OPPOSITION No B 2 536 624

The Bar Leisure Limited, No 35, Balluta Buildings, Main Street, St. Julians, Malta (opponent), represented by Jeanine Rizzo, Fenech & Fenech Advocates, 198, Old Bakery Street, Valletta VLT1455, Malta (professional representative)

a g a i n s t

Global Supplements Spółka z ograniczoną odpowiedzialnością Spółka komandytowa, Al. Grunwaldzka 229, 80266 Gdańsk, Poland (applicant), represented by Traset Rzecznicy Patentowi Czabajska Szczepaniak Sp.P., ul. Piecewska 27, 80-288 Gdańsk, Poland (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 536 624 is partially upheld, namely for the following contested goods:

Class 29: Foodstuffs, included in this class, enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin; high-protein concentrates and supplements enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin being foodstuffs; albumen for food; dietetic foodstuffs based on protein; protein-based concentrates and supplements, including the aforesaid goods made from additives of plant and animal origin being foodstuffs; carbohydrate-based concentrates and supplements, including made with additives being foodstuffs.

Class 30: Grain products; high-energy and high-protein cereal and carbohydrate bars; protein-based and carbohydrate-based nutritional drink mixtures for use as a meal replacement or food supplement; dietetic foodstuffs based on carbohydrate; carbohydrate preparations for food; foodstuffs in powder form containing carbohydrates, proteins and amino acids; carbohydrate, protein and high-energy preparations, concentrates and supplements being foodstuffs; foodstuffs based on carbohydrates, amino acids and proteins; confectionery; chocolate products.

Class 32: Mineral water (beverages); sports drinks; energy drinks; beverages, including beverages based on amino acids, carbohydrates and protein; isotonic drinks; preparations for making beverages; beverages enriched with added minerals; protein beverages; protein and carbohydrate beverages; powders for making beverages.

2. European Union trade mark application No 13 722 814 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 722 814. The opposition is based on European Union trade mark registrations No 10 980 092 and No 10 029 833 as well as on the Maltese non-registered trade mark . The opponent invoked Article 8(1)(b) EUTMR with regard to the EUTMs and Article 8(4) EUTMR with regard to the Maltese non-registered trade mark.

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 European Union trade mark registration No 10 980 092.

1. The goods and services

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

Class 25: Ready-to-wear clothing; jogging sets [clothing]; roll necks [clothing]; pockets for clothing; ready-made clothing; kerchiefs [clothing]; wraps [clothing]; wristbands [clothing]; playsuits [clothing]; combinations [clothing]; weather resistant outer clothing; visors [clothing]; hats (paper -) [clothing]; belts [clothing]; clothing*; clothing for children; athletic clothing; tops [clothing]; leisure clothing; knitted clothing; gloves [clothing]; childrens' clothing; headbands for clothing; party hats [clothing]; shorts [clothing]; aprons [clothing]; windbreakers [clothing]; braces for clothing [suspenders]; ties [clothing]; babies' clothing; wearable garments and clothing, namely, shirts; clothing, footwear, headgear; clothes for sports; leisure footwear; footwear for men and women; footwear; sneakers [footwear]; caps [headwear]; headwear.

Class 29: Meats; meat paste; meatballs; prepared dishes consisting principally of meat; processed meat products; ready cooked meals consisting wholly or substantially wholly of meat; meat, fish, poultry and game; frozen meat products; meat products being in the form of burgers; meat; meat burgers; frozen meat; fresh meat; cooked meat dishes; cooked chicken; preserved, frozen, dried and cooked fruits and vegetables; vegetable burgers; salads (vegetable -); soup preparations (vegetable -); mixed vegetables; vegetables, cooked.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; grains [cereals]; fresh vegetables; root vegetables [fresh]; raw vegetables; salad vegetables [fresh]; fresh fruits and vegetables.

