OPPOSITION No B 2 530 247

FitX Beteiligungs GmbH, Stoppenberger Str. 61, 45141 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Muscle Market B.V., Debussystraat 29, 2625 BB Delft, The Netherlands (applicant), represented by Considine B.V., Corkstraat 46, 3047 AC Rotterdam, The Netherlands (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 530 247 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 724 901. The opposition is based on European Union trade mark registration No 13 413 554. 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 and services

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

Class 3:        Antiperspirants [toiletries]; aromatics [essential oils]; flavourings for beverages [essential oils]; bath salts, not for medical purposes; non-medicated lotions; deodorants for human beings or for animals; greases for cosmetic purposes; shampoo; hair lotions; cosmetics; cosmetic kits; make-up; massage gels other than for medical purposes; oils for toilet purposes; perfumery; cosmetic preparations for slimming purposes; make-up; cosmetic masks; shampoo; tissues impregnated with cosmetic lotions; petroleum jelly for cosmetic purposes; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes.

Class 5:        Nutritional supplements; nutritional supplements; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants.

Class 9:         Ergometers; frequency meters; weights; pedometers; protective helmets for sports; sunglasses; goggles for sports; teaching apparatus; balancing apparatus.

Class 24:        Bath linen (except clothing); cotton fabrics; curtains for showers; gauze [cloth]; gummed cloth, other than for stationery; towels; fabric for footwear; fabrics; elastic woven material.

Class 25:        Suits; layettes [clothing]; swimming costumes; trunks; bath robes; swimming caps; bath sandals; bath shoes; bandanas [neckerchiefs]; clothing of imitations of leather; motorists’ clothing; clothing; paper clothing; tights; brassieres; shower caps; soles for footwear; mittens; football boots; footmuffs, not electrically heated; goloshes; gaiters; belts (money -) [clothing]; non-slipping devices for footwear; belts [clothing]; clothing for gymnastics; gymnastic shoes; scarves; gloves; slippers; slips [undergarments]; shirts; pants (am.); garters; girdles; headgear; jackets [clothing]; jumpers; jackets (stuff -) [clothing]; skull caps; hoods [clothing]; linings (ready-made -) [parts of clothing]; pockets for clothing; ready-to-wear clothing; headgear; camisoles; corsets; shoulder wraps; clothing of leather; sweat-absorbent underwear; dressing gowns; caps [headwear]; cap peaks; muffs [clothing]; outerclothing; ear muffs [clothing]; combinations [clothing]; parkas; pelerines; petticoats; pullovers; cyclists’ clothing; mackintoshes; skirts; sandals; saris; sashes for wear; nighties; sleep masks; knickers; lace boots; aprons [clothing]; footwear; ski boots; pants (am.); socks; sports shoes; sports shoes; boots; headbands [clothing]; espadrilles; studs for football boots; beachwear; beach shoes; stockings; tights; pullovers; tee-shirts; knitwear [clothing]; singlets; topcoats; pants (am.); underwear; wetsuits for water-skiing; waistcoats; hosiery.

