PowerGum Progum | Decision 2647652

Date Published: Sep 22, 2017

OPPOSITION No B 2 647 652

Premier Nutrition Corporation, 5905 Christie Avenue, Emeryville California 94608, United States of America (opponent), represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft Von Rechtsanwälten Mbb, ALPHA-Haus, Garmischer Strasse 35, 81373 Munich, Germany (professional representative)

a g a i n s t

Hasan Kara, Inkilap District, Str. Kucuksu, Istanbul Plaza nr. 107/12 Umraniye, Istanbul, Turley, (applicant), represented by Milcev Burbea Intellectual Property Office, 170 Stirbei Voda Street, Bl.10G, Entr.1, Floor 5, App.18, District 1, Bucharest, Romania (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 647 652 is partially upheld, namely for the following contested goods:

Class 5:         Gummy vitamins; Gum for medical purposes; Chewing gum for medical purposes; Nicotine gum for use as an aid to stop smoking; Mint-flavored chewing gum for medical use; Breath-freshening chewing gum for medicinal purposes.

Class 30:         Guar gum; Gum sweets; Bubble gum; Gum sweets (Non-medicated -); Sugar-free chewing gum; Breath-freshening chewing gum; Dental health gum [other than medicated]; Chewing gum; Lollipops; Clear gums.

2.        European Union trade mark application No 14 330 328 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 330 328 .

The opposition is based on the following earlier rights:

1. European Union trade mark registration No 477 216 – ‘POWER ON’ (word mark) registered for goods in Classes 5, 25 and 30

2. European Union trade mark registration No 164 251 – ‘POWERBAR’ (word mark) registered for goods in Classes 5, 18, 25, 28, 30, 32

3. European Union trade mark registration No 819 680 – ‘POWERBAR HARVEST’ (word mark) registered for goods in Class 30

4. European Union trade mark registration No 164 301  - ‘POWERGEL’ (word mark) registered for goods in Classes 5, 25 and 30

5. European Union trade mark registration No 5 388 707  - ‘POWERLAB’ (word mark) registered for goods in Classes 5, 29, 30 and 32

6. International trade mark registration No 901 651   designating the European Union for goods in Classes 5, 18, 25, 28, 30, 32 and 36

7. International trade mark registration No 980 892

designating the European Union for goods in Class 29

8. International trade mark registration No 979 552 ‘POWERPEEL’ (word mark) designating the European Union for goods in Classes 5, 16, 29, 30, 32

9. International trade mark registration No 921 538 ‘POWERBAR RIDE’ (word mark) designating the European Union for goods in Classes 5, 29 and 30

10. German Trade mark registration No 1 186 205 ‘POWERBAR’ (word mark) registered for goods in Class 30

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 164 251.

1. The goods

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

Class 5: Food supplements; nutritional supplements. 

Class 18: All purpose athletic, duffel, gym, sports and tote bags, backpacks, fanny packs, waist packs and knapsacks; ski boot bags. 

Class 25: Men's, women's and children's clothing; snow shoes. 

 

Class 28: Golf accessories, namely, golf bag covers, golf bag tags, golf bags, golf ball markers, golf ball retrievers, golf balls, golf club heads, golf club inserts, golf club shafts, golf putter covers, golf tees, grip tapes for golf clubs, hand grips for golf clubs, head covers for golf clubs; shoulder pad elastic for athletic use, elbow guards for athletic use; elbow pads for athletics use; exercise bars; exercise benches; exercise equipment, namely manually operated jogging machines, powered treadmills for running, pulleys, rowing machines, weight lifting machines; baseball gloves, batting gloves, bicycling gloves, handball gloves; swim goggles; ski goggles; grip tapes for baseball bats; grip tapes for racquets; arm guards for athletic use, knee guards for athletic use; gymnastic parallel and horizontal bars; gymnastic apparatus; hand pads for athletic use; hand balls; athletic mouth guards; athletic protective pads; tennis racquet covers, squash racquet covers, racquetball racquet covers; jump ropes, ski ropes; shin guards and pads for athletic use; portable ski carriers; ski poles; swimming gloves.

Class 30: Coffee, tea, cacao, sugar, rice tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices; ice; specifically, grain based food bar.

 

Class 32: Sports drinks, aloe vera drink and juices; cola, fruit drinks, vegetable juices, fruit juices, fruit juice concentrates, fruit nectars, fruit punch, fruit-based soft drinks flavored with tea, fruit flavored soft drinks, mineral water, seltzer water, soda water, spring water, drinking water.

The contested goods and services are the following:

Class 5: Gummy vitamins; Gum for medical purposes; Chewing gum for medical purposes; Nicotine gum for use as an aid to stop smoking; Mint-flavored chewing gum for medical use; Breath-freshening chewing gum for medicinal purposes. 

Class 30: Guar gum; Gum sweets; Bubble gum; Gum sweets (Non-medicated -); Sugar-free chewing gum; Breath-freshening chewing gum; Dental health gum [other than medicated]; Chewing gum; Lollipops; Clear gums. 

Class 35: Advertising, marketing and promotional services;  Publicity services; Publicity and sales promotion services; all these services being related to gummy vitamins, gum for medical purposes, chewing gum for medical purposes, nicotine gum for use as an aid to stop smoking, mint-flavored chewing gum for medical use, breath-freshening chewing gum for medicinal purposes, guar gum, gum sweets, bubble gum, gum sweets (Non-medicated -), sugar-free chewing gum, breath-freshening chewing gum, dental health gum (other than medicated), chewing gum, lollipops, clear gums.

