OPPOSITION DIVISION
OPPOSITION No B 2 685 397
Physique Management Company Limited, Unit 2c Alexandria Park Penner Road,
Havant Hampshire PO9 1QY, United Kingdom (opponent), represented by Edwin
Coe LLP, 2 Stone Buildings, Lincoln’s Inn, London WC2A 3TH, United Kingdom
(professional representative)
a g a i n s t
Mario Klintworth, Am Sporthafen 12, 41468 Neuss, Germany (applicant),
represented by Klaus Eisenreich, Oststr. 2, 41363 Jüchen, Germany (professional
representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 685 397 is partially upheld, namely for the following
contested goods and services:
Class 5: Nutritional supplements; vitamins and vitamin preparations; health
food supplements made principally of minerals.
Class 9: Electronic analysis apparatus and evaluation systems (equipment) for
bodily functions and fitness, not for medical purposes; electronic body fat
scales; multifunctional data processing equipment to be worn by the user, in
particular in the form of wristbands and chest straps, having electronic sensors
for measuring, recording, analysing and displaying bodily functions, pulse and
other biosignals; mobile data processing equipment having electronic sensors
for measuring, recording, analysing and displaying time, duration, speed,
distance and intensity of physical movements, including energy consumption,
and for transmitting data on the internet; pedometers; activity trackers.
Class 16: Books about nutrition.
Class 25: Footwear; athletics shoes; gymnastic shoes.
Class 30: High-protein energy bars.
Class 32: Prepared beverages containing protein; protein powder drinks;
isotonic prepared beverages; non-alcoholic energy drinks.
Class 35: Online or catalogue mail order in the field of goods for the health
sector.
Class 41: Providing of training, in particular providing of instruction in relation to
nutrition; arranging and conducting of courses, seminars and workshops in the
field of nutrition; drawing up nutritional plans; consultancy in relation to
nutrition.
Decision on Opposition No B 2 685 397 page: 2 of 16
2. European Union trade mark application No 13 893 565 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 and services of European
Union trade mark application No 13 893 565 for the word mark ‘PHYSIQUE
GENERATION’. The opposition is based on, inter alia, European Union trade mark
registration No 11 675 477 for the figurative mark . The
opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
According to Article 76 (1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings
before it the Office will examine the facts of its own motion; however, in proceedings
relating to relative grounds for refusal of registration, the Office is restricted in this
examination to the facts, evidence and arguments submitted by the parties and the
relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence of the existence, validity and scope of
protection of its earlier mark or earlier right, as well as evidence proving its
entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit a copy of the relevant
registration certificate and, as the case may be, of the latest renewal certificate,
showing that the term of protection of the trade mark extends beyond the time limit
Decision on Opposition No B 2 685 397 page: 3 of 16
referred to in paragraph 1 and any extension thereof, or equivalent documents
emanating from the administration by which the trade mark was registered —
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
In the present case, the notice of opposition was not accompanied by any evidence
as regards earlier UK trade mark registration No 3 035 478 for the word mark
‘PHYSIQUE’ on which the opposition is, inter alia, based.
On 28/04/2016 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. After a request by the
opponent, the time limit was extended and it expired on 03/11/2016.
The opponent submitted the required evidence on 28/07/2017 as part of its reply to
the applicant’s observations, that is, only after the expiry of the abovementioned time
limit.
According to Rule 19(4) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will not take into account written
submissions or documents, or parts thereof, that have not been submitted in or that
have not been translated into the language of the proceedings, within the time limit
set by the Office.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), the opposing party has not proven the existence, validity and scope
of protection of its earlier mark or earlier right, as well as its entitlement to file the
opposition, the opposition will be rejected as unfounded.
The opposition must, therefore, be rejected as unfounded as far as it is based on this
earlier mark.
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 11 675 477.
Decision on Opposition No B 2 685 397 page: 4 of 16
a) The goods and services
The goods on which the opposition is based are the following:
Class 3: Soaps; perfumery, essential oils, cosmetics; creams, waxes, gels, oils,
lotions and powders for use on the body, feet, hands, nails and/or hair; massage
creams, waxes, gels, oils, lotions and powders; reflexology creams, waxes, gels, oils,
lotions and powders; aromatherapy preparations; herbal compress balls for use in
massage; moist wipes for sanitary or cosmetic purposes; tissues and wipes
impregnated with soap, perfume, essential oils or cosmetics.
