OPPOSITION No B 2 431 719

Parfums Christian Dior, Direction Juridique, 33, Avenue Hoche, 75008 Paris, France (opponent), represented by Riccardo Frediani, Parfums Christian Dior, 33, Avenue Hoche, 75008 Paris, France (employee representative)

a g a i n s t

Natur S.r.l., Via Mauro Macchi 10, 20124 Milano (MI), Italy (applicant), represented by Bugnion S.P.A., Via Pancaldo 68, 37138 Verona, Italy (professional representative).

On 20/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 431 719 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 122 321, namely against all the goods in Class 3 and some of the goods in Class 5. The opposition is based on French trade mark registration No 94 536 564. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 3: Soaps; perfumery, essential oils, cosmetics.

The contested goods are the following:

Class 3: Abraders; essential oils and aromatic extracts; tailors’ and cobblers’ wax; cleaning and fragrancing preparations; animal grooming preparations.

Class 5: Hygienic preparations and articles.

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 3

Essential oils are contained in both lists of goods and are, therefore, identical.

The opponent’s soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since soap is used for cleaning purposes, it is identical to the contested cleaning preparations.

Aromatic extracts, fragrancing preparations are included in the broader general category of the opponent’s perfumery and the goods are, therefore, identical.

Animal grooming preparations is a very broad category of goods which comprises several items and, therefore, overlaps with the opponent’s perfumery.

The word abraders refers to cleaning agents with abrasive properties, including abrasive preparations which can also be used on the body. These goods are similar to the opponent’s soaps, as the goods have the same purpose and nature, and they can coincide in their end users and in their distribution channels.

Tailors’ and cobblers’ wax are used for waxing thread in the production/repair of clothing and footwear. Their nature and main purpose are completely different from those of any of the opponent’s goods in Class 3. They do not have the same distribution channels and are neither in competition with nor complementary to each other. The goods are, therefore, dissimilar.

Contested goods in Class 5

The contested hygienic preparations and articles have a low degree of similarity to the soaps of the earlier trade mark in Class 3 because they have the same distribution channels and the same end users.

2. The signs

J’ADORE	ADORAMI
Earlier trade mark	Contested sign

The relevant territory is France.

Visually, the marks coincide in the letters *ADOR*, present in both signs; they differ in the letters and characters ‘J’****E’ of the earlier mark and in the letters ‘****AMI’ of the contested sign.

Aurally, the marks coincide in the letters *ADOR*, present in both signs, which will be pronounced in an identical manner. As the letter ‘e’ in the earlier mark will not be pronounced, the signs differ in the pronunciation of the letters ‘J’****’ of the earlier mark and ‘****AMI’ of the contested sign. The signs differ in the number of syllables, as the earlier sign will be pronounced in two syllables, whereas the contested sign consists of three syllables.

Conceptually, while the public in the relevant territory will perceive the earlier sign as ‘I adore’, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. In this respect, the opponent’s argument that both words refer to the first person singular of the verb ‘adore’ is simply untrue, as this is not the case in the French language, which is the one relevant to these proceedings.

As seen above, there is a certain visual and aural similarity in the signs on account of some letters that the signs have in common in the middle of the words; however, the beginnings and endings of the contested signs are different and the signs are not conceptually similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 trade mark has a reputation in France for perfumery. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 18).

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The opponent provided a very thorough account of the history of the trade mark ‘J’ADORE’ and submitted the following evidence:

• Exhibit 7: advertising:

  • an article in Cosmétique magazine 2004

  • an article in Cosmétique magazine 2005

  • an article on Parfums-tendances-inspirations.com

  • an article on Comopolitan.fr 2011

  • an article on Metronews.fr 2012

  • an article on Huffingtonpost.fr 2012

  • an article on Challenges.fr 2014

  • an article on Challenges.fr 2015;

• Exhibits 8 and 9, which concern the opponent’s revenue for the goods sold in 2012 and 2013, have been requested to be kept confidential;

• Exhibit 10: an Annual Report for 2012;

• Exhibit 11: an Annual Report for 2013;

• Exhibit 12: promotional investments made;

• Exhibits 13 and 14, which deal specifically with the advertisement and promotion of the mark in France, have been requested to be kept confidential;

• Exhibit 15: examples of advertisements from fashion magazines published in France:

