OPPOSITION No B 2 714 858

Armor Proteines (société Anonyme), 50890 Conde-sur-Vire, France (opponent), represented by Lynde & Associes  5, rue Murillo, 75008 Paris, France (professional representative)

a g a i n s t

AG Sports Nutrition Limited, 17 Ipparchou Street, Ayia Zoni, CY- Limassol, Cyprus (applicant), represented by Groom Wilkes & Wright LLP, the Haybarn Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, the United Kingdom (professional representative).

On 25/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 858 is upheld for all the contested goods.

2.        European Union trade mark application No 15 110 621 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 110 621. The opposition is based on European Union trade mark registration No 13 384 987. 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.

1. The goods

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

Class 5:         Veterinary and sanitary preparations, dietetic food and substances adapted for medical use, and food for babies, all the aforesaid goods containing milk proteins; dietary supplements for humans; nutritional supplements.

Class 29: Milk and milk products; milk drinks (milk predominating); proteins derived from milk, plants and/or single-cell organisms, for human consumption.

The contested goods are the following:

Class 5:         Pharmaceutical and sanitary preparations; dietetic substances adapted for medical use; dietary and nutritional supplements; dietary and nutritional supplements for sports, weight control, boosting energy and promoting health; drinks predominantly of minerals or vitamins; vitamin drinks; health food supplements made principally of vitamins or minerals or combinations of vitamins and mineral; medicated foods for sportspersons; non-prescription dietary and nutritional supplements for human consumption, non-prescription dietary supplements for human consumption consisting principally of trace elements, vitamins or minerals or a combination of trace elements, vitamins and minerals; herbal medicine products.

The contested sanitary preparations; dietetic substances adapted for medical use include as broader categories the opponent’s sanitary preparations, dietetic substances adapted for medical use, all the aforesaid goods containing milk proteins. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested dietary and nutritional supplements include as broader categories the opponent’s dietary supplements for humans and nutritional supplements. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested non-prescription dietary and nutritional supplements for human consumption are included in the broad categories of, or overlap with, the opponent’s dietary supplements for humans; nutritional supplements. Therefore, they are identical.

The contested list of goods covers pharmaceutical preparations and the opponent’s list of goods includes veterinary preparations (the aforesaid goods containing milk proteins). A pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals. Therefore, the opponent’s veterinary preparations (the aforesaid goods containing milk proteins) are included in the broader term pharmaceutical preparations included in the applicant’s list of goods. 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 dietary and nutritional supplements for sports, weight control, boosting energy and promoting health; drinks predominantly of minerals or vitamins; vitamin drinks; health food supplements made principally of vitamins or minerals or combinations of vitamins and mineral; non-prescription dietary supplements for human consumption consisting principally of trace elements, vitamins or minerals or a combination of trace elements, vitamins and minerals are included in the broad categories of the opponent’s dietary supplements for humans; nutritional supplements. Therefore, they are identical.

The contested medicated foods for sportspersons are included in the broad categories of, or overlap with the opponent’s dietetic food and substances adapted for medical use (all the aforesaid goods containing milk proteins). Therefore, they are identical.

The contested herbal medicine products are included in the broad categories of, or overlap with, the opponent’s dietetic food and substances adapted for medical use, all the aforesaid goods containing milk proteins. Therefore, they are identical.

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 found to be identical target both the public at large and professionals in the fields of medicine and healthcare. Some of the contested goods, such as dietary and nutritional supplements are preparations that are relatively cheap and sold directly to the consumer without prescription, while some of the relevant goods (pharmaceutical and sanitary preparations) may be more specialised drugs for treating serious health problems. It is apparent from the case-law that, insofar as pharmaceutical preparations, and some other pharmaceutical/medical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T 288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. This high degree of attention is also applied to dietetic products (dietetic substances adapted for medical use), since these goods can have a direct effect on the proper functioning of the digestion and on one’s physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28). The degree of attention is deemed to be high.

