OPPOSITION No B 3 064 045

MMSports AB, Askims Verkstadsväg 9, 436 34 Askim, Sweden (opponent), represented by Groth & Co. KB, Birger Jarlsgatan 57 B, 113 56 Stockholm, Sweden (professional representative)

a g a i n s t

Christos Ntolas, Grafenstraße 22, 42277 Wuppertal, Germany (applicant), represented by Rechtsanwälte Lintl, Renger Partnerschaft mbB, Nymphenburger Str. 20ª, 80335 München, Germany (professional representative).

On 29/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 045 is partially upheld, namely for the following contested goods:

Class 5: Dietary supplements and dietetic preparations; dietary supplements for humans; food supplements; dietary supplemental drinks; vitamin preparations; nutraceuticals for use as a dietary supplement; meal replacement powders; powdered fruit-flavored dietary supplement drink mix; powdered nutritional supplement drink mix; vitamin drinks; medicated isotonic drinks; albuminous foodstuffs; dietary supplements on the basis of trace elements; protein dietary supplements; mineral food supplements; flaxseed dietary supplements; propolis dietary supplements; lecithin dietary supplements; albumin dietary supplements; pollen dietary supplements; enzyme dietary supplements; casein dietary supplements; protein powder dietary supplements; yeast dietary supplements; wheat germ dietary supplements; alginate dietary supplements; royal jelly dietary supplements; glucose dietary supplements; food supplements, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements; health food supplements made principally of minerals.

2. European Union trade mark application No 17 900 504 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 some of the goods of European Union trade mark application No 17 900 504 , namely against all the goods in Classes 5 and 29. The opposition is based on European Union trade mark registration No 17 392 606 ‘VIKING POWER’. 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

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

Class 5: Food supplements.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; dietary supplements for humans; food supplements; dietary supplemental drinks; vitamin preparations; nutraceuticals for use as a dietary supplement; meal replacement powders; powdered fruit-flavored dietary supplement drink mix; powdered nutritional supplement drink mix; vitamin drinks; medicated isotonic drinks; albuminous foodstuffs; dietary supplements on the basis of trace elements; protein dietary supplements; mineral food supplements; flaxseed dietary supplements; propolis dietary supplements; lecithin dietary supplements; albumin dietary supplements; pollen dietary supplements; enzyme dietary supplements; casein dietary supplements; protein powder dietary supplements; yeast dietary supplements; wheat germ dietary supplements; alginate dietary supplements; royal jelly dietary supplements; glucose dietary supplements; food supplements, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements; health food supplements made principally of minerals.

Class 29: Oils and fats; dairy products and dairy substitutes; whey; drinks made from dairy products; milk products; milk substitutes; milk shakes; albumen for culinary purposes; albumen for food; oils for food; weed extracts for food; soups and stocks, meat extracts; processed fruits, fungi and vegetables (including nuts and pulses); dietetic foodstuffs, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; dietetic food, not adapted for medical use, based on proteins, with added vitamins, minerals, trace elements; dietetic food, not for medical purposes, based on proteins.

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 dietary supplements and dietetic preparations; dietary supplements for humans; food supplements; dietary supplemental drinks; vitamin preparations; nutraceuticals for use as a dietary supplement; meal replacement powders; powdered fruit-flavored dietary supplement drink mix; powdered nutritional supplement drink mix; vitamin drinks; medicated isotonic drinks; albuminous foodstuffs; dietary supplements on the basis of trace elements; protein dietary supplements; mineral food supplements; flaxseed dietary supplements; propolis dietary supplements; lecithin dietary supplements; albumin dietary supplements; pollen dietary supplements; enzyme dietary supplements; casein dietary supplements; protein powder dietary supplements; yeast dietary supplements; wheat germ dietary supplements; alginate dietary supplements; royal jelly dietary supplements; glucose dietary supplements; food supplements, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements; health food supplements made principally of minerals are identical to the opponent’s food supplements, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested goods in Class 29

The contested oils and fats; dairy products and dairy substitutes; whey; drinks made from dairy products; milk products; milk substitutes; milk shakes; albumen for culinary purposes; albumen for food; oils for food; weed extracts for food; soups and stocks, meat extracts; processed fruits, fungi and vegetables (including nuts and pulses); dietetic foodstuffs, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; dietetic food, not adapted for medical use, based on proteins, with added vitamins, minerals, trace elements; dietetic food, not for medical purposes, based on proteins are dissimilar to the opponent’s goods since they have a different nature, purpose and method of use. The producers and the distribution channels do not coincide and they are not complementary.

