JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
24 April 2024 (*) (1)
(EU trade mark – Opposition proceedings – Application for EU word mark Joyful by nature – Earlier EU word mark JOY – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EU) 2017/1001 – Evidence in support of the reputation – Taking unfair advantage of the distinctive character or repute of the earlier mark)
In Case T‑157/23,
Kneipp GmbH, established in Würzburg (Germany), represented by M. Pejman, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Jean Patou, established in Paris (France),
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, K. Kecsmár (Rapporteur) and S. Kingston, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the 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 By its action under Article 263 TFEU, the applicant, Kneipp GmbH, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 January 2023 (Case R 532/2022-2) (‘the contested decision’).
Background to the dispute
2 On 29 November 2019, the applicant filed an application for registration of an EU trade mark in respect of the word sign Joyful by nature.
3 The mark applied for designated, inter alia, the goods and services in Classes 3, 4, 35 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Cosmetics; Toiletries; Body cleaning and beauty care preparations; Oils for toilet purposes; Essential oils and aromatic extracts; Bath and shower preparations; Preparations for the care of the skin and hair; Eye and nail care preparations; Preparations for the care of the face, hands and feet; Preparations for care of the mouth and teeth; Baths (Cosmetic preparations for -); Bath salts, Bath salts, Bath oil, Bath pearls, Bath milk; Bath cream; Bubble bath; Bath fizzies; Shower foam; skin milks; Skin cream; Soaps and gels; Face lotions; Make-up preparations; Aromatherapy products, not for medical use; Sauna infusions; Massage preparations; Cosmetic wound care; Deodorants and antiperspirants; Perfumery and fragrances; Perfume; Perfume preparations for freshening the air, including scented sprays and room fragrances; Scented oils; Scented wood; Potpourris [fragrances]; Perfume water; Fragrant preparations; Potpourris [fragrances]; Air fragrance reed diffusers; Fragrance emitting wicks for room fragrance; Fragrance refills for electric room fragrance dispensers; Fragrance refills for non-electric room fragrance dispensers; Air fragrancing preparations’;
– Class 4: ‘Perfumed candles and scented candles; Perfumed candles; Perfumed candles for freshening the air’;
– Class 35: ‘Marketing and promotion services; customer loyalty services for commercial, promotional and/or advertising purposes; organisation, conducting and monitoring of incentive schemes, bonus schemes and customer loyalty schemes; administration of a discount program for enabling participants to obtain discounts on goods and services through use of a discount membership card; advertising; sample distribution; shipping and distribution of advertising, marketing and promotional materials, including via the internet; product demonstrations and product display services; wholesaling and retailing (including via the internet) in the fields of cosmetics and beauty treatments, preparations and goods for healthcare, cosmetics, perfumery and scents, essential oils and aromatic extracts, fragrancing preparations, air fragrancing apparatus, fragranced candles’;
– Class 44: ‘Human hygiene and beauty care’.
4 On 1 July 2020, the other party to the proceedings before the Board of Appeal of EUIPO, Jean Patou, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
5 The opposition was based on a number of earlier rights, including the EU word mark JOY, registered on 24 February 2016 under No 14790232, for goods in Class 3 corresponding to the following description: ‘Hair care preparations; Hair care lotions; Hair care creams; Cosmetic hair care preparations; Cosmetics; Milks [cosmetics]; Cosmetics preparations; Moisturisers [cosmetics]; Skincare cosmetics; Eyebrow cosmetics; Sun block [cosmetics]; Powder compacts [cosmetics]; Cosmetics for suntanning; Suntan oils [cosmetics]; Make-up; Skin make-up; Powder (Make-up -); Make up foundations; Make-up pencils; Eye make-up; Make-up remover; Make-up preparations; Make-up powder; Make-up removing milk; Eye make-up removers; Eye make up remover; Make up removing preparations; Lipstick; Blushers; Eye shadow; Mascara; Eye liner; Hairspray; Fragrances; Perfumery and fragrances; Nail polish; Nail polish pens; Nail-polish removers; Styling sprays for the hair; Hair mousse; Hair gel; Body deodorants [perfumery]; Toilet soap; Perfumed soap; Facial washes; Hand washes; Shaving gel; Shower gel; Eyebrow gel; Bath gel; Shaving gels; Aftershave gels; Eye gels; Beauty gels; After-shave gel; Hair protection gels; Hair shampoo; Body shampoos; Dry shampoos; Hair rinses [shampoo-conditioners]; Hair conditioner; Skin conditioners; Cuticle conditioners; Body lotion; Body mask lotion; Moisturising body lotion [cosmetic]; Perfumed body lotions [toilet preparations]; Scented body lotions and creams; Lotions for face and body care; Toning lotion, for the face, body and hands’.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of 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).