Class 41: Production of live entertainment features; corporate hospitality (entertainment); arranging of visual entertainment; entertainment, sporting and cultural activities; provision of entertainment services for children; organization of entertainment competitions; interactive entertainment services; providing on-line information in the field of computer gaming entertainment; live entertainment; hospitality services (entertainment); organising of shows for entertainment purposes; sports entertainment services; organising of entertainment; promotions [entertainment]; provision of rooms for entertainment; organising events for entertainment purposes; entertainment; night club services [entertainment]; organisation of entertainment and cultural events; management of entertainment services; live entertainment production services; organisation of musical entertainment; wedding celebrations (organisation of entertainment for-); on-line entertainment; competitions (organising of entertainment-); entertainment services; organization of competitions [education or entertainment]; production of live entertainment; provision of live entertainment; party planning [entertainment]; entertainment relating to wine tasting; entertainment services relating to competitions; children's entertainment services; entertainment by means of concerts; organisation of entertainment competitions; live entertainment services; popular entertainment services; planning (party-) [entertainment]; entertainment booking services; entertainment provided via the internet; sporting and cultural activities; organizing cultural and arts events; providing cultural activities; entertainment, sporting and cultural activities; cultural activities; organisation of events for cultural, entertainment and sporting purposes.

Class 43: Providing food and drink; services for providing food and drink; providing of food and drink; catering (food and drink -); catering services for the provision of food; catering of food and drinks; catering services for the provision of food and drink; hospitality services [food and drink]; hospitality services [accommodation].

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

The contested goods are the following:

Class 5: Dietary and nutritional supplements; dietary supplemental drinks; nutritional supplements for athletes; strengthening preparations for the joints of plants and animals; vitamin and mineral preparations, including preparations in capsules; preparations for slimming purposes; metabolism strengthening preparations; preparations for supplementing the body with essential vitamins and microelements; preparations containing plant extracts; dietary supplements for athletes; food supplements enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin; diet supplements; mineral and vitamin food supplements; amino acid; mineral waters for medical purposes; dietary foods; vitamin drinks.

Class 29: Foodstuffs, included in this class, enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin; high-protein concentrates and supplements enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin being foodstuffs; albumen for food; dietetic foodstuffs based on protein; protein-based concentrates and supplements, including the aforesaid goods made from additives of plant and animal origin being foodstuffs; milk products and beverages; carbohydrate-based concentrates and supplements, including made with additives being foodstuffs.

Class 30: Grain products; high-energy and high-protein cereal and carbohydrate bars; protein-based and carbohydrate-based nutritional drink mixtures for use as a meal replacement or food supplement; dietetic foodstuffs based on carbohydrate; carbohydrate preparations for food; foodstuffs in powder form containing carbohydrates, proteins and amino acids; carbohydrate, protein and high-energy preparations, concentrates and supplements being foodstuffs; foodstuffs based on carbohydrates, amino acids and proteins; confectionery; chocolate products.

Class 32: Mineral water (beverages); sports drinks; energy drinks; beverages, including beverages based on amino acids, carbohydrates and protein; isotonic drinks; preparations for making beverages; beverages enriched with added minerals; protein beverages; protein and carbohydrate beverages; powders for making beverages.

The earlier European Union trade mark No 10 980 092 is registered for the entire class headings of Classes 25 and 45 of the Nice Classification. It was filed on 20/06/2012. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the tenth edition.

An interpretation of the wording of the list of the contested goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’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.

Contested goods in Class 5

The opponent’s goods in Class 25 are various articles of clothing, footwear and headgear, as well as parts and accessories for those goods (such as boot uppers or hat frames [skeletons], included in the alphabetical list of Class 25). The opponent’s goods in Class 29 are foodstuffs of animal origin (meat, fish) and fruits and vegetables which are prepared for consumption or conservation. The opponent’s goods in Class 31 include mainly land products not having been subjected to any form of preparation for consumption. The earlier mark further covers entertainment services and sporting and cultural activities in Class 41, provision of food and drink in Class 43 as well as legal services, security services and personal and social services in Class 45.