3. The signs

ARMOR PROTEINES	CREATINE ARMOR
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 ‘ARMOR’ which the earlier mark and the contested sign have in common is not meaningful in certain territories, for instance it has no meaning for the French-speaking part of the relevant public and is, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the European Union public.

The second element ‘PROTEINES’ of the earlier word mark is plural form of the French word ‘protéine’ (https://www.collinsdictionary.com/dictionary/english-french/protein) which will be understood by the French-speaking part of the public as referring to ‘Proteins collectively, especially as a dietary component.’ (Oxford English dictionary online: https://en.oxforddictionaries.com/definition/protein). Therefore this element can be very easily associated with the opponent’s goods (veterinary, sanitary, medical dietetic preparations and food for babies containing milk proteins, dietary and nutritional supplements) in class 5, and as such this element is non-distinctive for all the opponent’s goods.

The first contested sign’s element ‘CREATINE’ will be associated by French-speaking part of the relevant public, as related to ‘A compound formed in protein metabolism and present in much living tissue. It is involved in the supply of energy for muscular contraction.’ (Oxford English dictionary online: https://en.oxforddictionaries.com/definition/creatine). Bearing in mind that the contested goods are pharmaceutical and sanitary preparations, dietetic and nutritional related preparations including for sports or weight control, this element is non-distinctive for all the contested goods.

Therefore, both the marks consist of the distinctive verbal element ‘ARMOR’ and the non-distinctive words ‘PROTEINES’ in the earlier mark, and ‘CREATINE’ in the contested sign.

Visually, the signs coincide in the word element ‘ARMOR’ being the first part of the earlier mark, and the second part of the contested sign. However, they differ in the remaining elements, the words ‘PROTEINES’ (the earlier mark) and ‘CREATINE’ (the contested sign).

Therefore, since the first element of the earlier sign is fully reproduced in the contested sign, and furthermore it is the only distinctive element in both signs, they are found similar to a high degree.

Aurally, the pronunciation of the signs in the relevant territory is identical in the syllables ‘AR/MOR’, however it differs in the syllables of ‛PRO/TE/IN(ES)’ of the earlier sign, and the syllables ‘CRE/A/TIN(E)’ of the contested mark, which have no counterparts in opposite mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coinciding word ‘ARMOR’ is meaningless. The other words, namely ‘PROTEINES’  and ‘CREATINE’ in the earlier and the contested sign respectively,  have different meanings, and therefore the signs are conceptually different. However it should also be noted that for some groups of consumers  both weak elements of the signs refer to concepts between which some link can be established (both, proteins and creatine may be related to some supplementation, especially a diet maintained during workouts for muscle growth and recovery).  

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 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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The signs are visually and aurally similar to a high degree. They differ in their non-distinctive elements ‘PROTEINES’ and ‘CREATINE’, which will be understood by the French part of the public within the European Union and since both marks refer to nutritional components, and the remaining coinciding word ‘ARMOR’ is the only distinctive element of each mark, the signs show strong commonalities. Therefore, as described in the section c) of the present decision, the signs are similar and the existence of a likelihood of confusion cannot be ruled out.

The relevant public consists of general public and professionals from pharmaceutical and healthcare field, and in both cases the attentiveness is expected to be high due to the kind and nature of the relevant goods. It should be pointed out that 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). However, the goods covered by the conflicting marks are identical, the general principle of interdependence of the relevant factors, in particular, a similarity between the marks and between the goods or services, must be taken into account. The distinctiveness of the earlier mark is normal.

Moreover in the present case, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49)

In fact, both proteins and creatine are among the most used food supplements by athletes, (professionals or committed amateurs) therefore even the non-professional public will perceive these elements as merely descriptive of a characteristic of the goods and will perceive the term ‘ARMOR’ as the brand of the goods.

Considering all the above, there is a likelihood of confusion on the part of the French–speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 384 987. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

Francesca CANGERI SERRANO

José Antonio GARRIDO OTAOLA

Michele M. BENEDETTI-ALOISI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.