7 On 28 February 2022, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001, in the light of the reputation of the earlier word mark JOY referred to in paragraph 5 above.
8 On 31 March 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
9 By the contested decision, the Board of Appeal partially annulled the decision of the Opposition Division in so far as it rejected the application for registration in respect of the following services in Class 35: ‘Marketing and promotion services; customer loyalty services for commercial, promotional and/or advertising purposes; organisation, conducting and monitoring of incentive schemes, bonus schemes and customer loyalty schemes; administration of a discount program for enabling participants to obtain discounts on goods and services through use of a discount membership card; advertising; sample distribution; shipping and distribution of advertising, marketing and promotional materials, including via the internet; product demonstrations and product display services’.
10 It nevertheless dismissed the appeal in respect of the other goods and services referred to in paragraph 3 above, on the basis of Article 8(5) of Regulation 2017/1001. On the substance, it found that all the necessary conditions for the application of that provision were satisfied in the present case, taking into account, inter alia, first of all, the evidence submitted by the other party to the proceedings before the Board of Appeal of EUIPO demonstrating the strong reputation enjoyed by the earlier mark, in a substantial part of the European Union, for perfumery and fragrances in Class 3, next, the similarity of the marks at issue, the existence of a link between them, in the light of the degree of closeness or similarity between the goods and services concerned, and, lastly, the risk that the use of the mark applied for would take unfair advantage of the repute of the earlier mark, in the absence of due cause for the use put forward by the applicant.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it dismissed its appeal against the Opposition Division’s decision of 28 February 2022;
– order EUIPO to pay the costs incurred before the Court and in the course of the opposition proceedings.
12 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs in the event that an oral hearing is convened.
Law
13 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001. That plea consists of four complaints concerning, first, whether the earlier mark has a reputation, second, the similarity of the marks at issue, third, the existence of a link between the marks at issue and, fourth, the failure to take unfair advantage of the distinctive character or of the repute of the earlier mark and the existence of due cause for the use of the mark applied for.
14 As a preliminary point, it should be borne in mind that, under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
15 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that, first, the signs must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54).
16 In the present case, it must be observed that the Board of Appeal noted that the relevant public consisted mainly of the general public of the European Union, which the applicant does not dispute. Nor does it dispute that France constitutes a substantial part of the relevant territory of the European Union for the purposes of examining the reputation of the earlier mark. By contrast, the applicant disputes the Board of Appeal’s findings concerning the cumulative conditions of Article 8(5) of Regulation 2017/1001, which it is appropriate to examine in the light of the foregoing considerations.
Whether the earlier mark has a reputation and the burden of proof in relation to that reputation
17 By its first complaint, the applicant criticises the Board of Appeal for having incorrectly (i) accepted that the reputation of the earlier mark had been established and (ii) reversed the burden of proof in relation to that reputation. According to the applicant, the documents produced by the other party to the proceedings before the Board of Appeal of EUIPO did not provide evidence of that reputation in France. According to the applicant, for the purposes of determining reputation, market share is of prime importance. The perfume Joy by Jean Patou is sold only by selected luxury and prominent retailers, which a significant part of the relevant public do not frequent, with the result that the earlier mark cannot be presumed to have a reputation on the basis of its history alone, of which a significant part of the relevant public is unaware. According to the applicant, the low sales figures did not prove that the earlier mark was known to a significant part of the relevant public in France, particularly since it had generated only a low turnover in 2016, 2017 and 2018, which, moreover, had steadily decreased since 2016. Furthermore, in paragraph 34 of the contested decision, the Board of Appeal required the applicant to prove a drastic loss in the reputation of the earlier mark and thereby reversed the burden of proof.
18 EUIPO disputes the applicant’s arguments.
19 In that regard, it must be borne in mind that, according to the case-law, in order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Staccata (QUARTODIMIGLIO QM), T‑76/13, not published, EU:T:2015:94, paragraph 87 and the case-law cited).
20 However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (see judgment of 26 June 2019, Balani Balani and Others v EUIPO – Play Hawkers (HAWKERS), T‑651/18, not published, EU:T:2019:444, paragraph 24 and the case-law cited).
21 Furthermore, an overall assessment of the evidence adduced by the proprietor of the earlier mark must be carried out in order to establish whether that mark has a reputation (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72). An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 26 June 2019, HAWKERS, T‑651/18, not published, EU:T:2019:444, paragraph 29 and the case-law cited).
22 Next, it should be noted that the reputation of an earlier mark must be established as at the filing date of the application for registration of the mark applied for (judgment of 5 October 2020, Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraph 112). Documents bearing a date after that date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. It cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 104 and the case-law cited; see also, by analogy, order of 27 January 2004, La Mer Technology, C‑259/02, EU:C:2004:50, paragraph 31).
