OPPOSITION No B 3 021 998

BeSweet Creations LLC, 3350 NE 12th Avenue, Unit 70710 Oakland Park, 33307 Florida, United States of America (opponent), represented by CMS Cameron Mckenna Nabarro Olswang Posniak i Sawicki sp.K., Emilii Plater 53, 00-113 Warsaw, Poland (professional representative)

a g a i n s t

PLT Group sp. z o.o., UL. Elektoralna 13 /121, 00-137 Warsaw, Poland (applicant), represented by Michał Jędrzejewski, ul. Rogalińska 1/44, 01-206 Warsaw, Poland (professional representative).

On 26/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 998 is upheld for all the contested goods.

2. European Union trade mark application No 17 188 905 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 188 905 for the word mark ‘Jelly Bear Hair’, namely against all the goods in Class 3 (cosmetics; non-medicated cosmetics; cosmetic kits; cosmetics for the use on the hair; make-up preparations; facial wash (cosmetics); washing liquids; cleaning agents for the hands; toothpaste; tooth care preparations; dentifrice; dentifrices; toiletry preparations; cleaning and fragrancing preparations).

The opposition is based on:

 European Union trade mark registration No 15 806 987 for the word mark ‘SUGARBEAR’ (earlier mark 1);

 European Union trade mark registration No 15 466 691 for the word mark ‘SUGARBEARHAIR’ (earlier mark 2);

 European Union trade mark registration No 15 466 717 for the figurative mark (earlier mark 3);

 non-registered trade marks ‘SugarBear’ and ‘SugarBearHair’ used in the course of trade in Belgium, Bulgaria, Czechia, Denmark, Germany, Estonia, the EU, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, and the United Kingdom (earlier marks 4 and 5). In relation to Ireland and the United Kingdom, the opponent invoked these signs as protected by the law of passing off.

In relation to earlier marks 1, 2 and 3, the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. In relation to earlier marks 4 and 5, the opponent invoked Article 8(4) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division finds it appropriate to first examine the opposition in relation to all the goods and services covered by earlier marks 2 and 3 for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not 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 European Union trade mark, the trade mark has a reputation in the 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 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 for refusal of Article 8(5) EUTMR 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: 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) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned 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.

a) Reputation of the earlier trade marks

According to the opponent, earlier marks 2 and 3 have a reputation in the European Union in connection with all the goods and services for which they are registered in Classes 5 and 35.

Reputation implies a knowledge threshold that 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.

In the present case, the contested trade mark was filed on 08/09/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based, inter alia, earlier marks 2 and 3, had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 5: Dietary and nutritional supplements; vitamins; vitamins and vitamin preparations; gummy vitamins.

Class 35: On-line retail store services in relation to vitamins and dietary supplements.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

It is noted that the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. Therefore, the Opposition Division will describe parts of the evidence only in the most general of terms without divulging any such data.

On 23/07/2018, the opponent submitted the following evidence.

Annexes 9-10: (i) one screenshot of the opponent’s brand Instagram profile along with an Instagram graphic showing around 1.6 million followers at the filing date of the contested trade mark application and (ii) screenshots, not dated, of Instagram corporate profiles of other brands (e.g. Shiseido, Lancôme) in the field of beauty care showing a lower number of followers.

Annex 11: (i) seven screenshots of Instagram posts, in English, published by four celebrities and influencers, namely Khloe Kardashian, Kim Kardashian, Vanessa Hudgens and Kylie Jenner displaying the sign ‘SUGARBEARHAIR’ and showing the packaging of gummy vitamins bearing the sign . These screenshots are dated between January and August 2016 (before the relevant date). One sample is shown below.

;

(ii) one screenshot of an Instagram post published by Kim Kardashian, dated after the relevant date and one screenshot of an Instagram post published by Kris Jenner, not dated, displaying the sign ‘SUGARBEARHAIR’ and showing the packaging of gummy vitamins bearing the sign .

Annex 12: an article dated 29/11/2017 and published in Business Insider UK entitled ‘Here are the 10 most-followed Instagram accounts 2017’ showing Kim Kardashian placed fifth in the list with more than 100 million followers.

Annex 13: three extracts from Tegger Media website, including information concerning the audience demographics of three of the influencers/celebrities mentioned in item 11 (i.e. Khloe Kardashian, Kylie Jenner and Vanessa Hudgens) and showing the UK placed second (after the USA) in the list of countries with the highest number followers of said influencers/celebrities with a percentage varying from 12.5 %-16.1 %. These extracts also demonstrate that London has the highest number of followers of Khloe Kardashian and Kylie Jenner in the world, while it has the second highest number of followers of Vanessa Hudgens in the world (after Manila). These percentages are considerably lower with reference to the other countries of the European Union.

