OPPOSITION DIVISION
OPPOSITION No B 2 811 423
Healthyco AB, Skiffervägen 102, 224 78 Lund, Sweden (opponent), represented by
Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional
representative)
a g a i n s t
NutriNord ApS, Plastvænget 3 D, 9560 Hadsund, Denmark (applicant), represented
by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional
representative).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 811 423 is partially upheld, namely for the following
contested goods:
Class 29 Butter; butter preparations; butter substitutes; dairy spreads;
vegetable spreads; hazelnut spreads; jellies [bread spreads];
seed butters; nut butter; almond butter; peanut butter; shelled
nuts; edible seeds; processed nuts; seeds, prepared; fruit-
based snack food (included twice in the applicant’s list); potato
chips; vegetable chips; soy-based snack foods; nut and seed-
based snack bars.
Class 30 High-protein cereal bars (included twice in the applicant’s list);
chocolate creams; cocoa based creams in the form of spreads;
chocolate spreads; chocolate candies; chocolate syrup;
confectionery; ginseng confectionery; acid drops
[confectionery]; rice biscuits; syrup for food; muesli bars; bars
based on wheat; pastries; rice crisps; rice-based snack food;
breakfast cereals containing fibre; table syrup; flavouring
syrups (included twice in the applicant’s list); bread.
2. European Union trade mark application No 15 869 076 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Preliminary Remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 811 423 page: 2 of 6
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 869 076 for the word mark ‘PROTEINELLA’. The opposition is
based on Swedish trade mark registration No 533 240 for the word mark
‘PROTEINELLA’. The opponent invoked Article 8(1)(a) and (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 Protein dietary supplements; dietary supplements; soy protein dietary
supplements; wheat dietary supplements; Food supplements
consisting of amino acids; Dietary supplements for humans not for
medical purposes
Class 30 Chocolate creams; chocolate products; cocoa based creams in the
form of spreads; non-medicated confectionery for use as part of a
calorie controlled diet; non-medicated flour confectionery coated with
chocolate; non-medicated flour confectionery containing chocolate;
chocolate topping; chocolate-coated nuts; chocolate-coated pretzels;
chocolate coated nuts; biscuits having a chocolate coating; high-
protein cereal bars.
Decision on Opposition No B 2 811 423 page: 3 of 6
The contested goods are the following:
Class 29 Edible oils; blended oil [for food]; coconut oil; coconut powder; butter;
butter preparations; butter substitutes; dairy spreads; vegetable
spreads; hazelnut spreads; jellies [bread spreads]; seed butters; nut
butter; shelled nuts; edible seeds; cocoa butter; almond butter; peanut
butter; spiced oils; vegetable fats for cooking; processed nuts; seeds,
prepared; fruit powders; fruit-based snack food; dips; potato chips;
extracts for soups; fruit-based snack food; vegetable chips; soy-based
snack foods; nut and seed-based snack bars.
Class 30 Cocoa; sugar; rice; tapioca; sago; flour; flour mixes; bread; pastries;
confectionery; ice cream; honey; table syrup; syrup for food; yeast;
baking powder; salt; mustard; vinegar; sauces; seasonings; almond
paste; almond flour; rice biscuits; breakfast cereals containing fibre;
chocolate spreads; coconut flour for human consumption; icing sugar;
brown sugar; high-protein cereal bars; natural sweeteners; processed
ginseng used as a herb, spice or flavoring; ginseng confectionery;
carbohydrate preparations for food; rice crisps; rice-based snack food;
aniseed; aromatic preparations for food; chocolate syrup; extracts
used as flavoring [not essential oils]; essences for use in cooking
[other than essential oils]; chocolate candies; acid drops
[confectionery]; muesli bars; flavouring syrups; chocolate creams;
cocoa based creams in the form of spreads; linseed for human
consumption; caraway seeds; roasted and ground sesame seeds;
pastry mixes; ready-made baking mixtures; sugar substitutes;
flavouring syrups; bars based on wheat; high-protein cereal bars;
coconut sugar.
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 29
The contested butter; butter preparations; butter substitutes; dairy spreads;
vegetable spreads; hazelnut spreads; jellies [bread spreads]; seed butters; nut
butter; almond butter; peanut butter are similar to the opponent’s cocoa based
creams in the form of spreads in Class 30 as they are similar in nature and method of
use (all of them being processed spreadable foodstuffs) and can coincide in relevant
public and distribution channels. Furthermore, they are in competition with each other
The contested shelled nuts; edible seeds; processed nuts; seeds, prepared are
similar to the opponent’s chocolate-coated nuts in Class 30 as they can coincide in
producer, end user, method of use and distribution channels and they can be in
competition with each other.