23 In the present case, the reputation of the earlier mark had to be established as at 29 November 2019, the date on which the application for registration of the mark applied for was filed. The Board of Appeal found, in paragraph 46 of the contested decision, that, as a whole, the evidence submitted by the other party to the proceedings before the Board of Appeal of EUIPO demonstrated convincingly that the earlier mark enjoyed a strong reputation, at least in France, which constitutes a substantial part of the territory of the European Union, in respect of perfumery and fragrances in Class 3 for which, inter alia, the earlier mark was registered.
24 In particular, it should be noted that, in order to find that the reputation of the earlier mark had been established, the Board of Appeal relied on the evidence referred to in paragraph 6 of the contested decision, namely, a statement signed by a representative of the other party to the proceedings before the Board of Appeal of EUIPO, various copies of licence agreements or agreements conferring rights in respect of a trade mark JOY between that party and third parties, images of products, several extracts from websites of the other party to the proceedings before the Board of Appeal of EUIPO and third parties, a large number of articles and press cuttings, extracts from books, advertisements, numerous invoices and extracts from ‘tweets’.
25 In the first place, it is necessary to examine the applicant’s argument that the documents produced by the other party to the proceedings before the Board of Appeal of EUIPO, the existence of which is not disputed, do not provide evidence of the reputation of the earlier mark in a significant part of the relevant territory in the absence, in particular, of information concerning the market share of the earlier mark.
26 In that regard, as a preliminary point, it is necessary to reject the applicant’s arguments suggesting that the evidence intended to prove the reputation of the earlier mark in Member States other than the French Republic is irrelevant. While it is true that the Board of Appeal found that the earlier mark had a reputation ‘at least in France’ and that that State constituted a substantial part of the territory of the European Union, that does not mean that the evidence relating to other Member States is irrelevant. On the contrary, the latter evidence further supports the Board of Appeal’s finding, by demonstrating in particular the geographical scope of the earlier mark’s reputation, and must therefore be taken into consideration.
27 First, it should be noted that the other party to the proceedings before the Board of Appeal of EUIPO produced (i) numerous online articles (exhibit 7) showing that the perfume Joy was voted, in 2000, ‘Scent of the Century’ by the UK FiFi Awards, which is described as ‘perfume’s ultimate accolade’, and (ii) a screenshot of the Fragrance Foundation’s website (exhibit 6), referring to the listing of the perfume Joy on the ‘Hall of Fame’ of that foundation in 1990. As noted by the Board of Appeal, those awards are prestigious awards, which involve both longstanding use of the earlier mark and recognition of that mark by the relevant public.
28 Second, the other party to the proceedings before the Board of Appeal of EUIPO produced various extracts from books, articles and press cuttings (exhibits 4, 5, 12 and Annex 2) showing, inter alia, the use of the earlier mark for perfumes and fragrances and attesting that a significant part of the relevant public, in particular in France, knew the perfume Joy. The numerous extracts from articles, the date and place of publication of which can for the most part be identified, relate in particular to the years 2013, 2014, 2016 and 2017 and were published in several Member States, namely, Belgium, Bulgaria, Germany, Estonia, Italy, Portugal and, mainly, France, in fashion and beauty magazines of national or international importance, such as Elle, Grazia, Gala or Vogue. Several articles, dated from 2015 to 2017, describe the perfume Joy as the ‘second best-selling perfume of all time’, ‘one of the most popular and successful fragrances in the world’, ‘a strong rival to the number one best-selling fragrance of all time’. Lastly, several books on perfumery deal with the perfume Joy, listing it as one of ‘the five greatest perfumes in the world’, or as one of the ‘111 perfumes you must smell before you die’ or describing it as ‘one of the greatest floral perfumes ever created’. Finally, a selection of ‘tweets’ dated from the period between 2013 and 2015 (exhibit 14) demonstrates the social media presence of the earlier mark.
29 Third, the other party to the proceedings before the Board of Appeal of EUIPO produced 27 invoices (exhibit 11) corresponding to advertising campaigns, which it carried out in 2013, 2014 and 2018, not only in the press, but also on television at a significant cost, in order to promote the earlier mark.
30 Fourth, the abovementioned factors are supported by a large number of invoices (exhibit 16) relating to sales involving several thousand products covered by the earlier mark, in an amount of tens of thousands of euro, to various distributors in several Member States, namely, Belgium, Bulgaria, Denmark, Germany, Estonia, Spain, France, Italy, Lithuania, Hungary, Portugal and Romania, for the years 2013 to 2018.
