zink’ on page 3; ‘Coenzym Q10-H active’ on page 4; ‘Yolac 5 (Probiotikum)’, ‘Lactobacillus acidophilus LA02’, ‘Lactobacillus rhamnosus LR04’, ‘Lactobacillus plantarum LP01’, ‘Bifidobacterium lactis BS01’, Bifidobacterium breve BR03’, ‘Mineralen’, ‘Chlorophyll’ and ‘Vitaminen’ on page 11; and ‘Coenzym Q10’ and ‘L-Carnitin’ on page 12.
Item 3: printout dated 09/09/2015 from the website http://www.performax.de/verkaufsstellen. The earlier marks appear several times. The excerpt contains a list in German and its headings are translated by the opponent, on page 2 of its observations dated 10/09/2015, as ‘Company –Owner – Street – Postal Code – Province’. The first column contains the word ‘Apotheke’ several times and the last columns are German towns. Therefore, it is self-explanatory that the document is a list of points of sale. However, the excerpt was made approximately one year after the end of the relevant period.
Item 4: excerpts from the website http://www.performax.de/ as it was on 22/07/2011, 22/04/2012, 25/12/2013 and 08/01/2014, recovered on 09/09/2015 through the Internet Archive website Wayback Machine. The earlier marks are displayed on the website and they are also affixed to pill containers. The text of the website is in German, but the images of containers and the text contain some self-explanatory words such as ‘Vitamin C’, ‘Essentials’, ‘Probiotika’, ‘Bio-Specials’, ‘Multi’, ‘Vitamine D’ and ‘Vitamine E’. According to the opponent, the slogan ‘Ernährungsprofis empfehlen Performax’ and the expression ‘Performax Vitamine und Mineralien’, which appear several times, mean ‘Nutrition professionals recommend Performax’ and ‘Performax vitamins and minerals’, respectively.
Item 5: excerpt from the website www.performax.de showing an announcement published on 22/01/2014. The text is in German and it is translated into English in the opponent’s observations dated 10/09/2015. It indicates that Performax Vitamins will be at the Health Fair held in Utrecht, Netherlands, from 24 to 26/01/2014, along with its Dutch mother company, Plantina.
Item 6: excerpt from the website www.performax.de showing an announcement published on 06/11/2013. The text is in German and it is translated into English in the opponent’s observations dated 10/09/2015. It indicates that Performax will be at the Beauty Live Fair held in Kalkar, Germany, from 16 to 18/11/2013.
Item 7: three pictures of numerous cardboard boxes with the date 10/07/2013 on them. They bear the earlier marks and words such as ‘Vitamin D’, ‘Essentials’, ‘Tabletten’, ‘Vitamin B12’, ‘Yolac 5’ and ‘Vitamin E’. According to the opponent, these pictures are of the opponent’s warehouse in the Netherlands. However, this cannot be inferred from the information on the cardboard boxes and there is no additional information that can prove the opponent’s assertion.
Item 8: five invoices, three of them issued on 14/01/2010, 16/03/2011 and 13/03/2014 to an undertaking in Hanover, Germany. The first and second invoices are in Dutch and the third is in German. The earlier marks are at the top left of the invoices and included as part of the name of the product sold. The name of the product in the invoices is ‘Performax Multi’ ‘90 tabletten’ or ‘240 tabletten’. The other two invoices were issued on 13/02/2012 and 21/02/2013. Although their header displays the earlier marks, the name of the product sold does not contain the earlier marks; instead, it includes the name of the opponent’s Dutch mother company, Plantina.
For the sake of completeness, it must be mentioned that, along with its observations on 02/04/2015, the opponent submitted an excerpt from the Benelux Trademarks Register and a translation of it into English in relation to earlier Benelux trade mark No 689 767 and an excerpt from ROMARIN regarding earlier IR No 773 871.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in Germany.
Firstly, all the documents submitted (except for Item 3) relate to the relevant five-year period.
Secondly, Items 1, 2, 4, 6 and 8 (only the invoices issued on 14/01/2010, 16/03/2011 and 13/03/2014) show that the place of use is Germany. This can be inferred from the language of the documents (German) and some addresses in Germany (e.g. Item 6, evidence of participation in a trade fair in Germany; Item 8, invoices issued to a German undertaking). Therefore, the evidence relates to this relevant territory.