Class 5: Dietary supplements for humans; sanitisers; first aid kits; compresses;
medicated waxes, oils, lotions and powders for use on the body, feet, hands, nails
and/or hair.
Class 10: Medical apparatus and instruments and parts and fittings therefor;
bandages and strapping; braces and supports; ice packs; electrotherapy apparatus
and equipment; first aid instruments; splints; insoles for corrective treatment of
conditions of the feet; apparatus for the stimulation of acupuncture points; massage
apparatus and instruments; rehabilitation equipment; sharps and disposal boxes
therefor; stones for use in stone therapy; bolsters and cushions for medical,
rehabilitation or therapeutic purposes, and protectors therefor; face cradles for
medical, rehabilitation or therapeutic purposes, and protectors therefor.
Class 20: Therapy couches, chairs, trolleys and stools; reflexology stools; parts and
fittings for all the aforesaid goods.
The contested goods and services are the following:
Class 5: Nutritional supplements; Vitamins and vitamin preparations; Health food
supplements made principally of minerals.
Class 9: Data processing hardware; Computers; Electronic analysis apparatus and
evaluation systems (equipment) for bodily functions and fitness, not for medical
purposes; Apparatus for recording, transmission or reproduction of sound or images;
Magnetic data carriers, recording discs; Compact discs, DVDs and other digital
recording media, in particular for MP3 and other digital recording formats; Electronic
body fat scales; Apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity; Multifunctional data processing
equipment to be worn by the user, in particular in the form of wristbands and chest
straps, having electronic sensors for measuring, recording, analysing and displaying
bodily functions, pulse and other biosignals; Mobile data processing equipment
having electronic sensors for measuring, recording, analysing and displaying time,
duration, speed, distance and intensity of physical movements, including energy
consumption, and for transmitting data on the internet; Pedometers; Activity
trackers; Computer software; Portable media players; Cases adapted for mobile
phones; Smartphone covers; Apparatus, instruments and cables for electricity;
Information technology and audiovisual equipment; Navigation, guidance, tracking,
targeting and map making devices; Optical devices, enhancers and correctors.
Class 16: Books, in particular for athletes; Books about nutrition.
Decision on Opposition No B 2 685 397 page: 5 of 16
Class 18: Umbrellas; Backpacks; Trunks and travelling bags; Luggage; Casual
bags; Wallets; Backpacks; Sport bags.
Class 25: Headbands [clothing]; Headgear; Clothing; Gym suits; Tank tops;
Sweatpants; Tee-shirts; Footwear; Athletics shoes; Gymnastic shoes; Sports
headgear [other than helmets].
Class 29: Meat; Meat extracts; Canned meat; Fish; Poultry; Prepared meals made
from poultry [poultry predominating]; Game; Preserved fruits; Processed fruits, fungi
and vegetables (including nuts and pulses); Dried fruit; Fruit-based snack food;
Eggs; Milk beverages, milk predominating; Edible oils and fats; Jams; Fruit, stewed;
Milk; Milk products; Dried fruit in powdered form.
Class 30: Tea; Tea-based beverages; Farinaceous food pastes; Noodles; Muesli;
Chips [cereal products]; Snack bars (confectionery); Cereal bars; Muesli bars;
Cereal-based snack food; Snack bars containing a mixture of grains, nuts and dried
fruit [confectionery]; high-protein energy bars.
Class 32: Beers; Fruit beverages and fruit juices; Preparations for making
beverages; Mineral water [beverages]; Aerated water; Fruit juice for use as a
beverages; Prepared beverages containing protein; Protein powder drinks; Isotonic
prepared beverages; Non-alcoholic energy drinks.
Class 35: Advertising; Business management; Office functions; Online or catalogue
mail order in the fields of: goods for the health sector, clothing, footwear and textile
goods, sporting goods, foodstuffs and beverages, in particular prepared beverages
containing protein; Publication of publicity texts; Attracting customers and customer
care through mail-shots; On-line advertising on a computer network; Dissemination
of advertising material (leaflets, brochures, printed matter, samples).
Class 41: Sports and fitness; Education, providing of training, in particular providing
of instruction in relation to nutrition, training, sport; Arranging and conducting of
courses, seminars and workshops in the field of sports, fitness, bodybuilding and
nutrition; Drawing up training and nutritional plans; Consultancy for athletes;
Provision of keep fit facilities; Arranging of sports activities in connection with fitness
and bodybuilding; Personal trainer services; Sports coaching; Consultancy in
relation to nutrition, training and sports.