31 In the light of the case-law cited in paragraphs 20 and 21 above, it follows from the foregoing that, assessed as a whole, that evidence establishes that the earlier mark has a reputation in a substantial part of the territory of the European Union, in particular in France, as regards perfumery and fragrances in Class 3.
32 The other party to the proceedings before the Board of Appeal of EUIPO made significant efforts and investments in order to promote the earlier mark among the general public and in particular among the French general public. Those efforts took the form of significant advertising campaigns, a media presence in newspapers and magazines aimed at the general public and widely distributed within the European Union. Furthermore, the sales invoices submitted which related mainly to sales of perfumes and ‘eaux de parfums’ support the abovementioned factors demonstrating, inter alia, the wide geographical coverage of the earlier mark on that territory and a constant effort on the part of the other party to the proceedings before the Board of Appeal of EUIPO to maintain its market share, at least until 2018.
33 Those documents, as well as the prestigious awards won by the perfume Joy, make it possible to establish that the earlier mark is widely known by the general public, in relation to the goods which it designates, in a substantial part of the territory of the European Union, even though those awards date back several years and sales figures fell between 2013 and 2018. In the latter regard, it should be noted that, in any event, the earlier mark enjoyed a high degree of reputation in the past, which, even if it were to be assumed that it may have diminished over the years, still survived at the date of filing the application for registration of the mark applied for in 2019; accordingly, a certain ‘surviving’ reputation remained at that date (see, to that effect, judgment of 8 May 2014, Simca Europe v OHIM – PSA Peugeot Citroën (Simca), T‑327/12, EU:T:2014:240, paragraphs 46, 49 and 52).
34 Thus, the applicant’s argument that a significant part of the relevant public are teenagers who were not born when the perfume Joy won those awards and that adults aged 18 to 29 were not aware of the historical events, such as the awards and mentions in books at the relevant time, is unfounded. As EUIPO correctly submits, those parts of the relevant public may become aware of the long-lasting reputation of the earlier mark, without necessarily being the witnesses of all the awards and public praise achieved by the earlier mark in the past, and may come into contact with that mark, by way of example, through digital advertising, billboards or the printed press. Moreover, the EU judicature has already held that it cannot be ruled out that a ‘historical’ mark may retain a certain ‘surviving’ reputation, including where that mark is no longer used (see, to that effect, judgment of 8 May 2014, Simca, T‑327/12, EU:T:2014:240, paragraphs 46, 49 and 52).
35 Furthermore, such reasoning also applies to the applicant’s argument that a significant part of the relevant public does not frequent luxury retail outlets, with the result that it cannot know the perfume Joy which is sold only by selected and prominent luxury retailers. First, the public concerned acquires and retains knowledge of a mark in several ways, in particular by visiting in person retail outlets where the corresponding products are sold, but also by other means such as those described in paragraph 34 above. Second, even consumers in the general public who cannot afford to purchase luxury branded goods are often exposed to them and are familiar with them (see, to that effect, judgment of 19 October 2022, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern II), T‑275/21, not published, EU:T:2022:654, paragraph 47).
36 Furthermore, contrary to what the applicant claims, the fact that the market share held by the earlier mark has not been established by the other party to the proceedings before the Board of Appeal of EUIPO does not necessarily mean that the reputation of the earlier mark has not been established. First, as is apparent from the case-law cited in paragraphs 19 and 20 above, the list of factors to be taken into account in order to assess the reputation of an earlier mark is indicative and not mandatory, as all the relevant evidence in the case must be taken into account and, second, the detailed and verifiable evidence produced by the other party to the proceedings before the Board of Appeal of EUIPO is sufficient in itself to establish conclusively the reputation of the earlier mark for the purposes of Article 8(5) of Regulation 2017/1001 (see judgment of 14 September 2022, Itinerant Show Room v EUIPO – Save the Duck (ITINERANT), T‑417/21, not published, EU:T:2022:561, paragraph 86 and the case-law cited).
37 In the second place, the applicant also relies on the fact that the Board of Appeal assumed that the earlier mark had a reputation and wrongly stated that it was for the applicant to prove a drastic loss of reputation of the earlier mark between 2018 and 29 November 2019, the filing date of the mark applied for.
38 As recalled in the case-law cited in paragraph 22 above, it cannot automatically be ruled out that a document drawn up some time before or after the filing date of the application for registration of the mark at issue may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The same reasoning applies to the loss of such a reputation, which is also, in general, lost gradually. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date.
39 Thus, evidence which predates the filing date of the application for registration of the contested mark cannot be deprived of probative value on the sole ground that it bears a date which predates that filing date by five years (judgment of 5 October 2020, apiheal, T‑51/19, not published, EU:T:2020:468, paragraph 112).