Annex 14: one extract from www.socialblade.com, dated 10/05/2018, including the number of followers of the top 100 Instagram profiles, showing the ranking and the number of worldwide followers of four of the influencers/celebrities mentioned in Annex 11. In particular, it demonstrates that (i) Kim Kardashian is the sixth (or fifth according to another piece of evidence submitted) most followed person on Instagram in the world with over 100 million followers; (ii) Kylie Jenner is the eighth most followed person with more than 100 million followers; (iii) Khloe Kardashian is the eighteenth most followed person in the world with around 75 million followers; (iv) Vanessa Hudgens is the fifty-second most followed person in the world with around 28 million followers.

Annex 15: one extract from Google Analytics showing, inter alia, figures concerning the traffic of the corporate website of ‘SUGARBEARHAIR’ brand in Europe from 25/11/2015 to 08/09/2017 (before the relevant date), including the number of users’ sessions as well as transactions and amount of revenues generated by the e-commerce platform. This extract demonstrates a number of almost 1 million users’ sessions in the reference period as well as a significant amount of revenues generated from sales in the UK in the same period. These revenue figures, albeit lower, are substantial in Germany, France and Italy, while they are significantly lower in the other European territories.

Annexes 16-18: (i) several screenshots of Instagram posts in English from celebrities/influencers (e.g. Emily Ratajkowski, Dove Cameron, Sabrina Carpenter and Nathalie Emmanuel) showing the sign ‘SUGARBEARHAIR’ along with the opponent’s goods (gummy vitamins) and/or their packaging bearing the earlier mark . These screenshots, mostly dated before the relevant date, are sometimes accompanied by screenshots of the official Instagram profile of these celebrities/influencers (e.g. Dove Cameron, Laila Loves, Sabrina Carpenter) that displays the number of their followers varying from around 150 000 to 19 000 000, as shown in the sample below.

(ii) one screenshot of the twitter account of the make-up artist Manny Gutierrez (twitter profile Manny MUA), dated 14/05/2018 and a screenshot of one of his tweets dated 25/03/2018 mentioning the earlier mark ‘SUGARBEARHAIR’ in connection with vitamins.

Annex 19: an Instagram screenshot showing the number of posts (around 100 000) tagged with the word ‘sugarbearhair’.

Annex 20: an article entitled ‘Awesome Influencer Campaigns that Caught our Eye – Part 1’ published on 16/02/2017 on the blog www.influencerdb.net, mentioning the success of the strategy used in the promotion of the brand ‘SUGARBEARHAIR’ through the cooperation with famous influencers. In particular, it is said that, as a consequence of this cooperation, ‘the company’s Instagram channel grew constantly and now holds more than a million of followers’.

Annexes 21-22: a graphic showing a number of Facebook followers at the relevant date (around 1 million) and a table including figures (confidential data) concerning the advertising costs on Facebook in the European Union per country showing a substantial amount for the UK. For the other countries of the European Union this amount is significantly lower. Neither of the documents are dated and they do not include any indication of either the source of the documents or of the specific Facebook page or brand concerned.

Annexes 23-25: (i) a sample of 23 YouTube videos including a sponsored video review (with a number of views varying from around 21 000-280 000), in English (with the exception of one), mentioning the sign ‘SUGARBEARHAIR’ and showing the opponent’s goods (gummy vitamins) and/or their packaging bearing the earlier mark . Given that the majority of these videos display the indication that they were published one or two years ago, it is reasonable to consider their date of publication before the relevant date (at least for most of them); (ii) a sample of the results of a YouTube search for the word ‘sugarbearhair’ (performed on 07/05/2018) showing around 7,400 items found. In the sample provided, most of these videos are in English, while a few videos are in other languages (e.g. Italian and Spanish).

Annex 26: (i) a selection of 15 extracts from mainstream press releases published in online newspapers/magazines or websites (e.g. Elle, Cosmopolitan, yahoo.com), in English, dated before the relevant date (with the exception of one which was published on the relevant date), mentioning the sign ‘SUGARBEARHAIR’ and/or showing the opponent’s goods (gummy vitamins) and their packaging bearing the earlier mark , which are often associated with the celebrities/influencers who endorsed the opponent’s ‘SUGARBEARHAIR’-branded vitamins on social media; (ii) data extracted from alexa.com and concerning the audience demographics and traffic of these online sources, showing that the audience is mainly composed of readers from the United States of America and from the United Kingdom. As shown in these extracts, a certain percentage, albeit significantly lower, is composed of readers from other countries of the European Union. In particular, the extracts refer to the following articles:

1. ‘Instascam or Deal – Sugarbearhair’, published on 14/02/2017 at www.yahoo.com (with around 7 million readers in the UK per month).