The contested fruit-based snack food (included twice in the applicant’s list); potato
chips; vegetable chips; soy-based snack foods; nut and seed-based snack bars are
similar to the chocolate-coated pretzels. All of them being processed snack food they
are somewhat similar in nature and can coincide in relevant public and method of
use. Furthermore, they are in competition with each other.
Decision on Opposition No B 2 811 423 page: 4 of 6
Edible oils; blended oil [for food]; coconut oil; spiced oils; vegetable fats for cooking;
cocoa butter; coconut powder; fruit powders; extracts for soups; dips are dissimilar to
all the opponent’s goods in Classes 5 and 30 as they differ in nature, purpose,
method of use and producer. Even though they might generally be available in the
same stores as some of the opponent’s goods (e.g. in a supermarket) they will be
sold in different sections of the store and not alongside the goods of the earlier mark.
They are neither in competition nor complementary to each other.
Contested goods in Class 30
High-protein cereal bars (included twice in the applicant’s list); chocolate creams;
cocoa based creams in the form of spreads are identically contained in both lists of
goods.
The contested chocolate spreads; chocolate candies; chocolate syrup are included in
the broad category of the opponent’s chocolate products. Therefore, they are
identical.
The contested confectionery includes, as a broader category the opponent’s non-
medicated confectionery for use as part of a calorie controlled diet 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 ginseng confectionery; acid drops [confectionery] overlap with the
opponent’s non-medicated confectionery for use as part of a calorie controlled diet.
Therefore, they are identical.
The contested rice biscuits overlap with the opponent’s biscuits having a chocolate
coating. Therefore, they are identical.
The contested syrup for food overlaps with the opponent’s chocolate topping.
Therefore, they are identical.
The contested muesli bars; bars based on wheat overlap with the opponent’s high-
protein cereal bars. Therefore, they are identical.
The contested pastries overlap with the opponent’s non-medicated flour
confectionery coated with chocolate. Therefore, they are identical.
The contested rice crisps; rice-based snack food; breakfast cereals containing fibre
are similar to the opponent’s high-protein cereal bars as they can coincide in
purpose, producer, end user and distribution channels. Furthermore they are in
competition with each other.
The contested table syrup; flavouring syrups (included twice in the applicant’s list) are
similar to the opponent’s chocolate topping as they have the same purpose and
method of use and can coincide in producer, end user and distribution channels.
Furthermore they are in competition with each other.
The contested bread is similar to a low degree to the opponent’s non-medicated
confectionery for use as part of a calorie controlled diet as they can coincide in
producer, end user and distribution channels.
Decision on Opposition No B 2 811 423 page: 5 of 6
The contested cocoa; sugar; rice; tapioca; sago; flour; flour mixes; honey; yeast;
baking powder; salt; mustard; vinegar; sauces; seasonings; almond paste; almond
flour; coconut flour for human consumption; icing sugar; brown sugar; ice cream;
natural sweeteners; processed ginseng used as a herb, spice or flavoring; aniseed;
aromatic preparations for food; carbohydrate preparations for food; extracts used as
flavoring [not essential oils]; essences for use in cooking [other than essential oils];
linseed for human consumption; caraway seeds; roasted and ground sesame seeds;
pastry mixes; ready-made baking mixtures; sugar substitutes; coconut sugar are
dissimilar to all the opponent’s goods in Classes 5 and 30 as they differ in nature,
purpose and producer. Even though they might generally be available in the same
stores as some of the opponent’s goods (e.g. in a supermarket) they will be sold in
different sections of the store and not alongside the goods of the earlier mark. They
are not in competition with each other.
They are also not complementary. The mere fact that one foodstuff might be needed
as an ingredient for the preparation of another foodstuff will generally not be sufficient
in itself to show that the goods are similar, even though they all fall under the general
category of foodstuffs (judgment of 26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-
36).
Complementarity applies only to the use of goods and not to their production process
(judgment of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40 and decision of
11/12/2012, R 2571/2011-2, FRUITINI, § 18).
b) The signs
PROTEINELLA PROTEINELLA
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, 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, some contested goods, as established above in section a) of this
decision, were found to be (lowly) similar to those covered by the earlier trade mark.
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 covered are from the same or
economically linked undertakings.
Given the identity of the signs, there is a likelihood of confusion within the meaning of
Article 8(1)(b) EUTMR as the consumer will naturally assume that they have the
same commercial origin. Therefore, the opposition is upheld also insofar as it is
directed against these goods.
Decision on Opposition No B 2 811 423 page: 6 of 6
The rest of the contested goods are dissimilar. As the 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
Sigrid DICKMANNS Tobias KLEE Swetlana BRAUN
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.