40 It is also apparent from the case-law that, as regards the burden of proof in relation to reputation, it is borne by the proprietor of the earlier mark (see judgment of 5 October 2022, Puma v EUIPO – CMS (CMS Italy), T‑711/20, not published, EU:T:2022:604, paragraph 83 and the case-law cited).
41 In the present case, in paragraph 34 of the contested decision, the Board of Appeal, after recalling that the application for registration had been filed on 29 November 2019, emphasised that most of the evidence submitted related to the period between 2013 and 2017 and that some of that evidence dated back to 1990, 2000 or 2006; however, it noted that the evidence in fact contained indications concerning the continuous efforts of the other party to the proceedings before the Board of Appeal of EUIPO to maintain its market share in 2018, before adding that ‘the loss of reputation rarely happens as a single occurrence but is rather a continuing process over a long period of time, as the reputation is usually built up over a period of years and cannot simply be switched on and off’ and that ‘in addition, such drastic loss of reputation for a short period of time would be up to the applicant to prove’.
42 Thus, contrary to what the applicant claims, that assessment does not constitute a reversal of the burden of proof and is consistent with the case-law cited in paragraphs 38 to 40 above. In the absence of concrete evidence showing that the reputation progressively acquired by the earlier mark over many years suddenly disappeared during the last year under examination, the Board of Appeal was entitled to conclude that the earlier mark still had a reputation on 29 November 2019, the relevant date (see, by analogy, judgment of 7 January 2004, Aalborg Portland and Others v Commission, C‑204/00 P, C‑205/00 P, C‑211/00 P, C‑213/00 P, C‑217/00 P and C‑219/00 P, EU:C:2004:6, paragraph 79).
43 Therefore, the first complaint of the single plea in law must be rejected.
The similarity between the marks at issue
44 By the second complaint, the applicant criticises the Board of Appeal for having erred in finding that the marks at issue were similar. First of all, it contests the Board of Appeal’s assessment that the earlier mark has an average degree of distinctiveness, arguing, first, that, at the time of the application for registration of the earlier mark, which was not filed until 2015, the other party to the proceedings before the Board of Appeal of EUIPO did not claim distinctive character acquired through use. Second, the applicant claims that it had demonstrated the descriptive character of the terms ‘joy’ and ‘joyful’ in the cosmetics industry. According to the applicant, perfume is used only for cosmetic purposes, with the purpose of bringing joy to the user. Consequently, as regards perfumery and fragrances, ‘joy’ describes a characteristic of the goods. Next, according to the applicant, the consumer has no reason to split the mark applied for into two parts, ‘joyful’ and ‘by nature’. Indeed, in view of the large number of cosmetic products, the public will not reduce the mark applied for to the word element ‘joy’.
45 EUIPO disputes the applicant’s arguments.
46 It must be noted that the existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That condition requires, in the context both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001, the existence, in particular, of elements of visual, aural or conceptual similarity (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – GAP (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).
47 However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation 2017/1001 may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under one or other of those provisions (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).
48 Next, It should be recalled that the comparison of the signs must, so far as concerns the visual, phonetic and 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 (see judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited). Likewise, it must be observed that the similarity of the signs at issue must be assessed from the point of view of the average consumer, by reference to the intrinsic qualities of those signs, as registered or as applied for (see, to that effect, judgment of 12 November 2015, CEDC International v OHIM – Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 95 and the case-law cited).
49 It is in the light of those considerations that it is necessary to examine whether the Board of Appeal was correct in finding that the signs at issue are similar.
50 In the present case, it is common ground that the earlier mark is a word mark consisting solely of the word ‘joy’. As for the word mark applied for, it consists of the three words ‘joyful’, ‘by’ and ‘nature’.
51 So far as concerns the analysis of the distinctive and dominant elements of the signs at issue, the Board of Appeal found, in paragraphs 51 to 55 of the contested decision, that, as regards the element ‘joy’, which will be understood as referring to a ‘feeling of great pleasure and happiness’, it had to be borne in mind that a mark with a reputation necessarily has distinctive character, at the very least acquired through use, and that, in addition, the earlier mark had an inherent distinctive character in view of its meaning for the relevant public, since the word ‘joy’ does not clearly refer to any characteristic of the goods covered by that mark. Consequently, it found that the meaning of the word element ‘joy’ was sufficiently far removed from any objective characteristic of the goods at issue and had an average degree of inherent distinctiveness. As regards the expression ‘joyful by nature’, which will be understood as meaning ‘naturally joyful’ or ‘naturally inclined to be joyful’, the Board of Appeal pointed out that the focus will be placed on the element ‘joyful’, understood as referring to ‘feeling, expressing, or causing great pleasure and happiness’, since the words ‘by’ and ‘nature’ merely clarify it. Therefore, given that the expression, taken as a whole, neither directly refers nor alludes to any characteristic of the goods and services covered by the mark applied for, the Board of Appeal found that that mark had an average degree of distinctiveness.