2. ‘This Balmain Hair Extension Machine Is the Craziest Thing We’ve Seen in a Minute’, published on 25/04/2017 at www.yahoo.com (with around 7 million readers in the UK per month).

3. ‘Youth in a bottle? As stars like Jennifer Aniston credit vitamins with keeping their skin wrinkle-free, experts detail the beauty supplements to add to YOUR routine’, published on 26/04/2016 at www.dailymail.co.uk (with around 5 million readers in the UK per month).

4. ‘Lifestyles of the Instagram-famous! Selena Gomez is named as social media’s top A-list earner, commanding USD 550 000 for ONE paid-for post (but Kendall, Kylie, Beyoncé and Rihanna can do pretty well, too)’, published on 20/07/2016 at www.dailymail.co.uk (with around 5 million readers in the UK per month).

5. ‘How to repair and revive post-sun hair’, published on 08/09/2017 at www.telegraph.co.uk (with around 5 million readers in the UK per month).

6. ‘Summer Essentials: The Ultimate 2017 Guide’, published on 28/06/2017 at www.buzzfeed.com (with around 3 million UK readers per month).

7. ‘This Lab Found Out What’s Actually in The Kardashian’s Favorite Hair Vitamin’, published on 30/09/2016 at www.buzzfeed.com (with around 3 million UK readers per month).

8. ‘Endorsed on Instagram by a Kardashian, but Is It Love or Just an Ad?’, published on 30/08/2016 at www.nytimes.com (with around 3 million UK readers per month).

9. ‘Average Internet Celebrities Make USD 75 000 Per Instagram Ad and USD 30 000 Per Paid Tweet’, published on 30/08/2016 at www.gizmodo.com (with around 2 million UK readers per month).

10. ‘The Amount Of Cash The Middling Celebs Make On Social Media Will Shock You’, published on 31/08/2016 at www.gizmodo.co.uk (with around 600 000 UK readers per month).

11. ‘I Tried Khloé Kardashian’s Gummy Bear Hair Vitamins for a Month and Here’s What Happened’, published on 12/06/2017 at www.cosmopolitan.com (with around 2 million UK readers per month).

12. ‘The truth about hair vitamins – experts exclusively have their say’, published on 26/06/2016 at www.ok.co.uk (with around 1 million UK readers per month).

13. ‘What’s the Deal with Gummy Supplements? Are They Safe?’, published on 06/09/2016 at www.people.com (with around 1 million UK readers per month).

14. ‘I Tried Khloé Kardashian’s Gummy Bear Hair Vitamins for a Month and Here’s What Happened’, published on 12/06/2017 at www.elle.com (with around 600 000 UK readers per month).

15. ‘Instagram Made Us Do It: We Tried the Hair Vitamins Kylie Jen Co. Swear By’, published on 13/07/2016 at www.eonline.com (with around 600 000 UK readers per month).

Annex 27: extracts from the website www.alexa.com concerning a comparison of the traffic trends of the online sources mentioned in Annex 26.

Annex 28 (part 1): (i) an extract of Google news search results for the word ‘sugarbearhair’ showing a sample of around 50 news items found (dated before the relevant date) mentioning ‘SUGARBEARHAIR’ and/or displaying the earlier mark in connection with vitamins. These items are mainly in English with the exception of a few of them that are in different languages such as Chinese and Greek; (ii) 27 extracts from blogs and other online sources (including well-known magazines like Grazia or MarieClaire), mostly in English (a few extracts are in Chinese, French, German, and Italian) and mostly dated before the relevant date, mentioning ‘SUGARBEARHAIR’ and/or displaying the earlier mark in connection with vitamins. One example is shown below.

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Annex 28 (part 2): five extracts of marketing press, in English, published before the relevant date, mentioning the opponent’s marketing strategy to promote the brand ‘SUGARBEARHAIR’. One example is shown below.

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Annex 29: internet archive screenshot of the website www.sugarbearhair.com dated back to 01/12/2015, extracted from https://web.archive.org/, showing the signs ‘SugarBearHair’ and in connection to vitamins as well as the product packaging bearing the sign .

Annex 30: articles of incorporation of the opponent’s company Besweet Creations LLC as a limited liability company showing the date of 05/07/2015 as the effective date.

Annex 31: screenshots, not dated, of ‘Sugarbearmoji app’, an iPhone app featuring emojis mostly resembling the opponent’s product, the blue bear-shaped vitamins. No indication concerning the number and demography of users who actually downloaded the app is provided.