The opponent’s goods and services (including all goods and services included in the alphabetical lists of Classes 25 and 45) do not have sufficient connection with the contested goods in Class 5 which are very specific products elaborated for dietary purposes and meal replacements, dietetic food and beverages adapted for medical or veterinary use, such as health food supplements, metabolism or slimming preparations or strengthening preparations for the joints of plants and animals. These goods have a different purpose and method of use than all the opponent’s goods and services. They usually do not coincide in producers/providers, relevant public and distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 29

The contested foodstuffs, included in this class, enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin overlap with the opponent’s soup preparations (vegetable -) in as much as the opponent´s goods fall into the broad category of foodstuffs and could also be enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin. Therefore, they are identical.

The contested high-protein concentrates and supplements enriched with vitamins, mineral salts, amino acids, carbohydrates and additives of plant origin being foodstuffs; dietetic foodstuffs based on protein and protein-based concentrates and supplements, including the aforesaid goods made from additives of plant and animal origin being foodstuffs and the opponent’s processed meat products overlap since meat products can be processed to dietetic foodstuffs or to foodstuffs in the form of high-protein concentrates and supplements and can be enriched with vitamins, etc. and both the opponent’s and the contested goods fall into the broad category of foodstuffs. Therefore, they are identical.

The contested carbohydrate-based concentrates and supplements, including made with additives being foodstuffs overlap with the opponent’s preserved vegetables in as much as vegetables high in carbohydrates may be preserved foodstuffs in a concentrated or dried form. Therefore, they are considered to be identical.

The contested albumen for food refers to egg white which is widely used in food recipes and is considered to be lowly similar to the opponent´s poultry as the compared goods target the same public and can be offered by the same producers through the same distribution channels.

The contested milk products and beverages are dissimilar to the opponent’s goods in Class 29. The mere fact that they are all foodstuffs and that yoghurt, milk shakes or milk desserts can contain, for example, fruits does not render these goods similar. It is not likely that a producer of preserved fruits or of any of the other opponent’s goods in Class 29 would also manufacture milk shakes as the process of milk processing requires specific plant installations and machinery. The contested milk products and beverages are also dissimilar to the other goods and services covered by the earlier mark in Classes 25, 31, 41, 43 and 45 (including all goods and services included in the alphabetical list of Classes 25 and 45). The goods and services under comparison have a different purpose and method of use. Moreover, they are neither in competition with each other nor complementary. They are not distributed through the same channels and do not usually have the same producers/providers.

Contested goods in Class 30

The contested high-energy and high-protein cereal and carbohydrate bars and the opponent´s preserved fruits (the former including, for example, prepared nuts) are highly similar as they can coincide in producer, end user and distribution channels. Furthermore, they are in competition when they are consumed as snacks.

The contested protein-based and carbohydrate-based nutritional drink mixtures for use as a meal replacement or food supplement; dietetic foodstuffs based on carbohydrate; carbohydrate preparations for food; foodstuffs in powder form containing carbohydrates, proteins and amino acids; carbohydrate, protein and high-energy preparations, concentrates and supplements being foodstuffs; foodstuffs based on carbohydrates, amino acids and proteins can be all based on high-carbohydrate (such as dried fruits or preserved fruits) and/or high protein fruits (the latter being included in the opponent´s preserved fruits). Furthermore, the said contested goods and the opponent´s preserved fruits can be interchangeable and can target the same consumers through the same distribution channels. Therefore, those contested goods are considered to be similar to the opponent´s preserved fruits.

The contested confectionery and chocolate products are similar to a low degree to the opponent´s dried fruits because the goods under comparison can coincide in producer and distribution channels and target the same consumers.