52 In the first place, it must be borne in mind, first, that a trade mark with a reputation necessarily has distinctive character, at the very least acquired through use (see judgment of 6 July 2022, ALO Jewelry CZ v EUIPO – Cartier International (ALOve), T‑288/21, not published, EU:T:2022:420, paragraph 49 and the case-law cited). Second, it is not apparent from a reading of Article 8(5) of Regulation 2017/1001 that it is for the opponent to claim acquired distinctiveness for the purposes of Article 7(3) of Regulation 2017/1001 at the stage of the ex officio examination of the registrability of the earlier mark, the two claims being formally distinct from each other in the examination and opposition procedures. The applicant’s argument in that regard therefore has no basis.
53 In the second place, the applicant’s argument that the earlier mark is descriptive for the purposes of Article 7(1)(c) of Regulation 2017/1001, in that it describes a characteristic of perfumery and fragrances, is also unfounded.
54 Indeed, it follows from the case-law that, for the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgment of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35; see, also, judgment of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraph 65 (not published) and the case-law cited).
55 As the Board of Appeal correctly found in paragraph 54 of the contested decision, the word element ‘joy’ is sufficiently far removed from any objective characteristic of perfumery and fragrances.
56 Moreover, the applicant’s arguments that the term ‘joyful’ is used descriptively in the cosmetics industry and that economic operators use terms such as ‘joyful’ and ‘nature’ to describe their goods run counter to the applicant’s interests, since, if so, that would mean that the mark applied for as a whole is descriptive, and therefore not registrable for the purposes of Article 7(1)(c) of Regulation 2017/1001.
57 In the third place, as regards the applicant’s argument that the relevant public has no reason to split the mark applied for into two parts, ‘joyful’ and ‘by nature’, it must be recalled that, when perceiving a word sign, the relevant public will break it down into elements which, for that public, suggest a concrete meaning or which resemble words known to it (judgment of 3 October 2019, Puma v EUIPO – Destilerias MG (MG PUMA), T‑500/18, not published, EU:T:2019:721, paragraph 29). In the present case, in the mark applied for, since the word ‘joyful’ has a concrete and well-known meaning, the split with the expression ‘by nature which, as the Boards of Appeal rightly noted, merely clarifies the word ‘joyful’ will occur naturally.
58 Therefore, the Board of Appeal was right to conclude that, taken as a whole, the two marks under comparison, namely, not only the earlier trade mark JOY, but also the trade mark applied for Joyful by nature, had an average degree of distinctiveness.
59 Furthermore, visually and phonetically, the Board of Appeal found, in essence, in paragraphs 56 and 57 of the contested decision, that the signs under comparison were visually and phonetically similar, given that they coincide in their initial letters ‘j’, ‘o’ and ‘y’.
60 Conceptually, in paragraph 58 of the contested decision, the Board of Appeal found that the signs under comparison were conceptually similar to a ‘certain degree’, given that the words ‘joy’ and ‘joyful’ are synonymous and that the two marks convey, albeit in a slightly different way, the message relating to the same feeling of great pleasure and happiness.
61 The applicant does not dispute those findings.
62 In those circumstances, the second complaint of the single plea must be rejected.
The existence of a link between the marks at issue in the mind of the relevant public
63 By the third complaint, the applicant complains that the Board of Appeal erred in finding that there was a link between the signs at issue. According to the applicant, in the absence of any incorrect assessment of the reputation of the earlier mark and its distinctive character, it is not possible to assess correctly whether the link between the signs can be established by the relevant public. Furthermore, according to the applicant, in order to prevent third parties in the relevant sectors in the present case, in particular in the cosmetics sector, from using a sign composed of several words, which does not even contain the word ‘joy’ as such but the word ‘joyful’, the earlier mark must enjoy a ‘phenomenal’ reputation. A certain reputation, or even a high reputation, even if it were established, would not be sufficient in that regard.
64 EUIPO disputes the applicant’s arguments.
65 It should be borne in mind that, according to case-law, the types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them. In the absence of such a link in the mind of the public, the use of the mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see judgment of 4 October 2017, GAPPOL, T‑411/15, not published, EU:T:2017:689, paragraph 182 and 183 and the case-law cited).
66 The existence of such a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use (see judgment of 10 October 2019, McDreams Hotel v EUIPO – McDonald’s International Property (mc dreams hotels Träumen zum kleinen Preis!), T‑428/18, not published, EU:T:2019:738, paragraph 30 and the case-law cited).