Annex 32: an analysis report extracted from Google Analytics concerning the traffic in Europe of the website www.sugarbearhair.com including data such as the number of users, sessions, transactions and revenues per country from 25/11/2015 to 08/09/2017 (before the relevant date). This extract demonstrates a number of almost 1 million users’ sessions in the reference period as well as a significant amount of revenues generated from sales in the UK in the same period. These revenue figures, albeit lower, are substantial in Germany, France and Italy, while they are significantly lower in the other European territories.

Annex 33: a document provided by the opponent, which includes sales figures (confidential data) per country in the European Union from 25/11/2015 to 12/09/2017 (before the relevant date). The figures demonstrate the total net sales generated in the mentioned period displaying significant amounts in the United Kingdom and lower but substantial amounts also in Germany, France, Italy and the Netherlands. Significantly lower amounts are indicated for the other territories in the European Union.

Annex 34: 37 orders of ‘SUGARBEARHAIR’-branded vitamins dated from 25/05/2016 to 08/09/2017 (before the relevant date) displaying delivery addresses spread within the territory of the European Union (i.e. France, Germany, Spain, the Netherlands or the United Kingdom). The opponent also submitted a further 95 orders dated from 20/09/2017 to 07/05/2018 (after the relevant date) relating to the sale of ‘SUGARBEARHAIR’-branded vitamins displaying delivery addresses in France, Germany, Spain, the Netherlands or the United Kingdom.

Annexes 35-36: two extracts from the e-commerce platforms www.sallybeauty.co.uk and www.amazon.co.uk respectively, dated 07/05/2018 and 13/07/2018 (after the relevant date), showing the opponent’s vitamins on sale bearing the sign along with the mention of the sign ‘SugarBearHair’ in the product description. With specific reference to the extract from www.amazon.co.uk, the users’ questions and reviews are also dated after the relevant date.

Annex 37: an extract from www.influenster.com, dated 11/7/2018, in English, showing users’ reviews and Q & A related to the ‘SUGARBEARHAIR’-branded vitamins. Although it displays a number of around 300, only 10 reviews are shown. Furthermore, these reviews are dated after the relevant date with the exception of one. Regarding the Q & A section, it encompasses four items mostly dated after the relevant period and some of them are clearly written by users from the United States.

Annex 38: an extract from www.fakespot.com, dated 11/7/2018, in English, stating that 80 % of reviews of ‘SUGARBEARHAIR’-branded vitamins are high quality.

Annex 39: a selection of copycat products that appear to be offered for sale in territories outside the European Union (such as India, New Zealand, South Africa and the United States of America). For example:

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Annex 40: three screenshots of the applicant website www.jellybearhair.com showing vitamin product packaging bearing the sign ‘Jelly Bear Hair’ as shown in the picture below.

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Annex 41: internet archive screenshots of the website www.sugarbearhair.com dated back to 19/12/2015, extracted from https://web.archive.org/, showing the signs ‘SugarBearHair’ and in connection to vitamins as well as the product packaging bearing the sign .

Annex 53: (i) article in Polish (along with English translation) entitled ‘Hair growth gel – A new trend in cosmetics’ published on 09/12/2017 at www.allaboutlife.pl stating ‘The company “Sugar Bear Hair” and “Jelly Bear Hair” released a new product - hair growth jelly beans From now on, eating these favorites by many teddy bears will bring even more benefits’; (ii) article in Polish (along with English translation) entitled ‘Sugar Bear Hair reviews or prepare your hair for frost and wind!’, published on 27/07/2017 at www.poszukujesz.pl, mentioning the applicant’s product as a ‘product that looks deceptively similar to Sugar Bear Hair’.

For the sake of completeness, it must be noted that the opponent also submitted other documents (Annexes 1-8 and 42-52), which are related to the substantiation of other arguments and do not concern the reputation of the earlier rights.

Assessment of the evidence

As already mentioned, the evidence submitted needs to be assessed taking into account the characteristics of the market in question. In this sense, the evidence demonstrates that the commercial activity of the opponent is mainly carried out through its website (www.sugarbearhair.com), although the opponent’s products appear to be available for sale from other e-commerce platforms such as www.amazon.com. The evidence demonstrates that the opponent’s marks target mainly young customers, in particular women, which suggests a niche market within the vitamin and dietary supplements sector.

The evidence also demonstrates that the opponent’s marketing and advertising strategy involves the use of popular social media, in particular Instagram, where the opponent’s products bearing the earlier marks are endorsed by celebrities and influencers through pictures and short messages published on their personal profile pages.