An interpretation of the wording of the applicant’s list of goods and services is
required to determine the scope of protection of these goods and services.
The terms ‘in particular’, ‘including’ and ‘principally’, used in the applicant’s list of
goods and services, indicate that the specific goods and services are only examples
of items included in the category and that protection is not restricted to them. In other
words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01,
Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
Decision on Opposition No B 2 685 397 page: 6 of 16
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; vitamins and vitamin preparations; health
food supplements made principally of minerals are included in the broad category of
the opponent’s dietary supplements for humans. Therefore, they are identical.
Contested goods in Class 9
The contested electronic analysis apparatus and evaluation systems (equipment) for
bodily functions and fitness, not for medical purposes; electronic body fat scales;
multifunctional data processing equipment to be worn by the user, in particular in the
form of wristbands and chest straps, having electronic sensors for measuring,
recording, analysing and displaying bodily functions, pulse and other biosignals;
mobile data processing equipment having electronic sensors for measuring,
recording, analysing and displaying time, duration, speed, distance and intensity of
physical movements, including energy consumption, and for transmitting data on the
internet; pedometers; activity trackers are similar to a low degree to the opponent’s
medical apparatus and instruments in Class 10. In fact, medical apparatus could also
relate to measuring and controlling different health-related parameters. These
particular goods in Class 9 specify the functions for which they are used, namely for
bodily functions and fitness, pulse and other biosignals and physical movements.
Therefore, in essence, these goods also relate to health and may coincide in their
producers and distribution channels with the opponent’s medical apparatus and
instruments in Class 10.
However, the contested data processing hardware; computers; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; compact discs, DVDs and other digital recording media, in particular
for MP3 and other digital recording formats; apparatus and instruments for
conducting, switching, transforming, accumulating, regulating or controlling
electricity; computer software; portable media players; cases adapted for mobile
phones; smartphone covers; apparatus, instruments and cables for electricity;
information technology and audiovisual equipment; navigation, guidance, tracking,
targeting and map making devices; optical devices, enhancers and correctors have
no relevant points in common with the opponent’s goods in Class 3 (inter alia,
perfumery and cosmetics), Class 5 (in general, dietary supplements for humans,
sanitisers, and lotions for the body), Class 10 (in general, medical apparatus and
instruments) and Class 20 (specialised furniture). The opponent asserts that these
contested goods are at least complementary to the opponent’s goods in Class 10, as
they relate to health and fitness, therefore, they will target the same end users.
However, these particular goods in Class 9 have no relation whatsoever to those
fields. The fact that some of the goods in question may target the same end users is
not enough per se for establishing a similarity, as they do not coincide in any of the
other main factors. The fact that a doctor can use a computer does not mean that the
computer has a medical purpose. Moreover, since the goods at issue serve a
different purpose, they are not in competition. Furthermore, medical and non-medical
goods are in principle sold through different distribution channels to different end
Decision on Opposition No B 2 685 397 page: 7 of 16
users (the professional within the medical field versus the professional in another
specific field or the average consumer). Neither are they complementary in the sense
that one is indispensable or important for the use of the other (23/11/2005,
R 1079/2004-2, MEDIALL/Medial, § 21). Therefore, the goods in question are
dissimilar.
Contested goods in Class 16
The contested books about nutrition are aimed to inform and help readers improve
their health by means of a healthy and balanced diet. Therefore, these contested
goods are similar to a low degree to the opponent’s dietary supplements for humans
in Class 5, as they target the same relevant public and normally have the same
distribution channels. Furthermore, in some cases, they can be also complementary
in the sense that the information and advice provided in a book about nutrition may
directly refer to the dietary supplements to be taken and the healthy habits to follow.
However, the contested books, in particular for athletes are books of any kind and
may relate to any topic. Even in the case of the example given, namely books for
athletes, they are usually motivational books to help the reader achieve athletic
success. The mere fact that some of these specific books may include among others,
dietary guidelines for athletes and thus be connected in some way to nutrition, does
not lead to find a similarity between these goods and the opponent’s dietary
supplements for humans in Class 5. Therefore, these contested goods and the
opponent’s goods in Class 5 (in general, dietary supplements for humans, sanitisers,
and lotions for the body) and also in Class 3 (inter alia, perfumery and cosmetics),
Class 10 (in general, medical apparatus and instruments) and Class 20 (specialised
furniture) are dissimilar. The goods in question have different natures, intended
purposes and methods of use. Their producers, distribution channels and relevant
publics are also different.
