OPPOSITION No B 2 448 036

General Nutrition Investment Company, 1011 Centre Road, Suite 322, Wilmington, Delaware Arizona 19805, United States of America (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, B-1831 Diegem, Belgium, (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 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 448 036 is partially upheld, namely for the following contested goods:

Class 5: Dietary supplements on the basis of trace elements; Vitamin preparations; 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; Protein dietary supplements; Food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements; Nutritional supplements; Mineral food supplements; Dietary supplements for humans; Dietary supplements and dietetic preparations; Dietary and nutritional supplements; Dietary and nutritional supplements; Dietary and nutritional supplements; Dietary supplemental drinks; Nutritional supplements; Flaxseed dietary supplements; Flaxseed oil dietary supplements; Propolis dietary supplements; Lecithin dietary supplements; Albumin dietary supplements; Pollen dietary supplements; Enzyme dietary supplements; Casein dietary supplements; Yeast dietary supplements; Wheat germ dietary supplements; Alginate dietary supplements; Royal jelly dietary supplements; Glucose dietary supplements; Health food supplements made principally of vitamins; Health food supplements made principally of minerals; Vitamin preparations in the nature of food supplements; Nutraceuticals for use as a dietary supplement.

Class 29: 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 purposes, with a base of proteins, with added vitamins, minerals and trace elements.

Class 30: Dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements.

2.        European Union trade mark application No 13 116 678 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 13 116 678. The opposition is based on, inter alia, European Union trade mark registration No 10 751 881. 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.

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 10 751 881, which was not subject to a request for proof of use.

1. The goods and services

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

Class 35: Retail store services featuring health foods, dietary supplements, nutritional supplements, herbs, vitamins, sports nutrition products, fitness products and apparel, cosmetics, body care, diagnostic exercise or aromatherapy products.

The contested goods are the following:

Class 5: Dietary supplements on the basis of trace elements; Vitamin preparations; 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; Protein dietary supplements; Food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements; Nutritional supplements; Mineral food supplements; Dietary supplements for humans; Dietary supplements and dietetic preparations; Dietary and nutritional supplements; Dietary and nutritional supplements; Dietary and nutritional supplements; Dietary supplemental drinks; Nutritional supplements; Flaxseed dietary supplements; Flaxseed oil dietary supplements; Propolis dietary supplements; Lecithin dietary supplements; Albumin dietary supplements; Pollen dietary supplements; Enzyme dietary supplements; Casein dietary supplements; Yeast dietary supplements; Wheat germ dietary supplements; Alginate dietary supplements; Royal jelly dietary supplements; Glucose dietary supplements; Health food supplements made principally of vitamins; Health food supplements made principally of minerals; Vitamin preparations in the nature of food supplements; Nutraceuticals for use as a dietary supplement.

Class 29: Albumen for culinary purposes; Edible oils; 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 purposes, with a base of proteins, with added vitamins, minerals and trace elements; Oils and fats.

Class 30: Dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 Classes 5, 29 and 30

The contested goods in all classes are all types of health foods, dietary supplements, nutritional supplements or vitamins, expressed in more detailed terms. This is clear from the wording of the goods. For example, in Class 5, the goods are largely referred to as ‘dietary supplements, food supplements, and vitamin preparations’, and in Classes 29 and 30, ‘dietetic foods and foodstuffs’. The only goods which do not fall under the above categories are albumen for culinary purposes; edible oils; oils and fats in Class 29, which belong to the category of general foodstuffs and ingredients.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, all the contested goods in Classes 5, 29 and 30, except for albumen for culinary purposes; edible oils; oils and fats in Class 29, are similar to a low degree to the opponent’s retail store services featuring health foods, dietary supplements, nutritional supplements, vitamins in Class 35.

The remaining contested goods, albumen for culinary purposes; edible oils; oils and fats in Class 29, and the earlier Retail store services featuring health foods, dietary supplements, nutritional supplements, herbs, vitamins, sports nutrition products, fitness products and apparel, cosmetics, body care, diagnostic exercise or aromatherapy products are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor 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 similar to a low degree are directed at the public at large.