The use of social media platforms to increase brand awareness and recognition is nowadays a common strategy adopted by companies targeting young consumers among which the use of these platforms is massive. The marketing and advertising potential of these social media due to their immediate and far-reaching power is a known fact. Furthermore, the success of this marketing strategy can be largely influenced by the degree of popularity of the celebrities/influencers sponsoring or endorsing the brand, as similarly happens in television or press advertising.

The ‘SUGARBEARHAIR’-branded vitamins have been endorsed on Instagram (before the relevant date), inter alia, by four celebrities, namely Kim Kardashian, Khloe Kardashian, Kylie Jenner and Vanessa Hudgens, who clearly promoted the opponent’s vitamins by showing the product packaging bearing earlier mark 3 , and mentioning the sign ‘SUGARBEARHAIR’ in short messages (e.g. ‘Ever since I started taking two @sugarbearhair a day, my hair has been fuller and stronger than ever!! Even with all the heat and bleaching I do to it!’ or ‘I’m obsessed with @sugarbearhair vitamins!’) and hashtags that pertain to the opponent’s marks.

These celebrities have a very high degree of popularity within the relevant territory, in particular in the United Kingdom, as shown in Annexes 12-14:

(i) Kim Kardashian is the sixth (or fifth according to the article published in Business Insider UK submitted under Annex 12) most followed person on Instagram in the world with over 100 million followers;

(ii) Kylie Jenner is the eighth most followed person with more than 100 million followers, 16.1 % of whom are based in the United Kingdom, with London being the city with the highest number of her followers in the world (around 5 % of the total);

(iii) Khloe Kardashian is the eighteenth most followed person in the world with around 75 million followers, 15.3 % of whom are based in the United Kingdom, with London being the city with the highest number of her followers in the world (around 5 % of the total);

(iv) Vanessa Hudgens is the fifty-second most followed person in the world with around 28 million followers, 12.9 % of whom are based in the United Kingdom, with London being the city with the second-highest number of her followers in the world (after Manila), (around 3.7 % of the total).

Given the indisputable success of Instagram among the target public for the opponent’s products, these figures, in addition to the numerous other evidence of digital marketing initiatives submitted (e.g. Instagram, and YouTube sponsored reviews) involving other celebrities/influencers, demonstrate that the relevant public has been extensively exposed to the earlier trade marks in at least part of the relevant territory, namely in the United Kingdom.

In addition, following the endorsement of these celebrities, the opponent’s vitamins and earlier marks received coverage in press articles published in well-known online magazines and websites such as Cosmopolitan, Telegraph, Elle, The New York Times, Yahoo (before the relevant date with the exception of one published on the relevant date), thus receiving indirect advertising at least in the United Kingdom, where, as shown in the audience demography reports submitted under Annex 26, the number of readers of these magazines and websites is substantial (e.g. around 2 million readers of www.cosmopolitan.com per month and around 5 million readers of www.telegraph.com per month). In these articles, the opponent’s earlier mark 2 ‘SUGARBEARHAIR’ appears in the title (e.g. ‘Instascam or Deal – Sugarbearhair’) and/or in the text of the article (e.g. ‘when Khloé Kardashian first proclaimed her love for the sky blue, teddy-shaped gummy SugarBearHair Vitamins, I was skeptical, but intrigued’), while earlier mark 3 is extensively shown in the numerous pictures published, mainly consisting of the Instagram screenshots mentioned under Annex 11. Furthermore, the opponent’s ‘SUGARBEARHAIR’-branded vitamins are often identified with the celebrity who endorsed them (e.g. ‘This Lab Found Out What’s Actually in The Kardashian’s Favorite Hair Vitamin’ or ‘I Tried Khloé Kardashian’s Gummy Bear Hair Vitamins for a Month and Here’s What Happened’) which demonstrates that, at least part of the significant degree of recognition enjoyed by these celebrities has been successfully transferred to the opponent’s products and earlier marks.

The success of these marketing initiatives and the impact of the indirect advertising of the earlier marks are also confirmed by the figures concerning sales and transactions. In particular, the report of Google Analytics concerning the traffic of the corporate website www.sugarbearhair.com (Annexes 15 and 32) demonstrates a number of almost 1 million UK users’ sessions before the relevant date as well as a significant amount of revenue generated from online sales in the UK in the same period (which may not be disclosed due to the confidentiality request regarding this part of the evidence).

Considering all the above, the evidence submitted demonstrates that the relevant public has been extensively exposed to the earlier trade marks in the relevant market, in particular in the United Kingdom. Although the evidence lacks certain items that are usually relied upon to ascertain the level of recognition of a mark, such as opinion polls and surveys, from the evidence submitted as a whole, it can be inferred that the earlier marks have been subject to intensive use and are generally known in the relevant market, in particular in the United Kingdom.