• Vogue, December 2007

• Numéro, May 2008

• Vogue, December 2008

• Marie, France May 2009

• Vogue, June-July 2009

• Femmes, July-August 2009

• Elle, November 2009

• Madame Figaro, November 2009

• Madame Figaro, May 2010

• L’ Express Styles, September 2010

• Air France Magazine, September 2011

• Marie Claire, October 2011

• Les Echos

• L’ Express Styles, May 2012

• Grazia, November 2012

• Cosmétiquemag, December 2012

• Grazia, January 2013

• Grazia, May 2013

• Grazia, December 2013

• Gala, September 2014

• Gala, October 2014

• Gala, October 2014

• Gala, December 2014;

• Exhibits 16, 17 and 18 contain examples of advertisements from fashion magazines published in Belgium, the United Kingdom and Italy, respectively;

• Exhibit 19 concerns the advertising campaign with the actress Charlize Theron and contains the following:

  • an excerpt from the book Stars in Dior

  • an article from adweek.com (September 2011)

  • an article from adweek.com (September 2014);

• Exhibit 20 consists of printouts of stills from the television advertisement featuring the actress Charlize Theron;

• Exhibit 21 consists of printouts of stills from the television advertisements that are part of the advertising campaigns featuring the actresses and models Charlize Theron, Carmen Kass and Tiiu Kuik;

• Exhibit 22 contains examples of J’ADORE on www.dior.com;

• Exhibit 23 contains screenshots of the Dior Facebook page showing the ‘likes’ endorsement;

• Exhibit 24 contains screenshots of the J’ADORE advertising campaign on the Dior YouTube channel;

• Exhibits 25, 26, 27, 28, 29 and 30 contain decisions issued by different jurisdictions (including OHIM and the Boards of Appeal) which confirm the reputation of the earlier trade mark.

Although not all of the evidence submitted concerns the relevant territory, when evaluated as a whole, it is evident that the earlier trade mark has been subject to a long-standing and intensive use and is generally known in France, where it enjoys a consolidated position among the leading brands.

The opponent has requested that the expenditure made in advertising and the figures concerning turnover be kept confidential vis-à-vis third parties, and, therefore, specific figures cannot be made public; however, it can be stated that both sets of figures are over several million euros and contribute to the appreciation that the threshold of knowledge of the mark is high among the relevant public. Furthermore, the mark has been advertised extensively not only in magazines, but also through television, and these media campaigns feature some prominent actresses and models. Moreover, the mark has been widely used on social media, and various jurisdictions have deemed its reputation proven on account of data contained in documents very similar to those listed above.

As a clarification, it must be mentioned that the reputation concerns, primarily, perfumes, as the evidence for items other than perfumery is scarce.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

Although the opponent has shown that the earlier trade mark enjoys a reputation for perfumes, and taking into account the fact that some of the goods are identical or similar, the difference between the signs is too great to lead consumers to confuse the origin of the goods or to think that they originate from economically related undertakings. In effect, as one of the signs has a meaning and the other does not, consumers will not perceive the signs as similar from a conceptual perspective. Furthermore, although the signs have some letters in common and are, therefore, partly similar from a visual and aural point of view, these letters are placed in the middle of the marks, which is the part that consumers tend to forget more easily. The signs have very distinctive beginnings and ends, as the earlier mark contains the first person singular pronoun ‘J’ and the contested sign includes the letters ‘-AMI’ as its ending, which is uncommon in French.

In view of this reasoning, the Opposition Division concludes that there is no likelihood of confusion on the part of the public, and the opposition filed under Article 8(1)(b) CTMR must be rejected.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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 contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

2. Reputation of the earlier trade mark

The reputation of the mark has been evaluated in section d) of this decision. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

According to established case-law, the existence of a link between signs is necessary for the type of injuries described in Article 8(5) CTRM to occur. In the case at issue, it has been explained above that, although the marks are visually and aurally linked on account of the presence of some letters in both of the signs, their beginnings and ends are completely different. Furthermore, whereas the earlier sign has a clear meaning, the contested mark does not. Consequently, even if some of the goods are identical or similar, and in spite of the reputation of the earlier mark for perfumes, the Opposition Division considers that it is not likely that consumers will be reminded of the earlier reputed mark when encountering the contested one. Since the earlier mark will not be brought to mind by consumers upon perception of the contested sign, there is no link between the signs and, therefore, in the absence of this link there is no risk that the contested trade mark may take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Accordingly, the opposition filed under Article 8(5) CTMR must be disregarded.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.