OPPOSITION No B 2 149 303

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, 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 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 149 303 is upheld for all the contested goods.

2.        European Union trade mark application No 11 223 518 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 223 518. The opposition is based on, inter alia, European Union trade mark registration No 10 751 841. 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 10 751 841.

1. The goods and services

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

Class 5: Protein for human consumption.

Class 29: Milk products.

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: Mineral food supplements, Foodstuffs with a base of amino acids; Food supplements with a base of minerals; 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.

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 foodstuffs, not adapted for medical use, with a base of proteins, With added vitamins, minerals, trace elements.

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 Class 5

The opponent’s protein for human consumption in Class 5 consists in protein supplements for special dietary requirements (for instance athletes require elevated protein intake).

The contested protein dietary supplements overlap with the opponent’s protein for human consumption since the contested goods include protein supplements for humans and animals. Therefore, they are identical.

The contested food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements includes, as a broader category, or overlaps with, the opponent’s protein for human consumption. 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 mineral food supplements, foodstuffs with a base of amino acids; food supplements with a base of minerals; 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 are food supplements and vitamins. They are highly similar to the opponent’s protein for human consumption which are protein supplements prepared for special dietary requirements. These goods have the same nature, purpose and method of use, they are manufactured by the same companies and distributed through the same channels. They also target the same consumers.

Contested goods in Class 29

The contested edible oils are similar to the opponent’s milk products since the later include butter. Therefore, these goods have the same purpose, they are in competition and they target the same public.

The contested dietetic foodstuffs, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; dietetic foodstuffs, not adapted for medical use, with a base of proteins, with added vitamins, minerals, trace elements are similar to the opponent’s protein for human consumption which are protein supplements prepared for special dietary requirements. These goods have the same purpose and method of use (to enhance one’s diet in order to treat a specific condition or to achieve certain health-related results), they are manufactured by the same companies and distributed through the same channels. They also target the same consumers.

Albumen is defined as the ‘egg white, or the protein contained in it’ (definition extracted from Oxford dictionary on 22/03/2017 at https://en.oxforddictionaries.com). Therefore, the contested albumen for culinary purposes is similar to the opponent’s protein for human consumption since both are protein products which can be used as food supplements. Furthermore, these goods may have the same purpose, they share the same manufacturers and they target the same public.

Contested goods in Class 30

The contested dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements are similar to the opponent’s protein for human consumption which are protein supplements prepared for special dietary requirements. These goods have the same purpose and method of use (to enhance one’s diet in order to treat a specific condition or to achieve certain health-related results), they are manufactured by the same companies and distributed through the same channels. They also target the same consumers.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. As regards the dietetic foodstuffs and supplements, it is likely that the public would display a relatively high degree of attention when purchasing them, considering that they may, to a lesser or greater extent, affect their state of health. Therefore, the degree of attention varies from average (e.g. for edible oils) to high (for dietetic foodstuffs and food supplements. In this regard, reference is made to 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).

3. The signs

GNC
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 ‘LABORATORIES’ is meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The letters ‘GNC’ constituting the earlier mark have no meaning and are therefore distinctive to an average degree.

The letters ‘GN’ of the contested sign are depicted in large stylised characters, in gold, with a white border. These letters have no meaning and are therefore distinctive. They also constitute the dominant element of the sign due to their size and position compared to the element ‘LABORATORIES’ written underneath in smaller and thiner letters. Furthermore, this word will be associated with ‘a room or building equipped for scientific experiments, research, or teaching, or for the manufacture of drugs or chemicals’ (definition extracted from Oxford dictionary on 22/03/2017 at https://en.oxforddictionaries.com). In relation to the goods, this element is non-distinctive or weak since it indicates that the goods are produced or tested in laboratories.

Regarding the stylisation of the contested sign, it is considered that it performs an essentially decorative function. The public is used to perceive such depictions as ornamental elements and will instantly attribute more trade mark significance to the verbal elements of the sign.

Therefore, the element ‘GN’ is the distinctive and dominant element of the contested sign.

Visually, the signs coincide in the letters ‘GN’ which constitute the first two letters of the earlier sign and the dominant and distinctive element of the contested sign. The signs differ in the letter ‘C’ of the earlier mark, in the stylisation of the contested sign and in its additional element ‘LABORATORIES’. Bearing in mind the foregoing assessment concerning the distinctive and dominant components of the signs, it is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛G-N’, present identically in both signs. The pronunciation differs in the sound of the final letter ‘C’ of the earlier sign and in the sound of the element ‘LABORATORIES’ of the contested sign. However, since this element is neither distinctive nor dominant, it is probable that the relevant public will refer to the mark aurally as just 'GN' which enhances the similarity (T-206/12, LIBERTE American blend, EU:T:2013:342, § 43-4 and T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). Therefore, the signs are aurally similar to an average degree.

Conceptually, the earlier mark ‘GNC’ and the letters ‘GN’ of the contested sign have no meaning. Contrary to the applicant’s argument, nothing indicates that the earlier mark will be perceived as meaning ‘General Nutrition Corporation’ or ‘General Nutrition Center’. The word ‘LABORATORIES’ of the contested sign has the meaning given above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, given that the element ‘LABORATORIES’ is non-distinctive or weak in relation to the goods, the conceptual difference lying in this element is reduced.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

The goods are identical or similar to varying degrees. The inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree on account of the common letters ‘GN’. The differences lying in the letter ‘C’ of the earlier sign and in the stylisation and additional word ‘LABORATORIES’ of the contested sign are not sufficient to counteract the visual and aural similarities between the signs. In particular, the stylisation of the contested sign is essentially decorative and the word ‘LABORATORIES’ is non-distinctive or weak. Furthermore, although the earlier sign ‘GNC’ and the element ‘GN’ of the contested sign are short, the additional final letter ‘C’ of the earlier sign is not sufficient to distinguish the signs which coincide in their two first letters.

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 or economically linked undertakings.

In the present case, the Opposition Division considers that the relevant consumer is likely to perceive the identical and similar goods designated by the conflicting signs as belonging to product lines that come from the same undertaking or economically-linked undertakings. The relevant public may assume that the contested sign ‘GN LABORATORIES’ represents a sub-brand of the earlier mark ‘GNC’.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the English-speaking part of the public, even though the public is endowed with a high degree of attention. 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 10 751 841. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Catherine MEDINA

Frédérique SULPICE

Boyana NAYDENOVA

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.