67 While, in the absence of such a link in the minds of the public, the use of the trade mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, the existence of such a link is not, however, sufficient, in itself, for it to be concluded that one of the types of injury referred to in Article 8(5) of Regulation 2017/1001, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision, has materialised (see judgment of 4 October 2017, GAPPOL, T‑411/15, not published, EU:T:2017:689, paragraph 185 and the case-law cited).
68 In paragraph 70 of the contested decision, the Board of Appeal found that it was likely that the relevant consumers, when encountering the mark applied for together with the goods and services which it covers, would associate it with the earlier mark, in other words, that they would establish a mental link between the signs.
69 First of all, it has been held in paragraphs 59 to 61 above, as did the Board of Appeal, that the signs at issue are, in essence, conceptually, visually and phonetically similar.
70 Next, it has been found in paragraph 31 above that the earlier mark had a reputation in a substantial part of the territory of the European Union, in respect of perfumery and fragrances in Class 3. Where proof of reputation of a mark has been established, it is irrelevant to establish the inherent distinctive character of that mark for it to be considered to have distinctiveness (see judgment of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe), T‑629/16, EU:T:2018:108, paragraph 135 and the case-law cited).
71 Lastly, the applicant does not dispute, in the present case, that all the goods and services covered by the mark applied for which are the subject of the present action, like the perfumery and fragrances covered by the earlier mark, belong to the same market sectors or adjacent sectors related to the beauty industry. By contrast, it submits that the Board of Appeal made an error of assessment in finding that the relevant public would establish a link between the marks at issue as regards the various wholesale services covered by the mark applied for.
72 However, it has been pointed out in paragraph 66 above that the existence of a link between the marks at issue in the mind of the relevant public must be assessed globally, taking into account, inter alia, the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services. A difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude a certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary (see judgment of 1 February 2023, Harbaoui v EUIPO – Google (GOOGLE CAR), T‑569/21, not published, EU:T:2023:38, paragraph 22 and the case-law cited).
73 Consequently, the fact that there is a difference between the goods and services covered by the marks at issue, in particular between the retail services covered by the two marks at issue and the wholesale services covered solely by the mark applied for, is not sufficient to rule out that there is proximity between those goods and services on account of the immediate proximity, which is not disputed by the applicant, of the economic sectors concerned.
74 Furthermore, as regards the applicant’s argument, recalled in paragraph 63 above, that a ‘phenomenal’ reputation is required, it must be held that the Board of Appeal, in its global assessment of all the relevant factors, did not have to establish a particularly high reputation in the present case in order to conclude that there was a link between the marks at issue, in the light, in particular, of the reputation of the earlier mark in a substantial part of the European Union, for perfumery and fragrances, the immediate proximity of the economic sectors concerned and the similarity of the signs at issue.
75 Having regard to the foregoing considerations, the existence of a likelihood of association between the marks at issue cannot be ruled out. Therefore, the Board of Appeal did not make an error of assessment in finding that the relevant public was likely to establish a link between those marks.
76 It follows that the third complaint of the single plea must be rejected.
Whether unfair advantage has been taken of the distinctive character or the repute of the earlier mark and the assessment of alleged due cause for the use of the mark applied for
77 By the fourth complaint, the applicant criticises the Board of Appeal for having wrongly concluded that there was an unfair advantage and for having rejected its argument that there was due cause for the use of the mark applied for. First, as regards the existence of unfair advantage taken of the distinctive character or the repute of the earlier mark, according to the applicant, in essence, the use of the mark applied for to designate goods or services in the areas at issue in the present case does not take any unfair advantage of the alleged reputation of the earlier mark which, by its very nature, can at most claim a weak distinctive character for a perfume. It also submits that the relevant public exposed to the mark applied for used for the goods at issue will establish only a connection with the applicant. Second, as regards the existence of due cause for the use of the mark applied for, the applicant submits that economic operators in the relevant sector, and therefore the applicant, have an interest in using the word ‘joy’ because they rely on the use of words such as ‘joy’, ‘joyful’, ‘natural’ or ‘nature’ to describe and designate their products. That economic interest is all the more pronounced where the specific use of the word ‘joy’ maintains a wide distance from the earlier mark, as is the case with the mark applied for.
78 EUIPO disputes the applicant’s arguments.
79 First, in that regard, it must be recalled that the concept of ‘taking unfair advantage of the repute of the earlier mark’, called ‘parasitism’, does not pertain to the detriment caused to that mark but to the advantage taken by the third party as a result of the use without due cause of the sign which is similar or identical to that mark. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods designated by the identical or similar sign, there is clear riding on the coat-tails of the mark with a reputation (see judgment of 27 October 2016, Spa Monopole v EUIPO – YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 61 and the case-law cited).