Contested goods in Class 18
The contested umbrellas; backpacks; trunks and travelling bags; luggage; casual
bags; wallets; backpacks; sport bags have no relevant points in common with the
opponent’s goods in Class 3 (inter alia, perfumery and cosmetics), Class 5 (in
general, dietary supplements for humans, sanitisers, and lotions for the body),
Class 10 (in general, medical apparatus and instruments) and Class 20 (specialised
furniture). They have different natures and purposes, as well as producers and
distribution channels. Furthermore, they are not complementary or in competition.
The opponent claims that the contested goods, in particular sport bags, relate to
sports and fitness, which are in the same general field of activity as the opponent’s
goods and will target the same end users. However, the opponent’s goods do not
specify that are aimed to be used in relation to sports or fitness and even if these
goods can be used, inter alia, by athletes, this does not render them similar because
no coincidence in any of the relevant factors exists. Therefore, the contested goods
in Class 18 and all the opponent’s goods are dissimilar.
Contested goods in Class 25
Decision on Opposition No B 2 685 397 page: 8 of 16
The opponent’s insoles for corrective treatment of conditions of the feet in Class 10
have an orthopaedic purpose, as they serve to correct a defect in the bone
configuration of the foot or the leg. They are components of footwear and, therefore,
they are similar to a low degree to the contested footwear; athletics shoes;
gymnastic shoes. These goods may coincide in producers, end users and
distribution channels. It must be pointed out that, although orthopaedic insoles are
normally used with orthopaedic footwear, they can also be used with ordinary or
specific footwear, such as athletic or gymnastic shoes.
However, the contested headbands [clothing]; headgear; clothing; gym suits; tank
tops; sweatpants; tee-shirts; sports headgear [other than helmets] and the
opponent’s goods in Class 3 (inter alia, perfumery and cosmetics), Class 5 (in
general, dietary supplements for humans, sanitisers, medical waxes, oils, lotions and
powders), Class 10 (in general, medical apparatus and instruments) and Class 20
(specialised furniture) are dissimilar. The goods in question have different natures,
intended purposes and methods of use. Their producers, distribution channels and
relevant publics are also different.
Contested goods in Class 29
The contested meat; meat extracts; canned meat; fish; poultry; prepared meals
made from poultry [poultry predominating]; game; preserved fruits; processed fruits,
fungi and vegetables (including nuts and pulses); dried fruit; fruit-based snack food;
eggs; milk beverages, milk predominating; edible oils and fats; jams; fruit, stewed;
milk; milk products; dried fruit in powdered form are all foodstuffs consumed on a
daily basis, whereas the opponent’s dietary supplements for humans in Class 5 are
substances that are prepared for special dietary requirements with the purpose of
supplementing foods. They do not have the same distribution channels, insofar as
the opponent’s dietary supplements for humans are usually offered in pharmacies,
specialised dietetic shops and specialised dietetic sections of stores, while the
abovementioned contested goods are found in supermarkets and other food outlets.
Furthermore, these goods will most likely originate from different manufacturers and,
taking into account that they target people with different nutritional needs, they have
different purposes and will not be in competition with each other. These contested
goods have no commonalities either with the rest of the opponent’s goods in Class 5
(inter alia, sanitisers, medicated waxes, oils, lotions and powders) and those in
Class 3 (inter alia, perfumery and cosmetics), Class 10 (in general, medical
apparatus and instruments) and Class 20 (specialised furniture). The goods in
question are, therefore, dissimilar.
Contested goods in Class 30
The contested high-protein energy bars are aimed to have in between meals to stay
optimally fuelled, satisfied and healthy and are often part of specific dietary regimes.
Therefore, they are similar to the opponent’s dietary supplements for humans in
Class 5, as they have the same purpose (supplementing the diet with specific
substances) and they target the same end users (the public with special health
needs). Moreover, these goods may coincide in producers and distribution channels.
However, the contested tea; tea-based beverages; farinaceous food pastes;
noodles; muesli; chips [cereal products]; snack bars (confectionery); cereal bars;
muesli bars; cereal-based snack food; snack bars containing a mixture of grains,
Decision on Opposition No B 2 685 397 page: 9 of 16
nuts and dried fruit [confectionery] have no commonalities with the opponent’s
goods in Class 3 (inter alia, perfumery and cosmetics), Class 5 (in general, dietary
supplements for humans, sanitisers, medical waxes, oils, lotions and powders),
Class 10 (in general, medical apparatus and instruments) and Class 20 (specialised
furniture). Therefore, they are dissimilar.