The contested grain products in Class 30 are considered to be similar to low degree to the opponent´s providing food and drink in Class 43. Although the goods and services under comparison have a different nature and purpose, they may coincide in producer/provider and channels of distribution. Such goods are used and offered in the context of restaurant, catering, bar, café, cafeteria, canteen and snack bar services. These goods are therefore closely related to the services. Furthermore, they can be complementary.

The Opposition Division notes the applicant´s argument as to the alleged dissimilarity between dietary supplements and the opponent´s goods; however, account should be taken of the fact that the contested goods in Classes 29 and 30 all fall within the category of foodstuffs (as evident from the classification of the goods in the said Classes and from the qualification of the relevant goods as ‘being foodstuffs’ in the applicant´s specification). Therefore, this argument of the applicant and the related argument as to diverging distribution channels of the compared goods and services and diverging fields of activity of the parties are to be rejected.

Contested goods in Class 32

All the contested goods in Class 32, namely mineral water (beverages); sports drinks; energy drinks; beverages, including beverages based on amino acids, carbohydrates and protein; isotonic drinks; preparations for making beverages; beverages enriched with added minerals; protein beverages; protein and carbohydrate beverages; powders for making beverages are considered to be similar to a low degree to the opponent´s providing food and drink in Class 43. Although the goods and services under comparison have a different nature and purpose, they may coincide in producer/provider and channels of distribution. Furthermore, they can be complementary.

2. 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 varying degrees are directed at the public at large. Contrary to the applicant´s view, the Opposition Division finds that the relevant goods and services are everyday consumer goods/services and the degree of attention is considered to be average.

3. The signs

BADASS	BAD ASS
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark and will be perceived as referring to a tough or aggressive person (definition from Collins English dictionary online) and is, therefore, of normal distinctiveness with regard to the relevant opponent’s goods and services.

The contested mark is also a word mark and although it is visually divided into the two (as such meaningful) elements ‘BAD’ and ‘ASS’, it will be not perceived by the relevant public as a mere combination of the individual elements but as the meaningful and distinctive conjoined unity ‘BADASS’, as defined above.

The conflicting marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in all of their letters. The only difference between the signs is confined to a space between ‘BAD’ and ‘ASS’ in the contested sign.

Therefore, the signs are visually almost identical.

Aurally, the signs will be pronounced identically.

Conceptually, both signs will be associated with the same meaning and are, therefore, identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the goods and services of the earlier mark.

The earlier mark is normally distinctive and the conflicting signs are visually almost identical and aurally and conceptually identical. The space between the letters ‘BAD’ and ‘ASS’ in the contested sign will be perceived only at the visual level and is not sufficient for the relevant public to safely distinguish between the signs.

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).

Considering all the above, the Opposition Division finds that there is a 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 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 or similar (including to a low degree) to the goods and services of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on the European Union trade mark registration No 10 029 833 for the word mark ‘BADASS BURGERS’ for following services:

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 43: Services for providing food and drink; temporary accommodation.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

The earlier European Union trade mark No 10 029 833 is registered for the entire class headings of Classes 41, 43 and 45 of the Nice Classification. It was filed on 08/06/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the ninth edition.

This other earlier right invoked by the opponent covers services which are clearly different to the remaining goods in Classes 5 and 29 applied for in the contested trade mark. The opponent’s services do not have any relevant points of contact with the contested goods in Classes 5 and 29. These goods have a different purpose and method of use than all the opponent’s services (including all services included in the alphabetical list of Classes 41, 43 and 45). They do not coincide in producers/providers, relevant public or distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar and the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent has also based its opposition on the Maltese non-registered trade mark .

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 29/07/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2015.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

For the sake of completeness, the Opposition Division notes that the opponent neither submitted any information on the legal protection granted to the type of trade sign invoked by it nor any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law of Malta mentioned by the opponent.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Deirdre QUINN

Denitza STOYANOVA-VALCHANOVA

Carmen SANCHEZ PALOMARES

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.