In Case T-221/12, the General Court had to clarify the legal issue arising from the request for proof of use of certain goods for the mark SUNNY FRESH, in particular the difference regarding Class 5 ‘ herbal nutritional supplements’ and Class 32 beverages of the Nice Agreement for the International Classification of Goods & Services.

Nannerl GmbH & Co. KG had applied for CTM registration SUN FRESH for Class 32 goods. The Sunrider Corporation brought an opposition on the basis of several prior rights, including CTM Sunny Fresh registered for Class 5. Following a request for Proof of Use (PoU), the Opponent submitted, among other:

- copies of 167 invoices issued between 2003 and 2008 regarding sales of 498 Sunny Fresh mini packs each containing 10 bottles of 15ml of dietary supplement ‘Sunny Fresh’ to customers numerous European countries;

• –two samples of packaging items, labelled ‘SUNRIDER® MINI PACK’, ‘SUNNY FRESH® DIETARY SUPPLEMENT HERBAL CONCENTRATE’ (10 bottles / 15 ml each) in English/Dutch and French/German, each bottle labelled with the indication ‘DIETARY SUPPLEMENT – HERB CONCENTRATE’, and a reproduction of the following figurative mark.

The Opposition Division upheld the opposition for all the contested goods and rejected the applied for CTM in its entirety. The Board of Appeal annulled the OD’s decision finding that the PoU was brought only for a dietary supplement based on a herbal concentrate falling within Class 5 and thus demonstrated only use for the earlier CTM. Since the goods for which the applicant had requested registration of the mark SUN FRESH were different, accordingly, there was no likelihood of confusion.

The General Court dismissed the appeal and upheld the finding of the Board of Appeal : the goods at issue are different in their purpose, their usual producers, their outlets and their end-users, and as a result of the fact that they are neither complementary nor in competition with each other.

According to the Board, a liquid whose main purpose is not to quench thirst or to be used as standard human nutrition, but which is used primarily for medical purposes or to balance nutritional deficiencies, constitutes a ‘nutritional supplement’ in Class 5 rather than a ‘beverage’ in Class 32. It is apparent that the relevant distinguishing criterion is not the liquid and edible nature of the goods, but their main purpose.

It is undisputed that the SUNNY FRESH herbal concentrate was sold in batches of 10 bottles of 15 ml capacity each, that the product packaging indicated that the consumption of a bottle of 15 ml per meal was recommended and that the packaging also contained the warning: ‘Do not exceed the stated recommended daily dose. Food supplements should not be used as a substitute for a varied diet. Keep stored out of the reach of young children.’ It is also undisputed that the applicant itself mentioned the goods in the price lists not as a beverage, but as a herbal formula concentrate which it marketed under the following description:

‘Sunny Fresh is a unique natural supplement that soothes and revives a dry scratchy throat. It contains an extraordinary blend of concentrated herbs including liquorice, peppermint and cloves, all traditionally used to aid digestion, soothe the stomach and freshen the breath.’

In view of that presentation and marketing of the SUNNY FRESH herbal concentrate, in particular the warnings about the recommended dosage and potential hazards of the product for young children, it is appropriate to confirm the Board’s finding that the main purpose of the goods was not to quench thirst or to ensure standard human nutrition, but to address certain medical problems in the broad sense of the term. The Board therefore did not err in classifying the SUNNY FRESH product as a ‘herbal nutritional supplement’ in Class 5, and not as a ‘beverage’ in Class 32.

In that context, OHIM correctly submitted that it was stated neither on the SUNNY FRESH product nor on its packaging that it should or could be mixed with water and then consumed as a beverage. Goods should be classified by taking into account their usual use rather than their accidental use.

Further, nutritional supplements are generally offered for sale in pharmacies, drugstores or specialised departments is a well-known fact. As regards the applicant’s argument that some outlets, such as large supermarkets, sell as many Class 5 nutritional supplements as they do beverages, syrups and other preparations for beverages falling within Class 32 – which is not disputed by OHIM – it should be remembered that, in itself, that fact is not likely to make such products similar in the eyes of the average consumer, insofar as they are sold in different aisles.

According to settled case-law, goods or services are complementary where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (seeeasyHotel, paragraphs 57 and 58 and the case‑law cited). However, such a complementary relationship has not been established in the present case.

In any event, having regard to the above considerations in relation to the different purposes of the goods at issue, the differences in their marketing and lack of substitutability or complementarity, the Court considers that a partial identity of the manufacturers of the contested goods is not sufficient to create a likelihood of confusion between those goods.