The public’s degree of attentiveness may vary from average to slightly higher than average considering that the goods and services at issue are concerned with a person’s health and wellbeing.

3. The signs

GNC GENERAL NUTRITION CENTERS
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 common element ‘NUTRITION’ is not meaningful in certain territories, for example, in countries with languages which do not have a Latin root, for example, in Polish, Czech, Bulgarian, Slovenian and Lithuanian (see in this regard, the decision of the Second Board of Appeal of 05/04/2016, in case R 972/2015-2, GONUTRITION/GOLDNUTRITION) . Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public which speaks these languages.

The contested sign is a figurative mark which consists of the stylised gold capital letters ‘GN’. The words ‘GENETIC NUTRITION’ are written below in gold, standard smaller capitals. On the right hand side of the sign, the word ‘LABORATORIES’ appears in very small, faint gold capital letters. The word is written vertically.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, the word ‘LABORATORIES’ is barely perceptible within the whole figurative sign. It is not only hard to read due to its size but also because of its vertical positioning. As it is likely to be disregarded by the relevant public, it will not be taken into consideration.

‘GENETIC’ will be understood as referring to ‘genes or heredity’ by the relevant public because there are similar words in the languages mentioned above. It is distinctive in connection with the relevant goods and services, even if it brings to mind something scientific. The stylised letters ‘GN’ are distinctive and visually dominant. It is worth noting that they will probably be seen as standing for the words below, ‘GENETIC NUTRITION’.

The earlier mark is a word mark. The word ‘NUTRITION’ has already been assessed and commented on above. ‘GENERAL’ may be associated by speakers of Polish, Czech, Bulgarian, Slovenian and Lithuanian with a high ranking officer in the army. It has a normal degree of distinctiveness. ‘CENTERS’ will be understood as referring to ‘places where a specified activity is concentrated’. It lacks distinctiveness because it merely denotes a place where activity is undertaken. ‘GNC’ is distinctive. It is worth noting that these letters will probably be seen as standing for the words which follow, ‘GENERAL NUTRITION CENTERS’.

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, or from top to bottom, which makes the part placed at the left of the sign, or the top (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the initial letters ‘GN’, which appear at the beginning of the marks, and the word ‘NUTRITION’, all of which are distinctive, even if it is a less dominant element in the contested sign.  They also coincide somewhat in the words ‘GENERAL’ and ‘GENETIC’, which have the first four letters in common and have the same length. Even if ‘GENETIC’ is a smaller element, it will not be completely overlooked. They differ in all the other elements already described above, including the stylisation of the contested sign. Nevertheless, ‘CENTERS’ in the earlier mark lacks distinctiveness and appears in the final position.

In view of all the reasoning given above, the signs are similar to an average degree.

Aurally, the signs coincide in their beginnings ‘GN’. They also coincide in ‘NUTRITION’ and the string of letters ‘GENE’. They differ in all the other elements already described above.

Therefore, the signs are similar to an 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 dissimilar meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision. At this point, the Opposition Division considers it useful to rebut the applicant’s claim that the earlier mark lacks distinctiveness overall because ‘GNC’ will be seen as standing for ‘GENERAL NUTRITION CENTERS’. While this may be true, as already explained above, even if ‘GNC’ is seen as standing for these words, both ‘GENERAL’ and ‘NUTRITION’ have been found distinctive in connection with the relevant goods and services. For this reason, the applicant’s argument in this regard must be dismissed.

5. Global assessment, other arguments and conclusion

The marks at issue have been found visually and aurally similar to an average degree and the goods and services similar to a low degree and dissimilar.