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 and at business customers with specific professional knowledge or expertise in the fields of nutrition or healthcare. Given that dietetic food and nutritional supplements are products that have an impact on a person’s health, either as prevention or a cure, it is expected that the degree of attention of the relevant public when purchasing these goods will be higher than average.

c) The signs

VIKING POWER
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 element ‘POWER’ of the earlier mark is an English word which means, among other things, the ‘physical strength and force exerted by something or someone’ (Oxford English Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/power). For the part of the public who understands this meaning, this element is weak since it indicates that the opponent’s goods may raise the physical strength of the consumer. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which this element is weak and, thus, is the most prone to confusion, such as the English-speaking part of the public

The element ‘VIKING’ of the earlier mark is an English word which relates, among others to ‘any of the Scandinavian seafaring pirates and traders who raided and settled in many parts of north-western Europe in the8^th to 11^th centuries’ (Oxford English Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/viking). Contrary to the applicant’s arguments, since it has no meaning in relation to the relevant goods, it is distinctive.

Therefore, the relevant public will associate the earlier mark with the power of the Vikings.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will split the verbal element ‘VIKINGSTORM’ of the contested sign in two parts, and perceive the elements ‘VIKING’ at the beginning of the sign with the meaning explained above. Moreover, the relevant public will perceive the English term ‘STORM’ meaning, among other things, ‘a violent sturbance of the atmosphere with strong winds and usually rain, thunder, lightning, or snow’ (Oxford English Dictionary on 19/11/2019 at https://www.lexico.com/en/definition/storm ). Contrary to the opponent’s arguments, this term does not have the same meaning as the word ‘power’ in English. Since these elements have no relation to the relevant goods, they are distinctive.

The figurative element of the contested sign is composed of several interlocking triangles. Since it has no meaning in relation to the relevant goods, this element is distinctive. Despite the slightly fancy typeface in which the verbal element of the contested sign is written it will not draw the consumer’s attention from the word it embellishes.

The contested sign has no element that could be considered clearly more dominant than other elements.

The earlier mark is a word mark. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the distinctive element ‘VIKING’ at the beginning of both signs. However, they differ in the weak element ‘POWER’ of the earlier mark and in the distinctive element ‘STORM’ of the contested sign. The marks also differ in that the verbal elements are separated in the earlier mark while they are in one verbal element in the contested sign, as well as in the contested sign’s typeface and figurative element.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘VI-KING’, present identically as a distinctive element at the beginning of both signs. The pronunciation differs in the syllables ‘PO-WER’ corresponding to a weak element of the earlier mark and in the syllable ‘STORM’ of the contested sign.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning due to the presence of the element ‘VIKING’ in both marks, the signs are conceptually similar to an average degree.

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. 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 weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are partly identical and partly dissimilar to the opponent’s goods. The relevant public is the public at large and professionals whose degree of attention is higher than average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually and conceptually similar to an average degree and aurally similar to an above average degree.

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/services covered are from the same origin. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case, the reproduction of the first and distinctive element of the earlier mark at the beginning of the contested sign, with a weak element as a second term in the earlier mark, may lead the public to see a new line of the earlier goods.

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). § 54). Even consumers who pay 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).

Moreover, the difference of the additional figurative element in the contested sign is not sufficient to counteract the similarities of the signs in the element ‘VIKING’ since the verbal part is the one that attracts the public’s attention the most; consequently, the relevant public will associate the marks and may, if not directly confuse the signs, believe that they come from the same undertaking or from economically-linked undertakings.

Likewise, the stylisation of the letters in the contested sign is not enough to prevent that the trade mark applied for is seen as a mere variation of the former since it is common practice for undertakings to update its marks with such variations.

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 to those 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sandra IBAÑEZ

Victoria DAFAUCE MENENDEZ

Helen Louise MOSBACK

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.