OPPOSITION No B 2 517 624
Birgit Rangnit, Franzenkamp 85, 46049 Oberhausen, Germany (opponent), represented by Von Rohr Patentanwälte Partnerschaft mbB, Rüttenscheider Str. 62, 45130 Essen, Germany (professional representative)
a g a i n s t
Nanox International, besloten vennootschap met beperkte aansprakelijkheid, Havermarkt 16 bus 15, 3500 Hasselt, Belgium (applicant), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).
On 27/10/2016, the Opposition Division takes the following
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
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 are the following:
Class 29: Dietary foodstuff not for medical purposes, in particular on the basis of proteins; aforesaid goods in solid and in liquid form.
Class 32: Preparations for beverage preparation.
The contested goods are the following:
Class 5: Food additives for medical purposes; nutritional supplements and nutritional supplements for slimming purposes; dietetic foodstuffs, dietetic beverages and dietetic compositions, all for medical use; foodstuffs and beverages, whether or not dietetic, whether or not with added vitamins, minerals, proteins and/or carbohydrates, all for medical purposes, in particular for sportsmen, including isotonic drinks, and powders and syrups for making the aforesaid drinks; vitamin preparations.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s and opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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 contested food additives for medical purposes; nutritional supplements and nutritional supplements for slimming purposes; dietetic foodstuffs, dietetic beverages and dietetic compositions, all for medical use; foodstuffs and beverages, whether or not dietetic, whether or not with added vitamins, minerals, proteins and/or carbohydrates, all for medical purposes, in particular for sportsmen, including isotonic drinks, and powders and syrups for making the aforesaid drinks; vitamin preparations are similar to the opponent’s dietary foodstuff not for medical purposes, in particular on the basis of proteins; aforesaid goods in solid and in liquid form. These goods are consumed to increase physical well-being. They can be commercialised through the same channels and target the same end users, namely people participating in sports and persons interested in achieving a personal aesthetic or health-related goal. The consumers might not be aware of the distinction of the goods being ‘for medical use’ or ‘not for medical use’, since this characteristic might not be obvious from the marketing of the products or their packaging.
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 similar are directed at the public at large and at professionals. The degree of attention will vary from average to higher than average, depending on the exact characteristics of the goods, their purpose and their impact on the health of consumers.
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).
Each of the signs is a one-word mark. The earlier mark is composed of nine letters and the contested sign is composed of eight letters. They coincide in eight letters ‘PROTILOX’ and differ in one additional ‘X’ at the end of the earlier mark which is the part on which the consumers focus less attention. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Neither of the signs has any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, since the signs only differ in the additional letter ‘X’ at the end of the earlier mark, they are visually highly similar.
Aurally, the additional ‘X’ at the end of the earlier mark will not influence the pronunciation. Therefore, the signs are aurally identical.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.
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.
Global assessment, other arguments and conclusion
As follows from the analysis carried out above, the contested sign is visually highly similar and aurally identical with the earlier mark, which has an average degree of distinctiveness.
Consumers, even if attentive, do not usually examine trade marks closely, or compare them alongside each other to determine differences. Rather, they have to rely upon a fleeting impression of a mark that frequently eludes exact recollection.
In view of all the above, the Opposition Division is of the opinion that one additional letter at the end of the earlier mark, that will not even influence the pronunciation of that sign, is not sufficient to exclude a likelihood of confusion about the commercial origin of the similar goods.
This finding is reinforced by the fact that there is nothing to differentiate the signs from the conceptual point of view.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the prefixes ‘PROT-‘ and ‘PROTI-’. In support of its argument the applicant refers to the Benelux, international and EU trade mark registrations and claims that there are more than 800 combinations with ‘PROT-’. Furthermore, the applicant claims that there are more than 80 registrations with the prefix ‘PROTI-’.
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. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘PROT-‘ or ‘PROTI-’. Under these circumstances, the applicant’s claim must be set aside.
Furthermore, the applicant claims that ‘PROT-’ has a low degree of distinctiveness as it refers to ‘protein’. In lack of the evidence supporting this claim, the Opposition Division cannot assume that ‘PROT-’ is a commonly used abbreviation for ‘protein’ in Germany.
Considering all the above, there is a likelihood of confusion on the part of the public.
This finding is not called into question by the various cases referred to by the applicant. These cases concerned other signs; none of them appear to be comparable to the conflicting signs in the present case. The comparison of the signs rests on the specific appearance, pronunciation and meaning of the signs taking into account the signs’ perception within the relevant public when used in relation to the goods and services at issue. The mere fact that cases may resemble one another in certain aspects, in itself, is insufficient to render them comparable and the opponent did not explain in what respect all the aspects of these cases are relevant to the present case.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 013 030 071. 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.