Class 28:        Baseball gloves; bob-sleighs; body boards; body-training apparatus; bows for archery; archery implements; boxing gloves; strings for rackets; discuses for sports; divot repair tools (golf accessories); kites; skating boots with skates attached; electronic games; electronic targets; elbow guards (sports articles); chest expanders [exercisers]; stationary exercise bicycles; paint guns (sporting articles); fencing gauntlets; fencing masks; fencing weapons; shuttlecocks; fitness exercise machines; belts (weight lifting -) [sports articles]; paragliders; golf gloves; golf clubs; golf bags, with or without wheels; gymnastic articles; hang gliders; dumb-bells; rosin used by athletes; kite reels; hockey sticks; in-line roller skates; ninepins; kiteboards; climbers’ harnesses; knee guards (sport articles); cricket bags; bladders of balls for games; air pistols [toys]; bowling apparatus and machinery; masts for sailboards; nets for sports; quoits; punching bags; surfboard leashes; ring games; slides [playthings]; rollers for stationary exercise bicycles; scooters (toys); roller skates; strings for rackets; swings; skin guards (sport articles); targets; batting gloves [accessories for games]; sleighs (sport articles); ice skates; skating boots with skates attached; snow shoes; ski boards; protective paddings (parts of sports suits); pools (swimming -) [play articles]; flippers for swimming; skateboards; sole coverings for skis; sole coverings for skis; ski bindings; edges of skis; scrapers for skis; wax for skis; bags especially designed for skis and surfboards; balls for games; foosball tables; bats for games; jump ropes; starting blocks (for sports); catapults (sporting articles); surfboards and sailboards; surf boards; camouflage screens [sports articles]; teddy bears; tennis ball throwing apparatus; tennis nets; boxes and jockstraps (sporting articles); tables for table tennis; clay pigeons [targets]; clay pigeon traps; spring boards (sporting articles); harness for sailboards; backgammon games; surf skis; pitch mark repair tools [golf accessories]; swings; darts; flying discs [toys]; flying disks.

Class 32:        Cocktails, non-alcoholic; non-alcoholic fruit extracts; fruit juice beverages (non-alcoholic -); non-alcoholic beverages; non-alcoholic honey-based beverages; beer; powders for effervescing beverages; pastilles for effervescing beverages; peanut milk (non-alcoholic); mineral water (preparations for making -); aerated water (preparations for making -); fruit nectars (non-alcoholic); fruit beverages and fruit juices; vegetable juices, beverages; isotonic drinks; sparkling water; lemonades; syrups for lemonade; lithia water; malt beer; milk of almonds (beverages); orgeat; mineral water (beverages); whey beverages; must; table waters; sports drinks.

Class  38:        Telecommunications; broadcasting and transmission of audio and video entertainment programmes by means of computers, satellites and communications networks; broadcasting of film, television, radio, videotext and teletex programmes or transmissions; broadcasting of teleshopping programmes; sound, image and data transmission by cable, satellite, computer (networks), telephone and isdn lines, and any other transmission media; providing access to information stored in databases, including on the internet and in particular including by means of interactive computer systems; providing access to information on the internet; providing online portals; telecommunications by means of platforms and portals on the internet; electronic and digital transmission of voice, data, information, images, signals and messages; providing of chatrooms, mail boxes and community forums online for transmitting messages between computer users in relation to entertainment, music, concerts, videos, radio, television, film, news, sports, leisure, games and cultural events; electronic mail; provision of connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; providing of access to database software and directories in the fields of music, video, radio, television, news, sport, leisure, games, cultural events, entertainment, and art and leisure, via communications networks; radio broadcasting.

Class 41:        Gym services; production of television and radio programmes; radio, internet and television entertainment; creation and production of radio and television programmes; film production services; videotape film production; organization and presentation of sporting and cultural events; conducting of live entertainment events; website editing (support services); videotaping; training consultancy and further training consultancy; providing online electronic publications, not downloadable; providing karaoke services; club services (entertainment or education); camp services (holiday -) [entertainment]; golf facilities (providing -); providing sports facilities; providing sports facilities; coaching; training (practical -) [demonstration]; desktop publishing (creating publications using computers); recreation facilities (providing -); digital image processing (photo processing); conducting live events; academies [education]; provision of tuition; correspondence courses; correspondence courses; rental of motion pictures; photography; gymnastic instruction; publication of printed matter, including in electronic form, except for advertising purposes; publication of texts (other than publicity texts); publication of periodicals and books in electronic form, including on the internet; entertainment information; video tape editing; online publication of electronic books and periodicals; arranging and conducting of cultural and/or sports events; arranging and conducting of conferences; arranging and conducting of congresses; party planning (entertainment); personnel development by means of training and further training; physical education; entertainment; organization of sports competitions; arranging and conducting of seminars; arranging and conducting of workshops (training); arranging and conducting of colloquiums; organization of exhibitions for cultural or educational purposes; arranging of beauty contests; organisation of shows, impresario services; arranging of competitions (education or entertainment); writing of texts [other than publicity texts]; rental of audio equipment; rental of lighting apparatus for theatrical sets or television studios; rental of sports equipment (except vehicles); rental of skin diving equipment; rental of tennis courts; rental of sound recordings; rental of video cameras; publication of books; timing of sports events; composition of television programs and broadcast programs; providing of training; sporting and cultural activities; exercise instruction, advisory and training services; provision of sports, health and fitness club facilities; rental of sports or exercise equipment; providing of information, audio, video, graphics, text and other multimedia content in the fields of music, video, radio, television, news, sport, leisure, games, cultural events, entertainment, and art and leisure via communications networks; publishing of text, graphic, audio and video works via communications networks.

