On the 24th of April 2024, the General Court of the European Union (the “GCEU” or the “Court”), ruled in the case of Kneipp GmbH vs European Union Intellectual Property Office (“EUIPO”) (Case T-157/23), upholding the decision of EUIPO’s Second Board of Appeal (the “Board of Appeal”) to reject the application of Kneipp GmbH (the “Applicant”) for the registration of the word mark ‘Joyful by Nature’ as an EU trademark.

Background

On the 29th of November 2019, the Applicant applied to register an EU trademark in respect of the word mark ‘Joyful by Nature’ under four main classes of the Nice Classification[1], namely Class 3, covering cosmetics, toiletries, bath, beauty and skin care products, and perfumery, Class 4, covering perfumed candles and scented candles, Class 35, covering marketing and promotion services and Class 44 covering human hygiene and beauty care.

Fashion company Jean Patou opposed this registration, claiming that it had earlier rights, including an EU word mark ‘JOY’ registered back in 2016 in terms of Class 3 of the Nice Classification, which merited protection in terms of Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trademark (the “EUTMR”). The Opposition Division of the EUIPO upheld the opposition on the basis of Article 8(5) of the EUTMR.

The Applicant appealed to the Board of Appeal, which partially annulled the decision of the Opposition Division, but only in so far as it had rejected the application for registration of the word mark in respect of the services falling within Class 35. The Applicant then sought recourse before the GCEU demanding that the decision of the EUIPO be annulled.

Analysis of the Court

Article 8(5) of the EUTMR allows the proprietor of an earlier trade mark (in this case Jean Patou with regards the word mark ‘JOY’), to oppose the registration of a trade mark (in this case the registration of the word mark ‘Joyful by Nature’ applied for by the Applicant) on the basis that it is identical with, or similar to, an earlier trade mark having an existing reputation, and that the use without due cause of the trade mark applied for would result in an unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The GCEU reaffirmed that the conditions set out in Article 8(5) are cumulative and must all be satisfied to benefit from Article 8(5) protection.

1.    The Reputation of the Earlier Trademark

The GCEU determined that for a trademark to have a reputation, it must be known to a substantial part of the public concerned by the goods or services covered by that trademark. In this case the public concerned was deemed to be the general public of the European Union, with France constituting a substantial part thereof (the “Relevant Public”).

The Applicant argued that when assessing the existence of the reputation of an earlier mark, prime importance must be given to the market share held by it. Accordingly, it posited that a low turnover in the years following the registration of the word mark ‘JOY’ by Jean Patou (the “Earlier Mark”) meant that such Earlier Mark was no longer sufficiently well-known to the Relevant Public, and its reputation had drastically decreased. The GCEU held otherwise, arguing that all the relevant facts must be considered, including the intensity, geographical extent and duration of the use of the Earlier Mark, and the investment made to promote it.

It emerged that Jean Patou had made significant efforts to promote the perfume branded with the word mark ‘JOY’, including through advertising campaigns. Such perfume also won prestigious awards back in the 1990s and early 2000s. This was deemed to indicate a longstanding use of the word mark ‘JOY’ and thus, recognition of the mark by the Relevant Public.

The GCEU also rejected the Applicant’s claim that the Earlier Mark did not have a reputation because a significant part of the Relevant Public had not been born when the perfume was winning awards, or were otherwise not aware of the perfume’s history, since such individuals could very easily become aware of the accolades and of the long lasting reputation of the perfume through the media and other sources, citing jurisprudence indicating that even a ‘historical’ mark may retain a certain ‘surviving’ reputation, including where the word mark is no longer in use.

The Court quoted with approval the considerations of the Board of Appeal wherein it was stated 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 over a period of years and cannot simply be switched on and off’.

2.    The Similarity between the Two Trademarks

The GCEU noted that Article 8(5) requires a lesser level of similarity when compared with Article 8(1)(b). Accordingly, for the proprietor of an earlier mark to rely on Article 8(5), such marks need not be so similar that there exists a likelihood of confusion between the two. It is sufficient that the Relevant Public may make a connection between those two marks and establish a link between them.

Consequently, it assessed the overall impression given by the two marks in question, with particular emphasis being placed on their distinctive and dominant elements. In this regard, the GCEU agreed with the Board of Appeal that the two word marks were visually and phonetically similar, as well as being conceptually similar to a ‘certain degree’ given that they both convey the same feeling of great pleasure and happiness.

In determining whether it was likely that the two marks be linked together in the minds of the Relevant Public, the GCEU considered that the existence of such a link must be assessed holistically, considering all relevant factors. Those factors include the degree of similarity between the marks at issue, the nature and similarity of the goods or services and the relevant section of the public covered by each mark, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use.

In this regard, the Court noted that the similarity between the two marks, and the reputation of the earlier mark in respect of perfumery and fragrances in Class 3, had already been established. Moreover, it highlighted that a mark with a reputation necessarily has distinctive character, at the very least acquired through use. Moreover, the goods and services covered by the mark applied for, and the perfumery and fragrances covered by the earlier mark, all belong to the same or adjacent market sectors. Consequently, the Court agreed with the Board of Appeal that there is indeed a likelihood of association between the two marks at issue.

3.    The possibility of unfair advantage being taken of the distinctive character or the repute of the earlier mark

Article 8(5) seeks to prevent third parties from unfairly and unduly leveraging the reputation of an earlier mark by ‘riding on the coat-tails of the mark with a reputation’. In this regard, jurisprudence shows that the proprietor of the earlier mark does not need to show actual and present harm to his mark but must rather present only prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment.

Given the earlier mark’s image of luxury and stability, and in light of the abovementioned considerations, the GCEU concluded that the Board of Appeal had correctly adduced that such risk existed in the case at hand.

The GCEU also concluded that there was no due cause for the use of the mark ‘Joyful by Nature’ by the Applicant, particularly since 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.

Conclusion

In the light of those considerations, the GCEU found that the Board of Appeal had not erred in its decision to refuse the registration of the word mark ‘Joyful by Nature’, thus dismissing the action brought by the Applicant.

Disclaimer: Ganado Advocates is responsible for contributing this law report but was not in any way involved as a legal advisor for the parties in the judgement being covered in this law report. This article was first published in ‘The Malta Independent’ on 08/05/2024.

Author: Kelly Cini

Footnotes

[1] The Nice Classification is an International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement of 1957.