Furthermore, even in the absence of precise figures concerning the amounts invested in the mentioned social media marketing initiatives, given the popularity of the celebrities involved, as also confirmed by two of the articles submitted under Annex 26 (articles 9 and 10), there is no room for doubt that they are substantial.

Although some of the evidence also refers to other territories of the European Union (e.g. Italy, France, the Netherlands), most of the evidence concerns social media marketing and press coverage in English. Furthermore, the figures concerning the revenues, website traffic, amount of readers of press coverage submitted and demography of celebrities’ followers are significant only in relation to the United Kingdom. Even if the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29, 30). Therefore, the Opposition Division acknowledges that reputation proven in the United Kingdom is sufficient to conclude that the earlier marks have a reputation in the European Union.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier trade mark 2 ‘SUGARBEARHAIR’ and earlier trade mark 3 enjoy a certain degree of recognition among the relevant public, for the following goods in Class 5 for which the opponent has claimed reputation:

Class 5: Dietary and nutritional supplements; vitamins; vitamins and vitamin preparations; gummy vitamins.

By contrast, there is no reference to the remaining on-line retail store services in relation to vitamins and dietary supplements in Class 35. Although the opponent demonstrated that it mainly sold its vitamin products through an online platform within its corporate website www.sugarbearhair.com, this online retail activity has to be considered an ancillary service and not an independent service provided to others.

b) The signs

Earlier mark 2 SUGARBEARHAIR Earlier mark 3	Jelly Bear Hair
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, unfair advantage established for only part of the relevant public of the European Union is sufficient to reject the contested application. As the reputation of the earlier signs has been established on account of the recognition of the earlier marks in the United Kingdom, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in this territory.

As correctly argued by the applicant, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Nevertheless, when perceiving a verbal sign, consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The common verbal elements ‘BEAR’ (meaning ‘a large, strong wild animal with thick fur and sharp claws’), and ‘HAIR’ (meaning, inter alia, ‘the fine threads that grow in a mass on one’s head’) will be easily perceived both in the earlier marks, where they are conjoined to the additional meaningful element ‘SUGAR’, and in the contested sign, where they constitute separate elements from the additional first element ‘Jelly’. Since the common element ‘BEAR’ has no meaning related to the goods in question, it has an average degree of inherent distinctiveness. The common element ‘HAIR’ indicates that some of the goods concerned are intended to improve the appearance of the hair (including facial hair) or to treat it. As such, this element is non-distinctive for most of the goods in question (e.g. vitamins, cosmetics, make-up preparations) while it has an average degree of inherent distinctiveness for other goods (e.g. toothpaste; tooth care preparations; dentifrice).

The relevant public will easily perceive the meanings of the additional verbal elements. In particular, ‘SUGAR’ will be associated with, ‘a sweet substance that is used to make food and drinks sweet’, and ‘Jelly’ with ‘anything having the consistency of jelly’.

Since the elements ‘SUGAR’ and ‘Jelly’ are allusive to the composition or consistency, which the goods in question might have, they are weak.

Given the syntax of the marks, the defining word in the marks is the second element ‘BEAR’, as the elements ‘SUGAR’ and ‘Jelly’, in addition to being weak, merely serve as modifiers thereof. In particular, when perceiving the earlier marks, the public will in all likelihood perceive an expression ‘SUGARBEAR’ which vaguely alludes to a ‘bear’ that is made from sugar and thus is very sweet, even in a laudatory, affectionate way. In the contested sign, the two elements combined on a conceptual level bring to mind a ‘bear’ which has the consistency of jelly. For these reasons, the relevant consumers are likely to attribute more trade mark significance to the element ‘BEAR’, both in the earlier marks and in the contested sign.

In all the marks, these ideas are conjoined with the common element ‘HAIR’ that retains its literal meaning and, as above explained, is non-distinctive for some of the goods.

Earlier mark 3, along with the verbal element ‘SUGARBEARHAIR’ in rather standard characters, also encompasses a figurative element depicting the basic shape of a bear’s head in white against a light blue background. While the stylisation of the verbal element is rather basic, and therefore incapable of diverting the consumers’ attention from the words themselves, the figurative element resembling a bear’s head does not evoke any concept related to the goods in question and it has an average degree of inherent distinctiveness, as is the case with the verbal element ‘BEAR’. The blue rectangle in the background is a basic geometric shape — non-distinctive in itself — the purpose of which is to carry and highlight the other, more important elements of the sign. There is no element that could be considered clearly more dominant than other elements in this earlier mark.

