OPPOSITION No B 2 692 419
Hype-IP Limited, Suite 5, 39 Irish Town, Gibraltar (opponent), represented by Disain IP, Avda. La Goleta, 17, Esc. 2, 2ºC, 03540 Alicante, Spain (professional representative)
a g a i n s t
Blackstone Labs LLC, 21218 St. Andrews Blvd #230, Boca Raton, Florida 33434, United States of America (applicant), represented by Katarzyna Binder-Sony, First Floor, 3 More London Riverside, London SE1 2RE, United Kingdom (professional representative).
On 06/03/2017, the Opposition Division takes the following
1. Opposition No B 2 692 419 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 950 158 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 950 158. The opposition is based on, inter alia, European Union trade mark registrations No 5 802 442 and No 10 558 112. 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 registrations No 5 802 442 and No 10 558 112.
- The goods and services
The goods on which the opposition is based are the following:
European Union trade mark registration No 5 802 442
Class 5: Vitamin preparations.
European Union trade mark registration No 10 558 112
Class 25: Clothing, footwear, headgear.
The contested goods and services are the following:
Class 5: Dietary supplements; Nutritional supplements; Food supplements; Vitamin supplements.
Class 25: Clothing, namely, tops, bottoms; Headwear.
Class 35: Retail services of dietary supplements, nutritional supplements, food supplements, vitamin supplements; Retails services of clothing and headwear.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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; nutritional supplements; food supplements; vitamin supplements include, as broader categories, or overlap with, the opponent’s vitamin preparations because the contested goods are preparations intended to supplement a person’s diet with nutrients, such as vitamins and vitamin preparations. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 25
The contested clothing, namely, tops, bottoms are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested headwear is synonymous with the opponent’s headgear. Consequently, these goods are identical.
Contested goods in Class 35
The contested retail services of dietary supplements, nutritional supplements, food supplements, vitamin supplements; retails services of clothing and headwear are considered similar to a low degree to the opponent’s goods in Class 5 vitamin preparations and Class 25 clothing, headgear. The goods covered by the contested retail services and the opponent’s goods are identical, that is, dietary supplements, nutritional supplements, food supplements, vitamin supplements are identical to the opponent’s vitamin preparations in Class 5 and clothing and headwear are identical to the opponent’s clothing, headgear in Class 25 (see above). 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 as those where the goods are offered for sale. Furthermore, they target the same public.
- The signs
Earlier trade marks No 5 802 442
and No 10 558 112
The signs are identical.
- Global assessment, other arguments and conclusion
The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services. Thus, although the specific conditions under Articles 8(1)(a) and (b) EUTMR differ, they are related.
Consequently, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR, firstly will be dealt with under the latter provision.
The signs are identical and all the contested goods, namely dietary supplements; nutritional supplements; food supplements; vitamin supplements in Class 5 and clothing, namely, tops, bottoms; headwear in Class 25, are identical to the opponent’s goods. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.
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 this case, given the identity between the signs, the low degree of similarity between the opponent’s goods and the contested services leads to a finding of likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition must also be upheld for retail services of dietary supplements, nutritional supplements, food supplements, vitamin supplements; retails services of clothing and headwear, which are similar to a low degree to the opponent’s goods.
As the earlier rights ‘HYPE’ No 5 802 442 and No 10 558 112 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).
Considering all the above, the opposition is well founded under Article 8(1)(a) EUTMR as regards the contested goods, and a likelihood of confusion under Article 8(1)(b) EUTMR is found in respect of the contested services. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
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.