OPPOSITION No B 2 924 176

Nutrium International Ltd., Ingles Manor Castle Hill Avenue, Folkestone CT20 2RD, United Kingdom (opponent)

a g a i n s t

Nutrium AB, Slädvägen 11, 903 39 Umeå, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)

On 05/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 924 176 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 511 123 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and/or EUTMIR should be understood as references to the regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 511 123 for the word mark ‘NUTRIUM’. The opposition is based on United Kingdom trade mark registration No 3 198 805 for the word mark ‘NUTRIUM’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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

Class 9: Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films.

Class 38: Telecommunication services; communication services for the electronic transmission of voices; transmission of data; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of data, audio, video and multimedia files; simulcasting broadcast television over global communication networks, the Internet and wireless networks; provision of telecommunication access to video and audio content provided via an online video-on-demand service; satellite communication services; telecommunications gateway services.

The contested goods and services are the following:

Class 9: Computer programs/software for neonatal nutrition and growth; Mobile apps for neonatal nutrition and growth.

Class 42: Providing online non-downloadable software for neonatal nutrition and growth.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 9

The contested computer programs/software for neonatal nutrition and growth are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested mobile apps for neonatal nutrition and growth are similar to a high degree to the opponent’s computer software since these goods have the same nature, can have the same purpose and target the same relevant public. Furthermore, these goods can be produced by the same undertakings and be in competition.

Contested services in Class 42

The contested providing online non-downloadable software for neonatal nutrition and growth consists of such software as a service (SaaS) which is essentially web-based or hosted software run on the SaaS provider’s servers to which the customers are given access by paying a subscription fee. Although the nature of providing online non-downloadable software for neonatal nutrition and growth and the broad category of the opponent’s computer software in Class 9 is thus not the same, they can share the same purpose and be in competition; they can share the same relevant public and can often coincide in the same usual producers and providers of such goods and services. Therefore, the contested providing online non-downloadable software for neonatal nutrition and growth is at least similar to the opponent’s computer software in Class 9.

b) The signs

NUTRIUM	NUTRIUM
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods in Class 9, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods. Furthermore, as also established above in section a) of this decision, the remaining contested goods in Class 9 and the contested services in Class 42 were found to be highly similar or similar to the goods covered by the earlier trade mark in Class 9. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 198 805. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Pedro JURADO MONTEJANO

Sam GYLLING

Sandra IBAÑEZ

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.