The contested goods and services are the following:

Class 5:        Dietary supplements; dietetic food and substances adapted for medical use; cultures of micro-organisms and leeches for medical purpose; beverages for medical purposes.

Class 28:        Machines and equipment for physical, gymnastic and cardiovascular exercise; treadmills, step simulators, rowing machines, cycle simulators, all for muscle rehabilitation and training; disc barbells (including those preloaded with weights), weights and dumb-bells for muscle training.

Class 41:        Services of a gym, including fitness, aerobics, spinning, martial arts, bootcamps and training and education in these areas; physical education; organisation and promotion of gymnastic/sports events, sporting competitions and events in the sectors of gymnastics, sport and muscle rehabilitation.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 contested dietary supplements overlap with the opponent’s dietetic substances adapted for medical use. Therefore, they are considered identical to the opponent’s goods.

Dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested beverages for medical purposes overlap with the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested dietetic food adapted for medical use refers to food developed to meet the needs of a special diet, as required by those with certain medical conditions, and it is used for a medical purpose. Consequently, these goods have the same purpose as the opponent’s dietetic substances adapted for medical use. Moreover, they can have the same producers and be sold in the same specialised shops or in the same section of a department store. Therefore, they are considered at least similar.

The contested leeches for medical purpose have been used for clinical bloodletting for many years. In modern medicine, they are used, for example, to treat venous congestion or because of hirudin, the active anticoagulant component of leech saliva. They have the same purpose as the opponent’s pharmaceutical preparations, since they both are used to promote healing. Moreover, they can have the same distribution channels and relevant users. Therefore, they are similar to a low degree.

The contested cultures of micro-organisms for medical purpose refer to the propagation of micro-organisms – which are microscopic, living, single-celled organisms such as bacteria – in a growth medium. Cultures of micro-organisms can be used, for example, to influence the balance of the various bacterial strains in the intestines, and to improve the composition of the intestinal flora. They have the same general purpose as the opponent’s pharmaceutical preparations – namely to improve human well-being and prevent illnesses – may target the same consumers and may have the same producers. Therefore, they are considered similar to a low degree.

Contested goods in Class 28

The contested machines and equipment for physical, gymnastic and cardiovascular exercise; treadmills, step simulators, rowing machines, cycle simulators, all for muscle rehabilitation and training include, as a broader category, or overlap with the opponent’s fitness exercise machines. 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 disc barbells (including those preloaded with weights), weights and dumb-bells for muscle training are included in the broad category of the opponent’s body-training apparatus. Therefore, they are identical.

Contested services in Class 41

Physical education is identically contained in both lists of services.

As the term ‘including’ indicates that what follows are only examples of items included in the category, the contested services of a gym, including fitness, aerobics, spinning, martial arts, bootcamps and training and education in these areas are identically covered by opponent’s gym services.

The contested organisation and promotion of gymnastic/sports events, sporting competitions and events in the sectors of gymnastics, sport and muscle rehabilitation overlap with the opponent’s organization and presentation of sporting and cultural events. 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 and services found to be identical or similar (to different degrees) are directed at the public at large and at professionals with specific knowledge or expertise.