The marks coincide in their beginnings, ‘GN’. Those letters are also the most visually dominant part of the contested sign. It is also true that the earlier mark contains the extra letter ‘C’. Were the marks to consist merely of these letters, ‘GNC/GN’, the extra letter in the acronym of the earlier mark could be enough to distinguish between the signs. However, and as underlined in the reasoning above, the reality is that the marks contain other elements, one of which, ‘NUTRITION’, is identically contained in each sign and is perfectly distinctive in connection with the goods and services for the relevant public. Furthermore, the words ‘GENERAL’ and ‘GENETIC’ also bear some similarities. Finally, even if ‘GNC’ and ‘GN’ are seen as standing for the other words contained in the marks, as claimed by the applicant, this will merely result in the consumer’s attention being focused on a perfectly distinctive and lengthy shared word, ‘NUTRITION’, and the words ‘GENERAL/GENETIC’, which have a degree of visual and aural similarity. For all of these reasons, the Opposition Division finds it probable that the relevant consumer could confuse the marks, even taking into account the lower degree of similarity of the goods and services and the slightly higher degree of attention of the consumers. It should be recalled 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). The coincidences are sufficiently noticeable and the identical, distinctive word ‘NUTRITION’ tips the balance in favour of confusion occurring.

Finally, 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 Polish, Czech, Bulgarian, Slovenian and Lithuanian  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 similar to a low degree to the 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to lowly similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 10 751 841 for the word mark ‘GNC’ for goods in Classes 5 and 29 and services in Class 35.

• European Union trade mark registration No 10 752 161 for the word mark ‘GNC TOTAL LEAN’ for goods in Classes 5 and 29.

Even though some of the goods found dissimilar above could potentially be found similar to the goods in Class 29 covered by these earlier rights, namely, milk products in Class 29, it must be borne in mind that these marks are less similar to the contested mark. Crucially, these marks do not contain the word ‘NUTRITION’, which was deemed to be a key factor in finding likelihood of confusion above. One of these earlier rights contains extra words, ‘TOTAL’ and ‘LEAN’, which bear no resemblance to the word elements of the contested sign, while the other sign merely consists of three letters and does not include any of the other words (‘GENERAL’ and ‘NUTRITION’) which led to a finding of likelihood of confusion above. As such, no likelihood of confusion exists with respect to these earlier rights, even assuming a link between the goods as mentioned above. Furthermore, even assuming that these rights enjoyed a degree of enhanced distinctiveness, this would not overcome the very considerable differences with the contested mark which would dispel any confusion.

Finally, the opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 183 475 for the figurative mark for the following goods in Classes 3 and 5 and services in Class 42:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; including cosmetic oils and lotions, skin preparations, namely freshener, toner, cleansing and moisturizing creams and lotions; hair conditioners, liquid toilet soap and hair shampoos.

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; including pharmaceutical and dietary food supplements, especially nutritional food supplements containing vitamins, minerals and herbs in the form of capsules, tablets, powders and liquids.

Class 42: Technical consultancy and advising the establishment of retail stores in the field of health foods, supplements, vitamins, cosmetics, hair and skin care products, oral and body products, diagnostic and exercise equipment, calorie control products, and comfort and relaxation products.

Since this mark contains almost identical word elements to those which have been compared above and covers goods and services such as cleaning products and cosmetics in Class 3 and technical consultancy services in Class 42 which are clearly different to those applied for in the contested trade mark, no likelihood of confusion exists with respect to those goods and services. Furthermore, although the earlier mark covers goods in Class 5 as listed above, these goods are clearly different to albumen for culinary purposes; edible oils; oils and fats in Class 29 of the contested mark, which were found dissimilar above. They bear no relevant points of contact whatsoever. They will not derive from the same manufacturers, be distributed through the same channels, they serve different purposes and they are not complementary or in competition with one another. Therefore, no likelihood of confusion exists with respect to those goods and services. Since all of these goods and services are dissimilar, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Finally, given that the opposition is not well founded under Article 8(1) EUTMR in respect of this right, it is unnecessary to examine the evidence of use filed by the opponent for this particular earlier right.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vít MAHELKA

Lucinda CARNEY

Vanessa PAGE

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.