Contested goods in Class 32
The contested prepared beverages containing protein; protein powder drinks;
isotonic prepared beverages; non-alcoholic energy drinks are beverages that
contain protein or essential salts and minerals intended to provide additional
supplements or to replace those lost as a result of sweating during vigorous
exercise. Moreover, these beverages can help athletes to keep hydrated and boost
energy during and after workouts. To that extent, these beverages can coincide in
purpose with the opponent’s dietary supplements for humans in Class 5, regardless
of whether they are sold in liquid, powder or solid form. In addition, these goods can
be commercialised through the same channels and target the same end users.
Therefore, they are similar to a low degree.
However, the contested beers; fruit beverages and fruit juices; preparations for
making beverages; mineral water [beverages]; aerated water; fruit juice for use as a
beverages have no commonalities with the opponent’s goods in Class 3 (inter alia,
perfumery and cosmetics), Class 5 (in general, dietary supplements for humans,
sanitisers, medical waxes, oils, lotions and powders), Class 10 (in general, medical
apparatus and instruments) and Class 20 (specialised furniture). Therefore, they are
dissimilar.
Contested goods in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. 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 where the
goods are offered for sale. Furthermore, they target the same public.
The same principles apply to services rendered in connection with other types of
services that consist exclusively of activities revolving around the actual sale of
goods, such as retail store services, wholesale services, internet shopping, catalogue
or mail order services in Class 35.
Therefore, the contested online or catalogue mail order in the field of goods for the
health sector are similar to a low degree to the opponent’s dietary supplements for
humans in Class 5, because the latter are considered to be included in the broad
category of goods for the health sector.
The contested online or catalogue mail order in the fields of: clothing, footwear and
textile goods, sporting goods, foodstuffs and beverages, in particular prepared
beverages containing protein and the opponent’s goods in Classes 3, 5, 10 and 20
are not similar. Apart from being different in nature, since services are intangible
Decision on Opposition No B 2 685 397 page: 10 of 16
whereas goods are tangible, they serve different needs. Online or catalogue mail
order consists in bringing together, and offering for sale, a wide variety of different
products, thus allowing consumers to conveniently satisfy different shopping needs in
one order. This is not the purpose of goods. Furthermore, goods and services have
different methods of use and are neither in competition nor complementary.
Similarity between online or catalogue mail order of specific goods covered by one
mark and specific goods covered by another mark can only be found where the
goods in question are identical. This condition is not fulfilled in the present case,
since the goods at issue are at most similar to a low degree.
Advertising services consist of providing others with assistance in the sale of their
goods and services by promoting their launch and/or sale, or of reinforcing the
client’s position in the market and enabling them to acquire a competitive advantage
through publicity. In order to fulfil this target, many different means and products
might be used. These services are provided by advertising companies, which study
their client’s needs, provide all the necessary information and advice for the
marketing of their products and services, and create a personalised strategy
regarding the advertising of their goods and services through newspapers, websites,
videos, the internet, etc.
Therefore, the contested advertising; publication of publicity texts; attracting
customers and customer care through mail-shots; on-line advertising on a computer
network; dissemination of advertising material (leaflets, brochures, printed matter,
samples) are dissimilar to all the opponent’s goods in Classes 3, 5, 10 and 20, as
they have no relevant points in common.
Business management services are intended to help companies manage their
business by setting out the strategy and/or direction of the company. They involve
activities associated with running a company, such as controlling, leading,
monitoring, organising, and planning. They are usually rendered by companies
specialised in this specific field such as business consultants. They gather
information and provide tools and expertise to enable their customers to carry out
their business or to provide businesses with the necessary support to acquire,
develop and expand their market share.
Office functions are the internal day-to-day operations of an organisation, including
the administration and support services in the ‘back office’. They mainly cover
activities that assist in the operation of a commercial enterprise. They include
activities typical of secretarial services, such as shorthand and typing, compilation of
information in computer databases, invoicing, and administrative processing of
purchase orders, as well as support services, such as the rental of office machines
and equipment.
Therefore, the contested business management and office functions are dissimilar to
all the opponent’s goods in Classes 3, 5, 10 and 20, as they have no relevant points
in common.
