OPPOSITION No B 2 769 266
Frank Nedder, Am Pellerbruch 30, 21271 Hanstedt, Germany (opponent),
represented by Uexküll & Stolberg Partnerschaft von Patent- und
Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional
a g a i n s t
LifeVantage Corporation, 9785 South Monroe Street, Suite 300, Sandy Utah 84070
United States of America (applicant), represented by Mitscherlich Patent- und
Rechtsanwälte Partmbb, Sonnenstraße 33, 80331 Munich, Germany (professional
On 20/10/2017, the Opposition Division takes the following
1. Opposition No B 2 769 266 is upheld for all the contested goods.
2. European Union trade mark application No 15 545 213 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 545 213 for the word mark ‘AXIO SMART ENERGY’. The
opposition is based on, inter alia, international trade mark registration No 1 179 399
designating the European Union for the figurative mark . The opponent
invoked Article 8(1)(b) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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
Decision on Opposition No B 2 769 266 page: 2 of 7
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 international trade mark registration No 1 179 399 designating the
a) The goods and services
The goods on which the opposition is based are, inter alia, the following:
Class 5: Chemico-pharmaceutical preparations, chemical preparations for medical,
pharmaceutical and veterinary purposes, biological preparations for
medical and veterinary purposes; pharmaceutical preparations; serums;
The contested goods are, after the applicant’s limitation of 14/10/2016, the following:
Class 5: Dietary and nutritional supplements except for animals; nutraceuticals for
use as dietary and nutritional supplements except for animals; functional
foods for use as dietary or nutritional supplements except for animals,
powdered nutritional supplement drink mix except for animals; nutritional
supplement additives sold separately to be used with beverages except for
Class 32: Sports drinks and energy drinks enhanced with nutritional additives.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
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 and nutritional supplements except for animals; nutraceuticals
for use as dietary and nutritional supplements except for animals; functional foods for
use as dietary or nutritional supplements except for animals, powdered nutritional
supplement drink mix except for animals; nutritional supplement additives sold
separately to be used with beverages except for animals are all substances prepared
for special dietary requirements with the purpose of treating or preventing disease.
Bearing this in mind, their purpose is similar, i.e. to that of the opponent’s
pharmaceutical preparations (substances used to treat disease) insofar as they are
all used to improve a patient’s medical condition. The relevant public coincides and
the goods generally have the same distribution channels. Therefore, these goods are
Decision on Opposition No B 2 769 266 page: 3 of 7
Contested goods in Class 32
The contested sports drinks and energy drinks enhanced with nutritional additives
are also substances prepared for special dietary requirements, with the purpose of
improving health conditions. Bearing this in mind, their purpose is similar to that of
pharmaceutical preparations in Class 5 insofar as they are used to improve a
consumer’s physical condition. As for the contested energy drinks enhanced with
nutritional additives, these goods generally contain stimulants such as caffeine as
well as vitamins, while the contested sports drinks contain a particular proportion of
sodium and sugar which is comparable to isotonic beverages, to the less
concentrated hypotonic beverages or the more concentrated hypertonic beverages
than what is found naturally in the human body. Similarly to the opponent’s
pharmaceutical preparations, these beverages are consumed in order to increase
physical well-being and health. For instance, sports beverages, just as certain
vitamins, may be consumed after a gruelling sports performance, such as a
marathon, in order to speed up recovery. The nature and purpose of the conflicting
goods is very similar. On account of the fact that pharmaceutical preparations may be
taken upon advice of a medical professional or even prescribed by a physician, but
can also be ingested by the user directly, i.e. without the recommendation of a doctor.
Consequently, contrary to the applicant’s assertion, the Opposition Division considers
that these goods are considered similar to a low degree.
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 similar (to various degrees) are directed
both at the public at large and at business customers with specific professional
knowledge or expertise, namely healthcare professionals (including doctors and
At least the goods in Class 5 are likely to receive a heightened degree of attention
from the general public, given that they are health related. Indeed, it is apparent from
case law that, as far as pharmaceutical preparations are concerned, the relevant
public’s degree of attention is relatively high, whether or not the goods in question
are issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, §§ 26
In particular, medical professionals have a high degree of attention when prescribing
or dispensing medicines. Non-professionals also show a higher than average degree
of attention, even if the pharmaceuticals are sold without prescription, as these goods
affect their health.
As regards the goods in Class 32, the relevant public is the public at large whose
level of attention is average.
Decision on Opposition No B 2 769 266 page: 4 of 7
c) The signs
AXIO SMART ENERGY
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application. In the present case, the Opposition Division finds it appropriate to focus
the comparison of the signs on the English-speaking part of the relevant public, since
the contested sign is composed of, inter alia, meaningful terms for these consumers.
The earlier mark is a figurative mark made up of the term ‘AXXO’ written in a fairly
standard typeface in bold capital letters. The third letter of said element, namely the
letter ‘X’ is written in white and placed inside of a black vertical rectangular frame,
whereas the remaining letters are written in black. The Opposition Division notes that
in principle, figurative elements of signs may have a lesser impact in their overall
impressions than their verbal elements, because the public tends to refer to trade
marks by their verbal elements rather than by describing their figurative components.
