JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
27 September 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark GN Laboratories — Earlier EU word mark GNC — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑712/17,
Christos Ntolas, residing in Wuppertal (Germany), represented by C. Renger, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by P. Sipos and by D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
General Nutrition Investment Co., established in Wilmington, Delaware, Arizona (United States of America),
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 18 July 2017 (Case R 2358/2016-5), relating to opposition proceedings between General Nutrition Investment Co. and C. Ntolas,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias (Rapporteur), President, A. Dittrich and P.G. Xuereb, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 October 2017,
having regard to the response of EUIPO lodged at the Court Registry on 6 December 2017,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        On 28 September 2012, the applicant, Christos Ntolas, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        The mark in respect of which registration was sought is the word mark GN Laboratories.
3        The goods and services in respect of which registration was sought are in Classes 5, 29 and 30 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following descriptions:
–        Class 5: ‘Mineral food supplements, foodstuffs with a base of amino acids; food supplements with a base of minerals; dietary supplements on the basis of trace elements; vitamin preparations; food supplements, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements; food supplements, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; protein dietary supplements; food supplements, not for medical purposes, with a base of proteins, with added vitamins, minerals, trace elements’;
–        Class 29: ‘Albumen for culinary purposes; edible oils; dietetic foodstuffs, not for medical purposes, with a base of fats, fatty acids, with added vitamins, minerals, trace elements; dietetic foodstuffs, not adapted for medical use, with a base of proteins, with added vitamins, minerals, trace elements’;
–        Class 30: ‘Dietetic foodstuffs, not for medical purposes, with a base of carbohydrates, roughage, with added vitamins, minerals, trace elements’.
4        On 11 March 2013, General Nutrition Investment Co. filed a notice of opposition pursuant to Article 41 and Article 8(1)(b) of Regulation No 207/2009 (now Article 46 and Article 8(1)(b) of Regulation No 2017/1001) to registration of the mark applied for.
5        The opposition was directed against all the goods covered by the mark applied for and was based, inter alia, on earlier EU word mark GNC, registered on 9 August 2012, designating the goods and services in Classes 5, 29 and 35 and corresponding, for each of those classes, to the following description:
–        Class 5: ‘Protein for human consumption’;
–        Class 29: ‘Milk products’;
–        Class 35: ‘Retail store services featuring health foods, dietary supplements, nutritional supplements, herbs, vitamins, sports nutrition products, fitness products and apparel, cosmetics, body care, diagnostic exercise or aromatherapy products’.
6        By decision of 24 October 2016, the Opposition Division found that there was a likelihood of confusion and upheld the opposition in its entirety on the basis of Article 8(1)(b) of Regulation No 207/2009.
7        On 16 December 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 60 of Regulation No 207/2009 (now Articles 66 to 68 of Regulation No 2017/1001), against the decision of the Opposition Division.
8        By decision of 18 July 2017 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal.
9        In particular, first, as regards the comparison of the goods and services, the Board of Appeal found that the goods covered by the mark applied for in Class 5 (see the first indent of paragraph 3 above) could contain protein for human consumption and were, therefore, identical to the protein for human consumption covered by the earlier mark (see the first indent of paragraph 5 above). Furthermore, according to the Board of Appeal, the protein content of the goods in Class 29 — with the exception of the edible oils — covered by the mark applied for (see the second indent of paragraph 3 above) entails that those goods are similar to the protein for human consumption covered by the earlier mark. The edible oils should be considered similar to the dairy products covered by the earlier mark (see the second indent of paragraph 5 above). Finally, dietary foods, covered by the earlier mark in Class 30 (see the third indent of paragraph 3 above) are intended for the same consumers as the protein for human consumption and have the same distribution channels as that protein, as a result of which they must be classified as similar.
10      Secondly, having regard to the nature and purpose of the goods, the relevant public, which is that of the European Union, must be found, according to the Board of Appeal, to show a higher than average level of attention with regard to all the goods except for the edible oils, and an average level of attention for the latter.
11      Thirdly, according to the Board of Appeal, since the marks at issue share the letter sequence ‘GN’, they are visually and phonetically similar. Given the lack of conceptual content of the GN letter sequence, and the meaning of the term ‘laboratories’ as a space for experimentation, research or the manufacture of drugs and chemicals, the Board of Appeal concluded that the marks at issue were conceptually different and, taking account of all the comparison criteria, similar to an average degree.
12      Finally, fourthly, given the average degree of similarity between the marks at issue and the identity or similarity of the goods covered by them, the weak distinctive character of the word ‘laboratories’ and the normal degree of distinctiveness of the earlier mark, the Board of Appeal held that there was a likelihood of confusion in respect of all the goods covered by the mark applied for, whether the degree of attention of the relevant public was above average or, a fortiori, average, according to the distinctions made in paragraph 10 above.
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        reject the opposition;
–        order EUIPO to pay the costs.
14      EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
15      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16      In the context of that plea, the applicant submits, first, that the Board of Appeal disregarded in its analysis the fact that minerals, trace elements, vitamins and fats were completely different from protein. With the exception of protein-based food supplements and protein-based food supplements for non-medical purposes, all the other goods covered by the mark applied for in Class 5 are at most slightly similar to the goods covered by the earlier mark in Class 5. The same applies to both food supplements for non-medical purposes with a base of fats, fatty acids, with added vitamins, minerals and trace elements, as well as to dietary supplements for non-medical purposes with a base of carbohydrates, roughage, with added vitamins, minerals, and trace elements. Moreover, it is not apparent from the description of the goods covered by the mark applied for in Class 29 that they are intended for weight-lifting enthusiasts or those engaged in intense sporting activity. Consequently, contrary to what the Board of Appeal found, those goods cannot be regarded as similar to the protein intended for the aforementioned public. In addition, according to the applicant, the Board of Appeal also erred in finding that dairy products, which are derived from livestock, were similar to edible oils, which are derived from plants, are considered as ingredients, and cannot be consumed in their pure form.