The degree of attention of the relevant public is considered higher than average for the goods in Class 5 because of the nature of the goods and their purpose, as these goods affect the user’s health. The degree of attention for the goods and services in Classes 28 and 41 is considered average.

3. The signs

FITX
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 earlier mark is a word mark consisting of four letters, ‘FITX’. ‘FITX’ as such has no meaning for the relevant public and its distinctiveness must be considered as average.

The contested sign is a figurative mark consisting of the eight-letter verbal element ‘FITTRIXX’ placed on what appears to be a frame-like rectangular background in a very light shade of grey. The verbal element is depicted in stylised, bold, black letters leaning to the right. The frame-like background element will be barely noticeable because it is so pale; in any case, this element has a purely decorative function and is consequently non-distinctive.

The verbal element ‘FITTRIXX’ has no meaning for the relevant public and is therefore of average distinctiveness. The contested sign does not contain any element which can be considered clearly more dominant (visually eye-catching) than other elements.

The opponent argues that both signs contain the element ‘FIT’, referring to a good body constitution. However, the Opposition Division notes that consumers generally tend to perceive signs as a whole and do not proceed to analyse their various details. Therefore, in the present case, the Opposition Division believes that the relevant public would have no reason to single out the element ‘FIT’ in either sign, particularly because the earlier mark is  rather short mark and the relevant public will have no difficulty immediately perceiving it in its entirety. Moreover, the double letter ‘T’ in the contested mark makes it highly unlikely that the public would separate out the element ‘FIT’, which is followed by a second letter ‘T’.

Nevertheless, and with a view to considering the scenario referred to by the opponent as its best-case scenario, the Opposition Division will undertake the comparison on the basis that a part of the public might associate the first three letters in each sign, ‘FIT’, with the English word ‘fit’, meaning ‘in good health, especially because of regular physical exercise’ (information extracted from Oxford English Dictionary on 17/02/2017 at https://en.oxforddictionaries.com/definition/us/fit). Bearing in mind the relevant goods and services, however, the Opposition Division considers that in such case the element ‘FIT’ will be of limited distinctiveness in relation to the majority of the relevant goods and services in Classes 5, 28 and 41, as it will be seen as referring to their purpose. The exception is the contested cultures of micro-organisms and leeches for medical purpose in Class 5, for which the distinctiveness of the element ‘FIT’ is normal.

Visually, the signs coincide in their first three letters, ‘FIT’, and last letter, ‘X’. However, they differ in the additional letters ‘TRIX’ in the middle of the contested sign as well as in its stylisation and figurative frame-like rectangular background (the latter being, however, non-distinctive and barely noticeable). Furthermore, the contested sign is twice as long as the earlier mark. It has two letters ‘T’ and a letter ‘R’ in the middle and two letters ‘X’ at the end, while the earlier mark has only one letter ‘T’ and one letter ‘X’ at the end and does not contain the letter ‘R’.

The opponent claims that consumers will focus on the beginnings of the signs, ‘FIT’, and the ending, ‘X’, rather than on the additional letters in the middle of the contested sign because consumers tend to pay more attention to the beginnings and endings of trade marks, and their memory of the additional letters in the middle of the contested sign will quickly fade.

Although consumers generally do tend to focus on the beginning of a sign, in the present case, the differences in the lengths of the signs under comparison are obvious and will be perceived immediately by the relevant consumer. Moreover, the repetition of the letters ‘TT’ and ‘XX’ in the contested sign is quite striking and results in a significant visual difference from the earlier mark. Furthermore, the letter ‘R’ in the middle of the contested sign (which has no counterpart in the earlier mark) will not go unnoticed by the relevant consumer, since it clearly differs from any letter contained in the earlier mark. Account must also be taken of the fact that for the part of the public that perceives the meaningful element ‘FIT’ in the conflicting signs, this element is of limited distinctiveness for the majority of the relevant goods and services. Therefore, for this part of the public, the difference in the letters ‘TRIX’ will be even more noticeable and will have a greater impact on the public’s perception of the signs.

