OPPOSITION No B 2 672 817

Emsland-Stärke GmbH, Emslandstr. 58, 49824 Emlichheim, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

WPH Spółka z ograniczoną odpowiedzialnością, Piłsudskiego 40/1, 31-111 Kraków, Poland (applicant).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 672 817 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 678 791, namely against all the goods in Class 5. The opposition is based on German trade mark registration No 302 014 020 981. The opponent invoked Article 8(1)(b) EUTMR.

EMPRO
Earlier trade mark	Contested sign

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

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

Class 1:        Pea proteins for further industrial processing.

The contested goods are the following:

Class 5:        Dietary supplements and dietetic preparations; nutritional supplement meal replacement bars for boosting energy; albumin dietary supplements; dietary fiber; dietary fiber to aid digestion; dietetic foods adapted for medical use; vitamin supplements; vitamin and mineral supplements; diet capsules; mixed vitamin preparations; powdered fruit-flavored dietary supplement drink mix; powdered nutritional supplement drink mix; mineral food supplements; mineral dietary supplements for humans; effervescent vitamin tablets; vitamin drinks; dietary supplemental drinks; nutritional supplements; soy protein dietary supplements; health food supplements made principally of vitamins; health food supplements made principally of minerals; dietary supplements consisting of vitamins; food supplements consisting of amino acids; health food supplements for persons with special dietary requirements; dietary supplements for humans; dietary and nutritional supplements; food supplements; casein dietary supplements; glucose dietary supplements; lecithin dietary supplements; protein dietary supplements.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

The contested dietary supplements and dietetic preparations; nutritional supplement meal replacement bars for boosting energy; albumin dietary supplements; dietary fiber; dietary fiber to aid digestion; dietetic foods adapted for medical use; vitamin supplements; vitamin and mineral supplements; diet capsules; mixed vitamin preparations; powdered fruit-flavored dietary supplement drink mix; powdered nutritional supplement drink mix; mineral food supplements; mineral dietary supplements for humans; effervescent vitamin tablets; vitamin drinks; dietary supplemental drinks; nutritional supplements; soy protein dietary supplements; health food supplements made principally of vitamins; health food supplements made principally of minerals; dietary supplements consisting of vitamins; food supplements consisting of amino acids; health food supplements for persons with special dietary requirements; dietary supplements for humans; dietary and nutritional supplements; food supplements; casein dietary supplements; glucose dietary supplements; lecithin dietary supplements; protein dietary supplements in Class 5 are finished products designed to be included in body modification diets and preparations intended to boost the nutritional content of a diet and provide nutrients, such as vitamins, minerals, fibre, proteins, fatty acids or amino acids, that may be missing from a person’s or animal’s diet. Their main purpose is medical, namely to enhance health and prevent diseases in human beings or animals and provide nutritional value. These goods are usually produced by pharmaceutical companies or companies specialising in the field of dietetic food and nutrition. In addition, they are normally sold in pharmacies, drug stores or specialist stores for dietetic foodstuffs. They target the general public (e.g. consumers following a diet or with particular health issues, e.g. those who are overweight or have vitamin deficiencies).

The opponent’s pea proteins for further industrial processing in Class 1 are, by their nature, raw products used in the food and nutrition industry at a very early stage of the production process of, for instance, dairy-free products or nutritional products, intended to be sold to the final consumers as finished goods. They specifically target industrial companies involved in the production of food and nutritional preparations and would be available through very specific distribution channels offering raw or semi-raw substances for further industrial processing.

In view of the foregoing, although the contested goods in Class 5, as described above, are usually combinations of various natural and/or chemical substances with medical purposes, they are not considered similar to the opponent’s goods in Class 1. Their purpose as finished products differs from that of the goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other substances to form a final product. The finished products in Class 5 target different publics, have different natures, are sold through different distribution channels and differ in their methods of use from the opponent’s goods. These goods are neither in competition nor complementary to each other. Therefore, the contested goods in Class 5 are dissimilar to the goods in Class 1 for which the earlier trade mark is registered.

The opponent argues in its submissions that the contested goods in Class 5 can all be based on the opponent’s goods in Class 1 as a main ingredient. However, even if this assertion were true, the mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their natures, purposes, relevant publics and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

The opponent also claims that its goods have the same purpose as some of the contested goods, namely protein dietary supplements and dietary supplements, dietetic preparations and nutritional supplements, given that they can all be offered in a powdered form without major additions or further processing steps. To prove this claim, the opponent submits excerpts from the web pages of some internet shops (Annex 1). The Opposition Division does not agree with this claim of the opponent, since the purposes of the goods under comparison are different and, furthermore, are not related to their compositions or whether or not they are supplied in a powdered form. As already mentioned above, the opponent’s goods in Class 1 are intended to be included in the production of other goods, which can be also inferred from the wording of the goods … for further industrial processing, whereas the contested goods in Class 5 are already finished products that are used, inter alia, to enhance health, prevent diseases and provide nutrition. The above evidence submitted by the opponent is irrelevant in the present case, as it concerns finished products for direct consumption, which are clearly different from the opponent’s pea proteins for further industrial processing in Class 1.

Finally, the opponent notes that the same chemical companies that produce pea protein for industrial purpose may also produce the final product, for example a dietary protein powder/drink mix, etc. However, the Opposition division is of the opinion that, even if this was a true market reality in the field of medical supplements, this mere possibility would not be sufficient in itself for finding similarity between the contested goods in Class 5 and the opponent’s goods in Class 1, for the reasons already explained above. As follows from the comparison made above, a substantial number of the relevant factors determining the similarity between goods differ in the present case and the link that may exist between the goods is not sufficiently strong to reach the conclusion that the goods are similar.

Under all the circumstances described above, the opponent’s arguments must be set aside as unfounded.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

María del Carmen SUCH SANCHEZ

Martin MITURA

Ric WASLEY

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.