Although there are some documents that relate to use of the earlier marks in the Netherlands, such as the evidence of the opponent’s participation in a trade fair in the Netherlands (Item 5), three pictures of, according to the opponent, its warehouse in the Netherlands (Item 7) and two invoices in Dutch issued on 13/02/2012 and on 21/02/2013 to a German undertaking (Item 8), none of these documents proves that goods bearing the earlier marks were actually sold in the Netherlands during the relevant period. Item 5 proves a single and isolated effort to promote goods and is insufficient to prove genuine use without further evidence to this effect. Item 7 is pictures of cardboard boxes with the earlier marks on them, but their content is unknown and it is not proven that their content was commercialised in the Netherlands. Finally, although the invoices issued on 13/02/2012 and on 21/02/2013 to a German undertaking are in Dutch and there is a reference to a Dutch company, there is also a reference to a German issuing company. In the absence of any other indications, the documents are not sufficient to prove export from the Netherlands to Germany.
The documents submitted do not provide relevant information in relation to other places of use.
As use was proven only for Germany, the Opposition Division will proceed with the assessment only in relation to the German designation of earlier international trade mark registration No 773 871, ‘PERFORMAX’.
Thirdly, in relation to the nature of use, the earlier mark appears on a product list, in product leaflets and affixed to containers of vitamins, minerals and other nutritional supplements, and, in addition, in the headers of invoices, etc. Therefore, it is considered that the opponent has shown use of the sign ‘PERFORMAX’ as a trade mark.
In some documents (e.g. Items 1 and 2) the earlier marks are depicted in white on a dark blue label next to a circle divided into four colours and, in some of the documents, below the dark blue label, the further verbal element ‘Vitamine’ is depicted in a standard black typeface. However, the label is purely decorative and the fact that the earlier marks are larger than the rest of the elements, and in white letters on a dark blue label, makes the earlier marks eye-catching. The circle is depicted in a very simple manner and does not serve as an indicator of origin. When it appears, the verbal element ‘Vitamine’ is non-distinctive for the opponent’s registered goods in Class 5.
In some evidence, the earlier marks appear along with the verbal element ‘MULTI’. However, it is descriptive and commonplace for the opponent’s goods, particularly for multivitamins and nutritional supplements with multiple components.
Consequently, the additional figurative and verbal elements do not alter the distinctive character of the mark (18/04/2008, R 1236/2007-2, BIONSEN) and Article 15(1)(a) EUTMR has been complied with.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, namely Item 8 (three invoices issued to an undertaking in Germany in relation to the purchase of the product ‘PERFORMAX MULTI’) in conjunction with Item 1 (price list), Item 2 (product leaflets), Item 4 (excerpt from the opponent’s website offering products) and Item 6 (evidence of participation in a trade fair in Germany), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the product ‘PERFORMAX MULTI’. In particular, the three invoices are evidence that ‘PERFORMAX MULTI’ products were not only offered on the German market, but actually sold in it. Furthermore, use of the mark need not be quantitatively significant for it to be deemed genuine and although the opponent submitted only three relevant invoices, all issued to one client, the quantities of goods show that the client purchased them for resale. Although the evidence indicates a low commercial volume overall, it shows use of the earlier mark from January 2010 to July 2014 for ‘PERFORMAX MULTI’.
Therefore, taking into account all the documents submitted as a whole, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in relation to ‘PERFORMAX MULTI’, which, as can be inferred from the submitted documents, in particular from Items 1 and 2, is a nutritional supplement.
In relation to other goods, such as the registered vitamins; mineral food supplements; dietetic preparations for medical use; lactobacilli preparations for medical use, the documents show that the opponent has used its mark for advertising purposes. However, there are no additional documents that prove that these other goods were not only offered on the market but sold in the relevant territories.
Consequently, as the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark, according to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case, the evidence shows genuine use of the trade mark for a nutritional supplement. Therefore, in accordance with Article 42 EUTMR, the Opposition Division will only consider the registered nutritional supplements for medical use in its further examination of the opposition.
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 goods on which the opposition is based and that are considered registered, for the purposes of the examination of the present opposition, are the following:
Class 5: Nutritional supplements for medical use.
The contested goods are the following:
Class 5: Dietetic food and substances adapted for medical or veterinary use; dietary and nutritional supplements; vitamin and mineral preparations.
The contested vitamin and mineral preparations are included in the broad category of the opponent’s nutritional supplements for medical use. Therefore, they are identical.
The contested dietary and nutritional supplements include, as a broader category, the opponent’s nutritional supplements for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested dietetic food and substances adapted for medical or veterinary use and the opponent’s nutritional supplements for medical use are similar, because they can have the same purpose and producers and they have the same distribution channels.