80 The risk of unfair advantage being taken of the distinctive character or the repute of the earlier trade mark occurs where the relevant public, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and will buy the product or service covered by it on the ground that it bears that mark, which is similar to an earlier mark with a reputation (see judgment of 27 October 2016, SPA VILLAGE, T‑625/15, not published, EU:T:2016:631, paragraph 62 and the case-law cited).
81 It has been acknowledged by the case-law that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his or her mark. The proprietor must only adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (see judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 53 and the case-law cited).
82 In order to determine whether the use of the mark applied for takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of distinctive character of the earlier mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned (see judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 54 and the case-law cited).
83 In the present case, as regards the existence of an unfair advantage, it should be noted that the Board of Appeal found, in paragraph 79 of the contested decision, that there was a link between the goods and services under comparison in the present case, which belong to the same or closely related market sectors of beauty, personal hygiene and perfumery, or to the related sector of beauty care services, or to related retail, wholesale and promotional services. In particular, that fact allows for some of the positive characteristics of the earlier mark with a reputation to be attributed to the goods and services covered by the mark applied for. The Board of Appeal concluded, in paragraph 81 of the contested decision, that, having regard to the exposure of the relevant sections of the public to the earlier mark with a reputation as regards the goods for which a reputation has been established, and since the existence of a link with the goods and services at issue had been established, there was a likelihood that the use without due cause of the mark applied for could give the benefit of an unfair advantage and lead to free-riding, that is to say, that it is likely that unfair advantage of the distinctive character or the strong reputation of the earlier mark would be taken.
84 First of all, as the Board of Appeal found in paragraph 78 of the contested decision, it is apparent from the evidence produced by the other party to the proceedings before the Board of Appeal of EUIPO, and in particular from the awards obtained for the earlier mark, that the earlier mark enjoys an image of luxury and stability, which the applicant does not dispute.
85 Next, it has been pointed out in paragraph 32 above that the other party to the proceedings before the Board of Appeal of EUIPO had made significant commercial efforts to promote the earlier mark.
86 Furthermore, it has been held in paragraph 75 above that the Board of Appeal was right to find that the relevant public was likely to establish a link between the signs at issue.
87 Lastly, the applicant has not substantiated its claim that, when using the mark applied for in respect of its goods, the public ‘will only establish a connection with the applicant and teachings of the priest Sebastian Kneipp’. As EUIPO correctly maintains, the applicant has not submitted any evidence as to how its mark has been accepted and recognised by EU consumers (see, to that effect, judgment of 21 December 2022, International Masis Tabak v EUIPO – Philip Morris Brands (Representation of a pack of cigarettes), T‑44/22, not published, EU:T:2022:843, paragraph 80). Furthermore, the applicant has not specified how such a link could be established, particularly since the mark applied for does not contain the forename Sebastian, or the surname or company name Kneipp (see, to that effect, judgment of 25 March 2009, L’Oréal v OHIM – SpA Monopole (SPALINE), T‑21/07, not published, EU:T:2009:80, paragraph 41).
88 It follows that the Board of Appeal did not make an error of assessment in finding that, in the present case, there was prima facie a future risk, which is non-hypothetical, that the applicant would take unfair advantage of the reputation of the earlier mark – a reputation which stems from the activities, efforts and investments made by the other party to the proceedings before the Board of Appeal of EUIPO.
89 Second, it is apparent from the case-law that where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (see judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 67 and the case-law cited).
90 In the present case, it should be noted that the Board of Appeal found that the applicant had not claimed that it had due cause to use the mark applied for.
91 Therefore, the applicant cannot validly claim, as due cause for the use of the mark applied for, that it has a personal interest in using the word ‘joy’ to describe and designate its goods. As has been held in paragraph 58 above, the earlier mark has an average degree of distinctiveness and may therefore be regarded as being neither descriptive nor devoid of distinctive character. Consequently, the word ‘joy’ has not become so necessary to the marketing of cosmetic products that the applicant could not reasonably be required to refrain from using the mark applied for (see, to that effect, judgment of 25 March 2009, SPALINE, T‑21/07, not published, EU:T:2009:80, paragraph 43).
92 In the light of those considerations, the use of the mark applied for on which the applicant has relied cannot be regarded as a ground for registration of that mark, given the risk that its use could take advantage of the repute of the earlier mark.
93 It follows that the Board of Appeal did not make an error of assessment in finding that there was no due cause for the use of the mark applied for.
94 In those circumstances, the fourth complaint of the single plea in law and, consequently, the applicant’s single plea in law must be rejected, and the action dismissed in its entirety.
Costs
95 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.
96 Even though the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that oral hearing is convened. Since no oral hearing was held, each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders each party to bear its own costs.
Delivered in open court in Luxembourg on 24 April 2024.
V. Di Bucci | | M. van der Woude |