17      Secondly, the applicant claims that the marks at issue have clear visual differences, given that the mark applied for comprises the word ‘laboratories’ and does not include the letter ‘C’, present in the earlier mark. Such characteristics further distinguish the marks at issue from a phonetic point of view, which distinction is all the more pronounced owing to the brevity of the signs GN and GNC. The word ‘laboratories’, moreover, has no link with the goods covered by the mark applied for, as a result of which it cannot be regarded as being of weak distinctiveness. In the light of those considerations, the applicant concludes that the Board of Appeal erred in stating that there is a likelihood of confusion in the present case.
18      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19      According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
21      In addition, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
22      In the present case, as noted by the Board of Appeal in paragraphs 20 and 21 of the contested decision, the relevant public consists of consumers of nutritional and medicinal products and of practitioners working in those areas within the European Union. Moreover, having regard to the nature of the goods in question, the attention of that public is above average.
23      With respect to the comparison between the goods in Class 5 as referred to in the trade mark applied for and those covered by the earlier trade mark, it should be recalled that, according to the case-law, the goods may be regarded as identical where the goods covered by the earlier mark are included in a more general category to which the trade mark application refers (judgment of 19 January 2011, Häfele v Topcom Europe (Topcom), T‑336/09, not published, EU:T:2011:10, paragraph 36). In the present case, the Board of Appeal found, in paragraph 17 of the contested decision, that the goods covered by the mark applied for in Class 5 may contain protein for human consumption and are, therefore, identical to the protein for human consumption covered by the earlier mark. That finding must be upheld. The goods in Class 5 covered by the mark applied for include or may include the goods containing protein for human consumption covered by the earlier mark. In its application, the applicant did not make a distinction between the goods covered by the trade mark applied for and all the goods covered by the earlier mark. EUIPO was not able to make that distinction. In addition, it was not for EUIPO to make such a distinction.
24      It follows that the Board of Appeal did not err in classifying those goods as identical to the protein for human consumption covered by the earlier mark.
25      As regards the goods covered by the mark applied for and falling within Classes 29 and 30 (see the second and third indents of paragraph 3 above), with the exception of the protein-based dietary supplements for non-medical purposes and the albumen for culinary purposes, which, as protein, are identical to the products containing protein for human consumption covered by the earlier trademark, it must be noted that they are similar to the latter products. As regards, first, other dietary products covered by the mark applied for and falling within Classes 29 and 30, they meet the same needs, are aimed at the same public and distributed through the same channels.
26      As regards, secondly, the edible oils, it must be held that the Board of Appeal did not err in treating them as similar to the dairy products covered by the earlier mark. As noted by the Board of Appeal in paragraph 18 of the contested decision, edible oils may be used interchangeably, at least with butter, which is a dairy product, as a result of which they are similar (see, to that effect, judgment of 8 July 2004, SunriderOHIM — Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraphs 67 and 68).
27      It follows that the Board of Appeal did not err in finding that the goods covered by the mark applied for in Classes 29 and 30, with the exception of the protein-based dietary supplements for non-medical purposes and the albumen for culinary purposes, are similar to the protein for human consumption and dairy products covered by the earlier mark.
28      As regards the comparison of the marks at issue, it should be noted that, contrary to what the applicant claims, the presence of the word ‘laboratories’ in the contested mark and of the letter ‘C’ in the earlier mark does not neutralise the visual and phonetic similarities found by the Board of Appeal.
29      As noted by the Board of Appeal, the term ‘laboratories’ is weakly distinctive, since it refers to sophisticated production processes based on science and therefore creates an impression relating to the quality and effectiveness of the goods whose manufacture entails the use of chemical processes. Therefore, that term is not such as to play the leading role required to offset the visual and phonetic similarities due to the common elements of the marks at issue (see, to that effect, judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 41). The same is true of the letter ‘C’, which is part of the earlier mark and does not call into question the impression of visual and phonetic similarity resulting from the letter sequence GN, common to the marks at issue.
30      From a conceptual point of view, the fact that the letter sequence GN does not convey any particular message entails that, with respect to the parts they have in common, the marks at issue do not present any conceptual similarity, as noted by the Board of Appeal in paragraph 25 of the contested decision.
31      Consequently, the Board of Appeal did not err in concluding that the marks at issue were of average similarity in view of their visual and phonetic similarities.
32      As to the global assessment of the likelihood of confusion, it must be stated that the conclusion reached by the Board of Appeal is correct.
33      Given that the marks at issue are moderately similar and the goods covered by them are partly similar and partly identical, the likelihood that the public would believe that the goods in question come from the same undertaking or from economically linked undertakings cannot be eliminated either because of the presence of the letter ‘C’ in the earlier trade mark or because of the term ‘laboratories’ forming part of the mark applied for. For the reasons set out in paragraph 29 above, those distinguishing elements admittedly exclude the possibility of classifying the marks at issue as identical, but do not counteract their similarities so as to preclude the likelihood of confusion that they entail. That conclusion is not affected by the higher level of attention that may be shown by some consumers of goods in Classes 5 or 29. In that respect, it should be noted that the letter sequence GN placed at the beginning of the marks at issue creates the impression of acronyms which have a meaning, even if not directly perceptible to consumers. In those circumstances, those elements taken together are capable of creating an economic link between the two undertakings, even in the mind of consumers who exhibit a higher than average level of attention.
34      Accordingly, the single plea in law must be rejected and the action as a whole dismissed.
Costs
35      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
36      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Christos Ntolas to pay the costs.
Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg on 27 September 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.