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 target the public at large and professionals in the field of medicine. Health-related goods, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; and 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and quoted case law).
Earlier trade mark
The relevant territory is Germany.
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 signs are word marks and therefore, by definition, they do not have elements that could be considered more dominant (visually eye-catching) than other elements.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). In the present case, the relevant public will associate the sequence of letters ‘MAX’ in the earlier mark with ‘maximum’ and the sequence of letters ‘MIX’ in the contested sign with ‘mixture’. Bearing in mind that the relevant contested and opponent’s goods are dietary supplements and dietetic preparations, these elements are non-distinctive for these goods, since ‘MIX’ provides direct information to the consumers, indicating that the good is a mixture of more than one component, and ‘MAX’ is laudatory, denoting that it makes the best of or greatest possible amount of something. Therefore, the public will pay less attention to these non-distinctive elements.
The applicant argues that the relevant public will associate the sequence of letters ‘PERFORM’ with its meaning in English to ‘carry out, accomplish, or fulfil (an action, task, or function)’. However, the Opposition Division does not agree with this assertion. The relevant public will not associate this meaning with this word, because the equivalent word in German is ‘performen’ and the signs at issue have the endings ‘MAX’/‘MIX’. Furthermore, the German word ‘performen’ is a false friend and means ‘to entertain an audience, typically by acting, singing, or dancing on stage’. Therefore, the public is not likely to connect such a meaning with the marks when seeing them on the relevant goods. Therefore, the applicant’s assertion is dismissed.
Visually, the signs coincide in eight out of nine letters, ‘PERFORM*X’. They differ only in their eighth letters, ‘A’ in the earlier mark and ‘I’ in the contested sign. The conflicting signs are composed of nine letters; therefore, they are not short signs. The differing letters are at the ends of the signs. As the signs are word marks, there are no further visual differences. Therefore, the signs are highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PERFORM*X’, present identically in both signs. The pronunciation differs in the sound of their eighth letters, ‘A’ in the earlier mark and ‘I’ in the contested sign. The lengths, intonations and numbers of syllables of the signs are identical. Therefore, the signs are highly similar.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the non-distinctive elements ‘MAX’ in the earlier mark and ‘MIX’ in the contested sign will be associated with the meanings given above. Therefore, the signs are conceptually not similar to the extent that these sequences of letters convey different meanings.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 non‑distinctive element in the mark as stated above in section c) of this decision.
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). In the present case, the relevant goods are partly identical and partly similar.
The signs convey highly similar visual and aural overall impressions due to the sequence of letters ‘PERFORM*X’, present identically in both signs. Furthermore, as stated in section c) of this decision, since the signs are word marks, there are no graphic features that could further separate them in the consumers’ minds.
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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Consequently, the difference in the signs’ eighth letters is not sufficient to dispel the likelihood of confusion between the signs.
The conceptual differences resulting from the elements ‘MAX’/‘MIX’ are also insufficient for the consumers to differentiate the signs in their minds. Firstly, as mentioned in section c) of this decision, these elements are non-distinctive and the consumers will not pay as much attention to them as to the signs as a whole. Secondly, 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 covered are from the same undertaking or economically linked undertakings; for example, that the contested sign designates a new line of goods from the opponent that contain a mixture of substances.
In its observations, the applicant argues that the element ‘PERFORM’, present in both signs, has a low distinctive character for goods in Class 5, given that there are many trade marks that include it. In support of its argument the applicant refers to several trade mark registrations in the United Kingdom, Italy, France, etc., submits excerpts from the results of searches for the element ‘PERFORM’ in the eSearch and TMview databases and refers to previous decisions of the Office and a judgment of the General Court.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used.
The applicant also submitted excerpts from the websites of some of the owners of the trade marks that appear in the results of the search performed by the applicant in eSearch. However, these documents can demonstrate at the most that some of the displayed goods were offered for sale; they are insufficient to prove that the displayed goods were actually sold and, moreover, they do not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘PERFORM’ for goods in Class 5.
The previous cases referred to by the applicant are not relevant to the present proceedings, because they relate to EUTM applications that contained the element ‘PERFORM’ but were rejected by the Office on the basis of absolute grounds for refusal under Article 7 EUTMR in relation to the English-speaking part of the public, whereas the present examination is limited exclusively to the relative grounds of refusal under Article 8 EUTMR and the relevant territory is Germany.
Under these circumstances, the applicant’s arguments must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating Germany No 773 871. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.