OPPOSITION DIVISION
OPPOSITION No B 2 761 990
Myolabs, Kortrijksesteenweg 198, 8530 Harelbeke, Belgium (opponent),
represented by De Clercq & Partners, Edgard Gevaertdreef 10 a, 9830 Sint-
Martens-Latem, Belgium (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 München, Germany
(professional representative)
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 761 990 is upheld for all the contested goods.
2. European Union trade mark application No 15 534 902 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 15 534 902. The opposition is based on European Union trade mark
registration No 11 785 144. 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.
Decision on Opposition No B 2 761 990 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 5: Nutritional supplements.
The contested goods are the following:
Class 5: Dietary and nutritional supplements; nutraceuticals for use as dietary and
nutritional supplements; functional foods for use as dietary or nutritional
supplements, namely, dietary and nutritional supplements; dietary or nutritional
supplements in the form of functional foods for health and weight management;
powdered nutritional supplement drink mix and concentrate; nutritional supplement
additives sold separately to be used with beverages; whey protein supplements;
nutritional supplement bars; protein supplements; nutritional supplement shakes;
protein supplement shakes; appetite suppressants; nutritional supplements in the
nature of nutritionally soft chews; nutritional supplement additives for use in
beverages, namely, beverages for health and weight management.
Class 32: Beverage mixes for making sports and energy drinks; drink mixes for
making energy and sport drinks enhanced with nutrients; sports drinks and energy
drinks enhanced with nutritional additives.
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 nutritional supplements are identically reproduced in both lists of
goods.
The contested nutritional supplements in the form of functional foods for health and
weight management are included in the opponent’s nutritional supplements.
Therefore, these goods are identical.
The contested dietary supplements; dietary supplements in the form of functional
foods for health and weight management overlap with the opponent’s nutritional
supplements in the sense that they are all intended to add further nutritional value to
the diet. Therefore, these goods are considered identical.
The contested nutraceuticals for use as dietary and nutritional supplements;
functional foods for use as dietary or nutritional supplements, namely, dietary and
nutritional supplements; powdered nutritional supplement drink mix and concentrate;
nutritional supplement additives sold separately to be used with beverages; whey
protein supplements; nutritional supplement bars; protein supplements; nutritional
supplement shakes; protein supplement shakes; appetite suppressants; nutritional
supplements in the nature of nutritionally soft chews; nutritional supplement additives
for use in beverages, namely, beverages for health and weight management are all
intended to provide nutrients that may otherwise not be consumed in sufficient
quantities, whether classified as food or drugs. Therefore, they are either included in
or overlap with the opponent’s broad category of nutritional supplements and
consequently considered identical.
Decision on Opposition No B 2 761 990 page: 3 of 6
Contested goods in Class 32
The contested beverage mixes for making sports and energy drinks; drink mixes for
making energy and sport drinks enhanced with nutrients; sports drinks and energy
drinks enhanced with nutritional additives share the same purpose with the
opponent’s goods in that they serve to compensate for nutritional value by
consumption of – in this case – sports and energy beverages. They are produced by
the same companies and target the same public. Moreover, they can be bought in
the same specialized shops, for instance in sports nutrition and food supplement
stores. Consequently, these goods are similar.
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.
In the present case, the goods found to be identical or similar are directed partly both
at the public at large and at customers with specific professional knowledge or
expertise in the field of nutrition (e.g. nutraceuticals for use as dietary and nutritional
supplements in Class 5 may target both the average consumer and dieticians).
The degree of attention varies from average to higher than average, depending on
the exact nature and purpose of the goods and the health effects that they may have.
c) The signs
PHYSIQ
PHYSIQ SMART WEIGHT
MANAGEMENT
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 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.
Therefore, and for reasons of procedural economy, the Opposition Division finds it
Decision on Opposition No B 2 761 990 page: 4 of 6
appropriate to focus the comparison of the signs on the English-speaking part of the
relevant public.
The earlier mark is the word mark ‘PHYSIQ’ and the contested sign is a word mark
composed of four words ‘PHYSIQ SMART WEIGHT MANAGEMENT’.
The coinciding element ‘PHYSIQ’ will be perceived in the relevant territory as
referring to the ‘physique’, namely the form, size, and development of a person’s
body. However, as the word is not sufficiently direct in relation to the relevant goods,
contrary to the applicant’s arguments, it is not descriptive of the goods or otherwise
weak and therefore enjoys a normal degree of distinctiveness.
As to the contested sign’s additional elements ‘SMART WEIGHT MANAGEMENT’,
however, in the context of the relevant goods, consumers will perceive this term as
mere indication of the characteristics of the goods informing the consumer about the
fact that the use of these goods attributes to healthy lifestyle in an intelligent way.
Therefore, the expression is considered weak and ‘PHYSIQ’ is the most distinctive
element of the contested sign.
Visually and aurally, the signs coincide in the word ‘PHYSIQ’ which makes up the
entire earlier mark. They differ in the additional elements ‘SMART WEIGHT
MANAGEMENT’.
The word ‘PHYSIQ’, that the signs have in common, occurs at the beginning of the
contested sign. 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 and from top to bottom, which makes the part placed at the
beginning of the sign (the initial part) the one that first catches the attention of the
reader.
The additional expression in the contested sign, ‘SMART WEIGHT MANAGEMENT’,
will be perceived as meaningful and informative and will as such receive less
attention from the relevant public because it is weak for the relevant goods.
Therefore, it is considered that the signs are visually similar to a low degree and
aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the
perception of the marks by the relevant public and therefore it is concluded that they
are similar to a high degree to the extent that they both contain the element
‘PHYSIQ’.
As the signs have been found similar 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.
Decision on Opposition No B 2 761 990 page: 5 of 6
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case and as explained under c) the earlier trade
mark has no direct meaning for any of the goods in question. Therefore, the
distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the goods are identical or similar and the degree of attention paid
by the relevant public varies from average to higher than average. The signs are
Visually similar to a low degree, aurally similar to an average degree and
conceptually highly similar.
Under these circumstances, the differences between the signs, resulting from the
expression ‘SMART WEIGHT MANAGEMENT’, which moreover appears at the end
of the contested sign, are not sufficient to counteract the fact that the earlier mark is
entirely incorporated in the contested sign and that this differentiating expression is
weak.
Taking the above into account, the Opposition Division considers that the similarity
between the signs might lead at least part of the relevant public, even with a high
degree of attention, to think that the contested goods and the opponent’s goods
come from the same undertaking or from economically-linked undertakings and that
the contested sign is a sub-brand of goods connected to the earlier mark.
Considering all the above, including the average degree of inherent distinctiveness of
the earlier mark, the Opposition Division finds that there is a likelihood of confusion
on the part of the English-speaking part of the public in the European Union.
Therefore, the opposition is well-founded on the basis of the opponent’s European
Union trade mark registration No 11 785 144. 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.
It follows from the above that the contested trade mark must be rejected for all the
goods found to be identical and similar to those of the earlier trade mark.
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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
Decision on Opposition No B 2 761 990 page: 6 of 6
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
Ferenc GAZDA Cynthia DEN DEKKER Ioana MOISESCU
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.