Contested goods in Class 41
Nowadays, it is very common that some manufacturers of dietary supplements
provide experts in nutrition and dietetics offering training on a healthy nutrition and
Decision on Opposition No B 2 685 397 page: 11 of 16
weight management by means of a diet adapted to each customer and accompanied
by dietary supplements, which are also developed and offered in-house. Therefore,
the contested providing of training, in particular providing of instruction in relation to
nutrition; arranging and conducting of courses, seminars and workshops in the field
of nutrition; drawing up nutritional plans; consultancy in relation to nutrition are similar
to a low degree to the opponent’s dietary supplements for humans in Class 5, as they
can have the same provider/producer and distribution channels. Furthermore, they
target the same relevant public.
However, the contested sports and fitness; education, providing of training, in
particular providing of instruction in relation to training, sport; arranging and
conducting of courses, seminars and workshops in the field of sports, fitness and
bodybuilding; drawing up training plans; consultancy for athletes; provision of keep fit
facilities; arranging of sports activities in connection with fitness and bodybuilding;
personal trainer services; sports coaching; consultancy in relation to training and
sports are dissimilar to the opponent’s goods in Class 3 (inter alia, perfumery and
cosmetics), Class 5 (in general, dietary supplements for humans, sanitisers, medical
waxes, oils, lotions and powders), Class 10 (in general, medical apparatus and
instruments) and Class 20 (specialised furniture), since these goods and services
have no relevant points in common.
These contested services relate to education, sports and fitness and, therefore, they
have no commonalities with the opponent’s dietary supplements for humans in
Class 5, which relate to health, since they must serve a specific medical requirement
and must usually be eaten or taken under the supervision of a doctor or a healthcare
specialist (a dietician). Although the opponent’s massage creams in Class 3, first aid
kits in Class 5 or bandages and ice packs in Class 10 may be used by consumers
involved in sports and fitness, this is not sufficient to establish similarity between
these goods and the contested services in Class 41. The relevant public does not
expect that the producers of these goods also provide education or sports training
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.
In the present case, the goods and services found to be identical or similar to varying
degrees are directed at the public at large and also at business customers with
specific professional knowledge or expertise in the health sector.
The degree of attention may vary from average to high, depending on the specialised
nature of the goods and services, the frequency of purchase and their price. For
instance, the attentiveness of the relevant public will be average in relation to
footwear or isotonic prepared beverages, whereas it is expected to be high in relation
to insoles for corrective treatment of conditions of the feet or drawing up of nutritional
plans.
Decision on Opposition No B 2 685 397 page: 12 of 16
c) The signs
PHYSIQUE GENERATION
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.
The common element ‘PHYSIQUE’ is not meaningful in certain territories, for
example in those countries where English or French are not understood.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the German-speaking part of the public, such as Germany.
The element ‘PHYSIQUE’, present in both signs, will be associated by the relevant
public with ‘Physics’, as it is very close to the equivalent word in the relevant
language, ‘Physik’, meaning ‘the branch of science concerned with the properties of
matter and energy and the relationships between them’. Since there is no direct
connection with the goods and services in question, this element is, therefore,
distinctive.
The applicant holds that the earlier mark will be perceived as formed by two
components because the letter ‘Q’ is depicted as a red upper case letter. However,
according to settled case law, word marks should not be artificially dissected.
Dissection is not appropriate unless the relevant public will clearly perceive the
components in question as separate elements, which is not the case here.
The element ‘GENERATION’ of the contested sign is likely to be understood by the
relevant public as ‘all of the people born and living at about the same time, regarded
collectively’. As it has no direct relation with the relevant goods and services, it is
distinctive.
Contrary to the applicant’s claim, the contested sign, being a word mark, has no
element that could be considered clearly more dominant (visually eye-catching) than
other elements.
Consumers generally tend to focus on the beginning of a sign when they encounter a
trade mark. This is because 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.
Decision on Opposition No B 2 685 397 page: 13 of 16
Visually, the signs coincide in the element ‘PHYSIQUE’, which is the only element in
the earlier mark and the first one in the contested sign. However, they differ in the
second element of the contested sign, ‘GENERATION’, and in the figurative aspects
of the earlier mark, namely the stylisation and colours of the letters, as seen above.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‛PHYSIQUE’, present identically in both signs. The pronunciation differs in the
additional element of the contested sign, namely the sound of the letters
‛GENERATION’, which have no counterparts in the earlier mark.