Consequently, the visual differences between the earlier mark and the contested sign counteract the similarities and overall the marks are considered visually similar to a lower than average degree (irrespective of whether or not the public perceives a meaningful element ‘FIT’).

Aurally, various parts of the relevant public will pronounce the earlier sign as [fit-iks], [fit-eks] or [fit-ks], or even as [fits], since the letter ‛X’ may be pronounced as [iks] (e.g. by the Romanian-speaking part of the public), [eks] (e.g. by the English-speaking part of the public) or [ks] (e.g. by the Spanish-speaking part of the public), or even as [s] (e.g. by the German-speaking part of the public). The contested sign will be pronounced as [fit-riks]. The double consonants ‘T’ and ‘X’ will be pronounced in the same way as a single ‘T’ and ‘X’.

The opponent claims that the minor difference in pronunciation between [fit-iks] and [fit-riks] will not be perceived by the consumer, especially bearing in mind that trade marks are often communicated under unfavourable conditions leading to an incorrect perception.

However, even where the earlier sign is pronounced as [fit-iks] and the contested sign as [fit-riks], there would still be a difference for that part of the relevant public in the pronunciation of the letter ‘R’, which would not go unnoticed.

Therefore, the degree of aural similarity between the signs will vary between average and higher than average.

Conceptually, from the perspective of the part of the public for which both signs convey the concept of ‘FIT’, as defined above, and depending on the distinctiveness of this element in relation to the relevant goods and services, the degree of similarity between the signs will vary between lower than average and average.

For the remaining part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, for this part of the public the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 weak element, ‘FIT’, for the part of the public as stated above in section c) of this decision.

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).

In the present case the goods and services at issue are identical or similar to different degrees and directed at the public at large and at professionals with specific knowledge or expertise.

The relevant public’s degree of attention varies according to the category of goods and services in question. For the goods in Class 5 the degree of attention is higher than average and for the goods and services in Classes 28 and 41 it is average.

The distinctiveness of the earlier mark is normal, despite the presence of a weak element for part of the public.

The signs are visually similar to a lower than average degree. Aurally, they are similar to at least an average degree. Conceptually, depending on the distinctiveness of the element ‘FIT’, the signs are similar to a lower than average or average degree for the part of the public for which ‘FIT’ is meaningful.

Taking into account the above, the Opposition Division finds that despite the similarities between the marks under comparison, and although the goods and services are identical or similar, there is no likelihood of confusion on the part of the public for which neither the earlier mark, ‘FITX’, nor the contested sign, ‘FITTRIXX’, has a meaning. The consumer will be able to distinguish the signs because of the visual differences arising from their lengths and from the additional double letters in the middle of the contested sign. Aurally, the earlier sign may be pronounced in various ways. The pronunciation of the earlier sign that is most similar to the contested sign is [fitiks]. However, the relevant public will still pronounce the letter ‘R’ in the contested sign and, therefore, will be able to differentiate the signs. This is especially true in view of the relevant goods and services, with the relevant public encountering the signs visually when making their purchasing decision, so aural similarity should not be given more weight than visual similarity.

The same is true for the part of the public that will perceive the meaning given above in the element ‘FIT’, since the distinctiveness of this element, and therefore its impact on the overall impressions created by the signs, is limited for the majority of the relevant goods and services.

Finally, there is no likelihood of confusion in relation to cultures of micro-organisms and leeches for medical purpose in Class 5, for which the element ‘FIT’ is considered to have an average degree of distinctiveness, taking into account the principle of interdependence, the fact that the goods are similar to a low degree to the opponent’s goods and the fact that the degree of attention of the relevant public is higher than average.

Consequently, it is considered that despite the similarities between the marks under comparison, the differences between them are clearly perceptible and sufficient to exclude any likelihood of confusion.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

Denitza STOYANOVA-VALCHANOVA

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