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

Gummy vitamins fall into the broad category of the opponent’s nutritional supplements and therefore the goods are identical.

The remaining goods are all types of gum for medical purposes. These goods are similar to the opponent’s nutritional supplements as they have the same purpose, namely to maintain or restore one’s health. They can coincide in end user and distribution channels.

Contested goods in Class 30

The contested sweet gums, guar gums, chewing gums, lollipops are included in the broader category of the opponent’s confectionery. Therefore, they are considered identical.

Contested services in Class 35

The contested services in this class cover advertising, marketing and promotional services, which consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity.

The opponent’s goods are food supplements, sport bags, clothing, shoes, golf accessories, foodstuffs of plant origin and non-alcoholic beverages. From the description provided above, it follows that the opponent’s goods and the contested services in this class have different natures, purposes, producers/providers and distribution channels. They are neither in competition nor complementary. The fact that the contested services are specified as being related to gummy vitamins and gums does not change this finding because advertising services are usually provided to third parties by companies specialised in advertising but who are rarely experts in the manufacturing of the products they publicise. This is because the expertise required for promoting a product is different from the skills involved in manufacturing. The subject matter of the advertising services is therefore irrelevant.

The opponent’s goods and the contested services are, therefore, dissimilar.

2. 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.

With regard to the contested and earlier goods in Class 30, they are mass consumption goods and are mainly aimed at the average consumer, whose level of attention varies from somewhat reduced to average (26/02/2016, T-210/14, Gummi Bear-Rings / GUMMY et al., EU:T:2016:105, § 28).

As for the contested gummy vitamins and gums for medical purposes in Class 5, the degree of attentiveness will be average.

3. The signs

POWERBAR
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 signs consist of elements which are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark ‘POWERBAR’.

The contested mark is a figurative mark containing the word ‘PowerGum’ written in white within a blue rectangle with white shading, set against a blue background. The element ‘PowerGum’ is dominant given its larger size, eye-catching, central position, white typeface and shading which contrasts with the blue background. The mark also contains the element ‘ProGum’ which is written in much smaller, barely legible handwritten typeface within a red oval. It is placed in the bottom right corner of the contested mark.

‘POWERBAR’ will be recognised by the relevant public as a word consisting of two meaningful terms: ‘POWER’, meaning the ability or capacity to do something and ‘BAR’, a solid usually rectangular block of any material. [Online Collins Dictionary https://www.collinsdictionary.com/dictionary/english/gum on 15/09/2017] ‘BAR’ may refer to the shape of the foodstuff and nutritional items covered by the earlier mark and consequently its distinctive character is limited. In any event, ‘POWER’ has no direct relation to the goods at hand and the distinctive character of this element and of the entire earlier mark is normal.

‘GUM’ in the contested mark denotes a substance, usually tasting of mint, which you chew for a long time but do not swallow. This term is descriptive of the kind of goods covered by the application, which are gum or gummy vitamins; consequently, it is devoid of distinctive character.

If ‘ProGum’ is perceived in the contested sign in spite of its smaller size, the element ‘PRO’ will be recognized as the abbreviation of professional; this is thus a laudatory non-distinctive term merely referring to extraordinary, expert qualities associated with the product. In relation to ‘GUM’, the above considerations apply.

Visually, the signs coincide in ‘POWER’ and differ in ‘BAR’/’GUM’, and to some extent in the typeface and background shading of the contested sign. They also differ in the element ‘ProGum’ in a red oval, although due to its size and position consumers will pay less attention to this element than to the contested mark’s dominant element where the coincidence lies. It should also be recalled that ‘ProGum’ is devoid of distinctive character.

It is furthermore worth noting that in word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually similar to a medium degree.

Aurally, the pronunciation of the signs coincides, at least, in the syllables ‘PO-WER’. While the pronunciation differs in the syllables ‘BAR’ and ‘GUM’, the pronunciation of the letters ‘A’ and ‘U’ will also be fairly close.

The earlier sign and the contested sign’s dominant element consist of the same number of letters/sounds. The element ‘ProGum’, placed in the low right corner of the contested mark, is unlikely to be pronounced, especially given its size and also the lack of distinctive character of ‘Pro’ and ‘Gum’.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the signs are similar to a high degree on account of the coincidence in the concept of ‘POWER’. This will hold true in spite of the conceptual differences in ‘BAR’, ‘GUM’ and ‘PRO’, bearing in mind that these terms are devoid of distinctive character.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

The signs coincide in their initial, distinctive element ‘POWER’. This coincidence is moreover placed in the dominant element of the contested sign. The differences in ‘BAR’, ‘GUM’ and ‘ProGum’ are not sufficient to counteract this similarity, especially taking into account their descriptive or laudatory meanings.

Consumers with average to low degree of attentiveness will therefore readily assume that the identical or similar goods come from the same or economically linked undertaking.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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. 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 found to be identical or similar to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on other earlier trade marks listed above. These marks cover the same or a narrower scope of goods and services, or cover other goods in Class 29 or services in Class 36 which are equally dissimilar, such as food supplements and protein preparations, vegetables, fruits, meat and seafood products in Class 29 covered by International registration No 921 538, International registration No 979 552 and European Union trade mark registration No 5 388 707  and financial sponsorship of sporting and cultural activities, financial affairs in Class 36 covered by International registration No 901 651. The purpose of the goods and services is different and they are provided by different undertakings through different distribution channels. They are neither complementary nor in competition.  

Therefore, no likelihood of confusion exists with respect to those goods and services.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDÁS

Julie GOUTARD

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.