Conceptually, all of the signs will be associated with the concept of a ‘bear’ that is of sugar in the earlier marks or that has the consistency of jelly in the contested sign. The concept of ‘bear’ is also reinforced, in earlier mark 3, by the figurative element depicting the basic shape of a bear’s head. Therefore, the signs are similar to the extent that they share the concept of the same type of animal — ‘bear’ — and they differ in the meaning of the additional weak verbal elements ‘SUGAR’ and ‘Jelly’ defining/describing this animal. The signs also evoke the concept introduced by the common element, ‘HAIR’, which is distinctive only in relation to some of the contested goods.

Therefore, the signs are conceptually similar at least to an average degree.

Visually and aurally, the signs coincide in the letters (and in the sounds) of the common verbal elements ‘BEAR’ and ‘HAIR’, which are reproduced in the same order, being the second and the third verbal element in the earlier marks and in the contested sign respectively. However, the signs differ in the letters (and sounds) of their additional elements ‘SUGAR’ (which is conjoined to the verbal elements ‘BEAR’ and ‘HAIR’ in the earlier marks) and ‘Jelly’ (which stands separately in the contested sign).

Despite these differing elements, the signs present a very similar structure and rhythm, since they will be perceived as composed of three verbal elements, two of which are identical and placed in the same order. Furthermore, the initial elements ‘SUGAR’ and ‘Jelly’, albeit different, have the same number of letters and syllables and as such they will not have a significant impact in the overall structure and rhythm of the marks.

The signs also differ visually in the stylisation (which is limited to the adoption of a rather standard character and a light blue background) and in the figurative element of earlier mark 3, which is distinctive. However, when a trade mark is composed of both verbal and figurative elements, the former should, in principle, be considered to have a greater impact than the latter, because the average consumer will more easily refer to the goods or services in question by their name than by describing the figurative elements or stylisation of the trade mark.

Therefore, taking into account the impact of the common elements ‘BEAR’ (which is distinctive for all the goods and to which consumer will attribute more trade mark significance) and ‘HAIR’ (which is distinctive only for part of the goods), and the reduced impact of the differentiating weak elements, the signs are visually and aurally similar at least to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. 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 an 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) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 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 (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 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.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The signs are visually and aurally similar at least to a low degree and conceptually similar at least to an average degree. As to the term ‘SUGARBEARHAIR’, constituting earlier mark 2 in its entirety and the sole verbal element of earlier mark 3, it is as a whole distinctive in relation to the goods for which repute is claimed, despite the presence of one weak and one non-distinctive element. Additionally, the opponent has demonstrated that its earlier marks have a reputation for dietary and nutritional supplements and, in particular, vitamins.

The contested goods are the following:

Class 3: Cosmetics; non-medicated cosmetics; cosmetic kits; cosmetics for the use on the hair; make-up preparations; facial wash (cosmetics); washing liquids; cleaning agents for the hands; toothpaste; tooth care preparations; dentifrice; dentifrices; toiletry preparations; cleaning and fragrancing preparations.

Even though the goods for which the earlier marks are reputed are dietary and nutritional supplements (and, in particular, vitamins) and the contested goods are, inter alia, cosmetics; non-medicated cosmetics; cosmetic kits; cosmetics for the use on the hair; make-up preparations; facial wash (cosmetics), the connection is evident from the perspective of the relevant public. Both sorts of goods can have the same purpose — to improve one’s skin or hair appearance. The opponent’s goods achieve this result by means of taking vitamins, for instance, in the form of pills. The applicant’s goods do so by the application of, for instance, creams, hair conditioner, or make-up for eyebrows and eye-lashes.

Similar considerations apply for the contested toiletry preparations, which are used for taking care of one’s body. They can be enriched with vitamins to improve one’s skin or hair appearance.

With reference to the contested toothpaste; tooth care preparations; dentifrice; dentifrices from the perspective of the relevant public a link will easily be established, since vitamin preparations are dietary or nutritional supplements which can be used together with or, as an alternative to, these contested goods (which maybe also enriched with specific vitamins) for the prevention of teeth illnesses. They therefore can serve the same purpose, preservation of teeth health, and target the same public. In addition, consumers would have the chance to find the products bearing the signs in the same establishments, pharmacies or chemist’s shops, where both the contested goods and the goods for which the earlier marks are reputed can be sold.

As regards the contested washing liquids; cleaning agents for the hands; cleaning and fragrancing preparations, the following considerations have to be taken into account. Washing liquids are detergents used for washing dishes or other household purposes. The same applies to cleaning preparations, a category which primarily covers goods for household use, but not for personal use. Cleaning agents for the hands refer to non-cosmetic preparations for topical cleaning of the skin. As regards fragrancing preparations, they refer to air fragrances that are pleasant-smelling liquids or other articles, such as incense and potpourri, used to make rooms, indoor spaces, bed linen smell nice by providing fragrant, pleasant odours. The goods at issue concern related market sectors, even if the connection between them is not obvious.

