OPPOSITION DIVISION
OPPOSITION No B 2 774 662
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
representative)
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
representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 774 662 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 647 704 for the word mark ‘LIFEVANTAGE AXIO’. 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.
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
Decision on Opposition No B 2 774 662 page: 2 of 7
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
European Union.
a) The goods and services
The goods and services on which the opposition is based are 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;
antigens.
Class 35: Retail and wholesale services in the field of chemico-pharmaceutical
preparations, chemical preparations for medical, pharmaceutical and
veterinary purposes, biological preparations for medical and veterinary
purposes, pharmaceutical preparations, serums, antigens.
The contested goods are 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;
pharmaceutical preparations; sanitary preparations for medical purposes;
dietetic food and substances adapted for medical use, food for babies;
dietary supplements for humans; plasters, materials for dressings; material
for stopping teeth, dental wax; disinfectants; preparations for destroying
vermin; fungicides, herbicides.
Class 32: Beverage mix; nutritional drink mix; sport drinks and energy drinks
enhanced with nutritional additives; beers; mineral and aerated waters and
other non-alcoholic beverages; fruit beverages and fruit juices; syrups and
other preparations for making beverages.
Some of the contested goods are identical to goods on which the opposition is
based. For reasons of procedural economy, the Opposition Division will not
undertake a full comparison of the goods and services listed above. The examination
of the opposition will proceed as if all the contested goods were identical to the
earlier mark’s goods and services.
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.
Decision on Opposition No B 2 774 662 page: 3 of 7
In the present case, the goods assumed to be identical are directed both at the public
at large and at business customers with specific professional knowledge or expertise,
namely healthcare professionals (including doctors and pharmacists).
At least the goods in Class 5 and the services in Class 35 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 and 27). This high level of attention is also
applied to all kinds of dietary and nutritional supplements, since these goods have a
direct effect on the proper functioning of the intestinal transit and, finally, having a
healthy physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).
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.
c) The signs
LIFEVANTAGE AXIO
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 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
element(s) 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 and services at hand.
Decision on Opposition No B 2 774 662 page: 4 of 7
The contested sign is a word mark made up of two elements, namely
‘LIFEVANTAGE’ and ‘AXIO’. To this extent the Opposition Division points out that the
Court has held that, although the average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details, the fact remains that,
when perceiving a word sign, they will break it down into elements which, for them,
suggest a specific meaning or which resemble words they know (13/02/2007, T-
256/04, Respicur, EU:T:2007:46, § 57). With respect to the term ‘LIFEVANTAGE’, in
light of the above judgment, the Opposition Division considers that at least part of the
English-speaking public will dissect the elements ‘LIFE’ and ‘VANTAGE’, respectively.
Thus, for those with an understanding of English, the word ‘LIFE’ will be understood
as ‘the state or quality that distinguishes living beings or organisms from dead ones
and from inorganic matter, characterized chiefly by metabolism, growth, and the
ability to reproduce and respond to stimuli; the period between birth and death; the
experience or state of being alive’ (see Collins English Dictionary online), whereas
the word ‘VANTAGE’ as ‘a state, position, or opportunity affording superiority or
advantage’ (see Collins English Dictionary online). As to the contested sign’s first
word element ‘LIFEVANTAGE’, in the context of the relevant goods, and in line with
the opponent’s arguments, part of the consumers may perceive this term as allusive,
of the characteristics of the goods and services, namely that they afford an
advantage to someone’s life. Therefore, for this part of the relevant public, the
distinctiveness of this element might be reduced. For another part of the public, said
element as a whole has no meaning and so its distinctiveness in relation to the goods
at stake should be seen as normal.
As regards the second element of the contested sign, namely the term ‘AXIO’, since
it has no meaning, its distinctiveness should be seen as normal in relation to the
goods at hand.
In light of the forgoing, for the part of the public that understands the element
‘LIFEVANTAGE’, as referred to above, the more distinctive element of the mark is the
term ‘AXIO’ whereas for the remaining part of the public, both elements are equally
distinctive. For the sake of good order, contrary to the opponent’s assertions, the
Opposition Division highlights that due to the former’s both first position in the
contested sign and considerable length and even taking into account the
distinctiveness issue as being reduced for a part of the public, the term
‘LIFEVANTAGE’ definitely will not be disregarded by the relevant public.
Visually, the signs coincide in the letters ‘AX*O’ which constitute the whole verbal
part of the earlier mark and the second element of the contested sign, whereas they
differ in the third letter of the same elements, namely ‘X’ vs ‘I’, the former placed
against a black rectangular background, and the additional first element of the
contested sign ‘LIFEVANTAGE’. To this extent, 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 first elements in this case are
entirely different ‘AXXO’ versus ‘LIFEVANTAGE’.
Therefore, since the marks only coincide in three letters out of four vs fifteen,
respectively, the additional verbal element of the contested sign made up of eleven
letters placed at the beginning of the mark (preceding the common three letters),
where the relevant public normally focuses more, makes that the signs are visually
similar to at best a low degree, even for that part of the public for which the word
‘LIFEVANTAGE’ has a reduced distinctiveness.
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Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the
letters /A-X-*-O/ which constitutes the entire earlier mark and, together with the
sound of the additional third letter ‘-I-’, the second 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’, which is placed in the middle and is surrounded by the same letters as in
the earlier mark and so the sound of this letter is very much absorbed by the letters
surrounding it, the contested sign’s first element, namely /LIFEVANTAGE/, due to its
considerable length and first position, almost offsets the similarity arising from the
sound of the common three letters placed in a different order (the only element in the
earlier sign vs the second element of the contested sign preceded by an eleven-
letter-word).
Thus, the marks are aurally similar to at best a low degree, even for that part of the
public for which the word ‘LIFEVANTAGE’ has a reduced distinctiveness.
Conceptually, a part of the relevant public will perceive the word ‘LIFEVANTAGE’ 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. For the remaining part of the public that will not understand
the meaning of ‘LIFEVANTAGE’, neither of the signs has a meaning. Moreover, the
figurative element in the form of a rectangular frame in the earlier mark does not refer
to any concept in particular either. Since a conceptual comparison is not possible, the
conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar to a low degree 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 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.
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
assumption that they bear the marks in question, come from the same undertaking
or, as the case may be, from economically-linked undertakings.
Decision on Opposition No B 2 774 662 page: 6 of 7
The contested goods are assumed to be identical to the earlier mark’s goods and
services, and the relevant public’s level of attention varies from average to high,
meaning that consumers will be more informed and observant for some of the goods
and services at stake. The earlier mark has a normal degree of distinctiveness.
The Opposition Division highlights that in the case at hand, bearing in mind the low
visual and aural similarity, if any, between the marks, there are still ample differences
between the signs to enable consumers to clearly distinguish between them.
Thus, contrary to the opponent’s arguments, comparing the marks in overall terms,
the Opposition Division finds that there are sufficient differences, additional letters,
more important first positions and graphic elements that are not shared by the marks,
to outweigh the similarities between them, even taking into account the average
degree of attention in relation to some of the goods.
Considering all of 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 as
far as based on Article 8(1)(b) EUTMR.
For the sake of completeness, the Opposition Division duly notes that the opposition
at hand is also based on German trade mark registration No 302 013 018 602 for the
figurative mark . Since this earlier right invoked by the opponent is
identical to the one already examined, the outcome cannot be different with respect
to the assumed identical goods for which the opposition has already been rejected;
no likelihood of confusion exists with respect to those goods.
COSTS
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 774 662 page: 7 of 7
The Opposition Division
Chantal VAN RIEL Klaudia MISZTAL Vít MAHELKA
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.