OPPOSITION No B 2 557 471
Capbran Holdings LLC, 11601 Wilshire Blvd. Suite 2300, Los Angeles, CA 90025, United States of America (opponent), represented by A2 Estudio Legal, Calle Hermosilla, 59 Bajo izquierda, 28001 Madrid, Spain (professional representative)
a g a i n s t
John Mills Limited, Chiswick Green 610, Chiswick High Road, London W4 5RU United Kingdom (applicant), represented by Graham Watt & Co LLP, St. Botolph's House, 7-9 St. Botolph's Road, Sevenoaks Kent TN13 3AJ, United Kingdom (professional representative).
On 26/01/2017, the Opposition Division takes the following
- Opposition No B 2 557 471 is upheld for all the contested goods
- European Union trade mark application No 13 786 397 is rejected in its entirety.
- The applicant bears the costs, fixed at EUR 650
The opponent filed an opposition against all the goods of European Union trade mark application No 13 786 397. The opposition is based on, inter alia, European Union trade mark registration No 9 783 821 ‘NUTRI BULLET’. 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 registration No 9 783 821 ‘NUTRI BULLET’.
- The goods
The goods on which the opposition is based are the following:
Class 7 Electronic appliances, namely, electronic food blenders.
The contested goods are the following:
Class 7 Food processors; Electric food processors; Electric food blenders, electric juicers.
Class 21 Food blenders, juicers.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’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, in this case: electronic food blenders.
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 7
The contested electric food blenders are identical to the opponent’s electronic food blenders, as these are synonyms.
The contested food processors; electric food processors include, as broader categories, the opponent’s electronic food blenders. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested electric juicers are included in the broad category of, or overlap with, the opponent’s electronic food blenders. Therefore, they are identical.
Contested goods in Class 21
The contested food blenders, juicers in Class 21 are considered to be non-electric. They have the same purpose as the earlier electronic food blenders in Class 7, namely processing and liquidising food. Also they are in competition with each other. They could even be made by the same producer and are directed at the same public and distributed along the same trade channels. Therefore, they are similar.
- 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 identical or similar are directed at the public at large, but can also be specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average depending on the (specialised) nature of the goods, the frequency of purchase and their price.
- The signs
Earlier trade mark
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). 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 Hungarian-speaking part of the relevant public.
The earlier mark is a word mark composed of the words ‘NUTRI BULLET’ and the contested sign is also a word mark composed of the words ‘NUTRI BLITZER’.
Dominant and distinctive elements
For the non-professional public in the relevant territory, none of the word elements will convey any meaning and, therefore, both signs will be perceived as meaningless, fanciful terms. In this regard, the signs have no elements that could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs are similar to the extent that they coincide in the letters ‘N-U-T-R-I’, a distinctive element, and ‘B-’. They also share some other letters, such as ‘L’, ‘E’ and ‘T’, but these are placed in other positions in the marks. However, they differ in the additional letters, ‘*ULLET’ of the earlier mark and the additional letters ‘*LITZER’ in the contested sign, with the exception of some letters that are placed in different positions. The signs have the same structure, each composed of two words, and are of almost the same length, namely eleven letters in the earlier mark and twelve letters in the contested sign, and the main part of the coinciding letters are placed in the same position within the signs.
In addition, the first parts of the conflicting marks are identical (‘NUTRI B‘). 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.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /NUTRI-B-/ present identically at the beginning of both signs. The pronunciation differs in the sound of the letters /ULLET/ of the earlier mark and the letters /LITZER/ of the contested sign. Even though these marks share some letters, as they are placed in different positions, they are pronounced in a different manner. The marks also share a separation into two words and with the second word starting with the letter ‘B’ and the same amount of syllables, the marks are also similar in alliteration and rhythm.
Therefore the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 normal.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, Lloyd Schuhfabrik, , § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The contested goods are partly identical and partly similar to the goods protected by the earlier mark.
The goods target the public at large and the professional public, and the level of attention will vary from average to higher than average. The earlier mark has a normal degree of distinctiveness.
The earlier mark ‘NUTRI BULLET’ and the contested sign ‘NUTRI BLITZER’ are visually and aurally similar to an average degree as they coincide in six letters in the same order at the beginning of the signs. Furthermore, they also share some other letters, but these are placed in different positions.
The aural similarity between the signs is even more evident by the coincidence in their pronunciation in four syllables with an identical alliterative start of the second word. As a result, their rhythms and intonations are similar. Furthermore, the public will not perceive any concept in either sign which could help in distinguishing between them.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Furthermore, even consumers with 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, § 54).
Taking into account the above, it is considered that the established similarities between the signs are sufficient to cause, at least part of the public, to believe that the conflicting identical and similar goods come from the same undertaking or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-professional Hungarian-speaking part of the public and, therefore, the opposition is well-founded on the basis of the opponent’s Union trade mark registration. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 783 821 ‘NUTRI BULLET’. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier European Union trade mark registration No 9 783 821 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).
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
Chantal VAN RIEL
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.