Therefore, upon taking into account that the coinciding element is the first in the
contested sign and constitutes the entire earlier mark, the signs are aurally similar to
an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning, the signs are conceptually similar to an average degree.
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.
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.
e) 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 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19;
Decision on Opposition No B 2 685 397 page: 14 of 16
11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon,
EU:C:1998:442, § 17).
As it has been concluded in the previous sections of the present decision, the goods
and services are partly identical, partly similar to varying degrees and partly
dissimilar. The relevant public has a degree of attention that varies from average to
high and the earlier mark enjoys a normal degree of distinctiveness.
The signs are visually and aurally similar to an average degree, since the verbal
element on which the earlier mark consists is the first element of the contested sign.
The signs are also conceptually similar to an average degree.
As a rule, when the earlier trade mark is wholly incorporated in the contested sign
and performs an independent and distinctive role therein, this is an indication that the
two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27;
24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven
Summits, EU:T:2012:254, § 26). In the case at hand, the coinciding element,
‘PHYSIQUE’, is positioned in the first place in the contested sign and the second
element of the contested sign is not of higher distinctiveness. The combination of the
two elements in the contested sign may not be regarded as an indivisible unit, in
which the two elements evoke a concept different from the one of each of the
elements taken alone. Accordingly, the coinciding element has retained an
independent distinctive role in the contested sign.
Furthermore, the differing elements are either figurative aspects of the letters, which
retain less attention from the relevant public, in the case of the earlier mark, or an
additional word element placed in the second place of the contested sign.
In its observations, the applicant argues that the element ‘PHYSIQUE’ of the earlier
trade mark has a low distinctive character given that many trade marks include this
element. In support of its argument the applicant refers to several trade mark
registrations in some Member States (e.g. Germany, France, and the United
Kingdom).
The Opposition Division notes that the existence of several trade mark registrations
is not per se particularly conclusive, as it does not necessarily reflect the situation in
the market. In other words, on the basis of register data only, it cannot be assumed
that all such trade marks have been effectively used. It follows that the evidence filed
does not demonstrate that consumers have been exposed to widespread use of, and
have become accustomed to, trade marks that include the element ‘PHYSIQUE’.
Under these circumstances, the applicant’s claim must be set aside.
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Consequently, even if the average consumers are capable of detecting certain visual,
aural and conceptual differences between the two conflicting signs, the likelihood that
they might associate the signs with each other is very real. From the wording in
Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of
association with the earlier trade mark’, it follows that the concept of a likelihood of
association is not an alternative to that of a likelihood of confusion, but serves to
define its scope. In the present case, it is conceivable that the relevant consumers
will perceive the mark applied for as a variation of the earlier mark configured in a
Decision on Opposition No B 2 685 397 page: 15 of 16
different way according to the type of goods which it designates, (23/10/2002,
T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, relevant consumers may regard
the contested goods and services and the opponent’s goods as belonging to two
ranges of goods and services coming, nonetheless, from the same undertaking.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the German-speaking part of the public and, therefore, the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration No 11 675 477. 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 the
goods and services found to be identical or similar to varying degrees to those of the
earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this Article and directed at these goods and services cannot be
successful.
The opponent has also based its opposition on the following earlier trade marks:
European Union trade mark registration No 12 444 709 for the word mark
‘PHYSIQUE’, in Classes 3, 5, 10 and 20;
European Union trade mark registration No 12 444 725 for the word mark
‘PHYSIQUE MANAGEMENT’, in Classes 3, 5, 10 and 20.
Although these marks are even closer to the contested sign since they are word
marks, they cover a narrower scope of goods, therefore, the outcome cannot be
different with respect to goods and services for which the opposition has already
been rejected. Therefore, no likelihood of confusion exists with respect to those
goods and services.
For the sake of completeness, there is no need either to consider the opponent’s
argument and evidence submitted in relation to the existence of a ‘family of marks’,
as the question of the likelihood of association between the contested trade mark and
the earlier mark has already been considered. Therefore, the result would be the
same even if the Office had found the opponent’s argument to be well founded.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
According to Article 109(3) EUTMR, where each party succeeds on some heads and
fails on others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
Decision on Opposition No B 2 685 397 page: 16 of 16
The Opposition Division
Richard BIANCHI Marta GARCÍA COLLADO Teodora TSENOVA
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.