Nevertheless, it should be pointed out that even though a rectangular background is
often used as a purely decorative element in figurative marks, in the present case, its
impact cannot be ignored owing to its vertical shape, position and the white letter ‘X’
placed within it. Thus, it is considered that the earlier sign does not have any
elements that could be clearly considered more visually eye-catching than others.
Moreover, the verbal element of the earlier mark has no meaning and so is normally
distinctive for the goods at hand.
The contested sign is made up of the terms ‘AXIO’, ‘SMART’ and ‘ENERGY’. As
regards the term ‘AXIO’, since it has no meaning, it is distinctive in relation to the
goods at hand. As to the contested sign’s additional elements ‘SMART ENERGY’,
however, in the context of the relevant goods, consumers will perceive these terms
as a mere indication of the characteristics of the goods, informing the consumer that
by using these goods they attribute to a more energetic lifestyle and stamina in an
intelligent way. Therefore, these elements are considered weak and ‘AXIO’ is the
most distinctive element of the contested sign.
Visually, the signs coincide in the letters ‘AX*O’ which constitute the whole verbal
part of the earlier mark and the first and most distinctive element of the contested
sign, whereas they differ in the third letter of the same elements, namely ‘X’ vs ‘I’.
Decision on Opposition No B 2 769 266 page: 5 of 7
Furthermore, the Opposition Division highlights that consumers generally tend to
focus on the first element of a sign when being confronted with a trade mark. This is
justified by the fact that 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. The additional words in the contested sign, ‘SMART ENERGY’, will be
perceived as meaningful and will as such receive less attention from the relevant
public, because they are weak for the goods at stake.
Therefore, it is considered that the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /A-X-*-O/
which constitutes virtually the entire earlier mark and, together with the sound of the
additional third letter ‘-I-’, both the first and the most distinctive element of the
contested sign. For the sake of completeness, it should be mentioned that the
additional letter ‘X’ in the earlier mark is the repetition of the preceded common letter
‘X’ and as such it will only be pronounced as being a single letter. Even though the
contested sign also includes the letter ‘I’, since it is placed in the middle and is
surrounded by the same letters as in the earlier mark, the sound of this letter is very
much absorbed by the letters surrounding it. Insofar as the remaining words of the
contested sign are concerned, namely ‘SMART ENERGY’, they are considered
secondary for the reasons set forth above.
The marks are, aurally, similar to a high degree.
Conceptually, the relevant public will perceive the words ‘SMART ENERGY’ in the
contested sign with the meaning explained above, while the remaining elements in
the marks are meaningless. This leads to the conclusion that the marks are
conceptually not similar. However, the impact of this conceptual difference between
the marks has a very limited impact on the relevant public since these elements are
weak which will make that the consumers will focus more on the remaining parts of
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
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
Decision on Opposition No B 2 769 266 page: 6 of 7
assumption that they bear the marks in question, come from the same undertaking
or, as the case may be, from economically-linked undertakings.
As has been concluded, the goods at stake are similar (to various degrees). The
earlier mark has a normal degree of distinctiveness. The relevant public is the public
at large, including professionals insofar as the goods in Class 5 are concerned. The
level of attention varies from average to high. The signs are visually similar to an
average degree and aurally to a high degree. Although the signs are conceptually not
similar, the impact of this conceptual difference between the marks has a very limited
impact on the relevant public since these elements are weak which will make that the
consumers will focus more on the remaining parts of the marks.
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). 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,
Considering all the above, there is a likelihood of confusion on the part of the
English-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.
In view of all the relevant factors in the present case and also the principle of
interdependence between them, i.e. the principle that a lesser degree of similarity
between the goods/services may be offset by a greater degree of similarity between
the marks, the relevant public could be mistaken as to the origin of those goods that
are similar even only to a low degree. The similarity of the signs outweighs the low
similarity of these goods.
For the sake of completeness, the Opposition Division duly notes that the applicant
refers to previous decisions of the Office to support its arguments regarding lack of
similarity between the goods and dissimilarity of the marks. However, the Office is not
bound by its previous decisions as each case has to be dealt with separately and
with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Moreover, as regards the quoted Boards’ decisions concerning the alleged
dissimilarity of the marks, the Opposition Division would like to draw the applicant’s
attention that mostly the marks in the mentioned cases are three letters marks vs two
letters mark and so the scenario, in any event, is not comparable.
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 179 399 designating the European Union. It follows that
the contested trade mark must be rejected for all the contested goods.
As the earlier right, namely international trade mark registration No 1 179 399
designating the European Union, leads to the success of the opposition and to the
rejection of the contested trade mark for all the goods against which the opposition
Decision on Opposition No B 2 769 266 page: 7 of 7
was directed, there is no need to examine the other earlier right invoked by the
opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 109(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 Article 109(1) and (7) EUTMR and
Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR,
in force before 01/10/2017), 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
Chantal VAN RIEL Klaudia MISZTAL Saida CRABBE
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.