OPPOSITION No B 2 755 133

The Protein Ice Cream Company Limited, St Johns Studios, Church Road, Richmond TW9 2QA, United Kingdom (opponent), represented by Nick Davies, 6 Percy Street, London W1T 1DQ, United Kingdom (professional representative)

a g a i n s t

Bio-Synergy, 120 West Heath Road, London NW3 7TX (applicant), represented by Simon Malvin Walters, 17 Islay House, Scammell Way, Watford, Hertfordshire WD18 6GD, United Kingdom (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 133 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 445 752. The opposition is based on European Union trade mark registration No 11 490 471. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

WHEYHEY	Whey Hey
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.

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1. The goods

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

Class 29:        Milk and milk products; dairy products; yoghurt, frozen yoghurt and preparations made therefrom; beverages made from milk; beverages made from yoghurt; cream; fruit snacks; jellies, jams, compotes.

Class 30:        Ice cream; water ices; frozen confections; cones for ice cream; sauces and syrup for food; snack foods; confectionery.

The contested goods are the following:

Class 5:        Food supplements.

Class 32:        Energy drinks.

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 food supplements are concentrated sources of nutrients or other substances with a nutritional or physiological effect, whose purpose is to supplement a normal diet. They are marketed in dose form, for example as pills, tablets, capsules or liquids in measured doses. Supplements may be used to correct nutritional deficiencies or maintain an adequate intake of certain nutrients. Bearing this in mind, they have a different purpose from the opponent’s milk and milk products; dairy products; yoghurt, frozen yoghurt and preparations made therefrom; beverages made from milk; beverages made from yoghurt; cream; fruit snacks; jellies, jams, compotes in Class 29 and ice cream; water ices; frozen confections; cones for ice cream; sauces and syrup for food; snack foods; confectionery in Class 30, which are non-medicated consumer products or ingredients. Furthermore, the opponent’s goods do not include food supplements and are, therefore, different in nature from the contested goods; their method of use is also different. Finally, the conflicting goods are not in competition, are not complementary and do not have the same distribution channels. Therefore, they are dissimilar.

Contested goods in Class 32

The contested energy drinks are soft drinks designed to increase the user’s mental alertness and physical performance by the addition of caffeine, vitamins, herbal supplements, etc. Bearing this in mind, they have a different nature and purpose from the opponent’s milk and milk products; dairy products; yoghurt, frozen yoghurt and preparations made therefrom; beverages made from milk; beverages made from yoghurt; cream; fruit snacks; jellies, jams, compotes in Class 29 and ice cream; water ices; frozen confections; cones for ice cream; sauces and syrup for food; snack foods; confectionery in Class 30, which are mainly processed foodstuffs of animal and/or vegetable origin. These goods also usually have different origins and distribution channels because, although the goods are usually sold in the same supermarkets, they are usually not next to each other but in different sections. Finally, the conflicting goods are not in competition (e.g. energy drinks are not considered alternatives to, for example, milk, beverages made from yoghurt or ice cream) and are not complementary. Therefore, they are dissimilar.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 07/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 12/01/2017.

The opponent filed observations on 13/01/2017, that is, after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish that the trade mark on which the opposition is based has a reputation.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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.

The Opposition Division

Andrea VALISA	Birgit FLITENBORG	Michele M. BENEDETTI-ALOISI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.