Dietary and nutritional supplements are commonly sold not only in pharmacies and chemists, but also in ‘parapharmacies’ and dedicated sections in supermarkets. A huge variety of products is usually offered in such shops ranging from personal hygiene, cosmetics, diet foods and vitamins, hair care, baby products, to the non-pharmaceutical elements of a first aid kit, for example tweezers, cotton wool, and mild sanitising preparations, such as hand cleaning products with disinfecting properties. It is not uncommon that room and linen fragrances are also sold in these shops, since they are increasingly used as ‘well-being’ products that improve the ambience etc. Therefore, the contested fragrancing preparations and cleaning agents for the hands can be found in the same points of sale as the opponent’s goods.

Although the contested washing liquids; cleaning preparations are even further removed from the opponent’s goods, these goods are sold in household sections of supermarkets and groceries stores which also usually have a ‘parapharmacy’ section, as explained above. Notwithstanding the facts that these goods do not satisfy the same needs of the public as the opponent’s goods, it can be reasonably assumed that the public will mentally register them in the same commercial environment. Moreover, it can very well happen that these goods are purchased on the same occasion.

On the basis of these factors and highlighting the coincidence in the relevant public (i.e. the public at large), it cannot be denied that consumers, when encountering the contested mark, may make a mental ‘link’ between the signs in relation to all of the contested goods.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following.

 Use of the contested mark will result in an economic benefit for the applicant without due cause since the contested sign takes unfair advantage of the earlier mark’s distinctiveness and repute as a result of a substantial time and cost investment.

 Use of the contested mark will dilute the earlier trade mark’s ability to identify a single undertaking, and is likely to devalue the image and the prestige that the opponent has acquired among the public due to its promotional efforts.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of, and be detrimental to, the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

Reference is made to the opponent’s line of argument in which it claims that the similarities between the signs and the goods will result in the applicant being able to benefit economically from the efforts made by the opponent in building up a reputation of its marks.

The Opposition Division has already established a link given the similarities between the signs, the proximity of some of the goods at issue on account of the same, or a very similar, purpose of these goods (i.e. beauty- and body-care) or the fact that they belong to rather close market sectors (i.e. those which supply products for one’s wellbeing in general), and also on the basis of the certain degree of reputation in the European Union for dietary supplements and in particular vitamins. These considerations concern the following contested goods: cosmetics; non-medicated cosmetics; cosmetic kits; cosmetics for the use on the hair; make-up preparations; facial wash (cosmetics); cleaning agents for the hands; toothpaste; tooth care preparations; dentifrice; dentifrices; toiletry preparations; fragrancing preparations.

Therefore, the image (expressing values such as beauty, youth and trendiness) and the recognition connected to the earlier marks could be transferred to the contested mark. This would mean that the contested sign could benefit from an immediate degree of recognition due to association with the earlier marks, even without significant promotional/marketing efforts. Furthermore, the advantage for the applicant, in using the contested mark, lies also in the fact that it might attract some consumers who would otherwise look for the opponent’s vitamins, thus diverting part of the customer base away from the opponent.

The applicant argues that the opponent did not prove any unfair advantage or detriment and that the opposition under Article 8(5) EUTMR should be rejected.

As already mentioned above, detriment or unfair advantage may be only potential in opposition proceedings; the proprietor of the earlier mark is not required to demonstrate actual and existing harm to its mark, however it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’. The opponent should at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur.

The opponent did put forward a coherent line of argument demonstrating that unfair advantage is likely to occur (see pages 27-30 of the opponent’s observations submitted on 27/12/2017). In addition, as shown in an article submitted in Annex 53, the opponent demonstrated that due to the similarity of the marks, the public can believe that the applicant’s and the opponent’s goods are even produced by the same undertaking.

Furthermore, as shown by the opponent, the reproduction in a product packaging of a sign including the distinctive element, ‘bear’, along with the element ‘HAIR’ of the earlier marks, with the adoption of a colour resembling that of the earlier mark 3 (see Annex 40), makes realistic the risk that the reputation of the earlier marks is transferred to the contested sign, which would lead to an unfair advantage (free-riding).

Consequently, the applicant’s argument must be set aside as unfounded.

Having examined the opponent’s arguments, the Opposition Division found them persuasive and concludes that, in view of the exposure of the relevant public to the opponent’s earlier marks in relation to the goods for which a reputation has been found, there is a probability that the use without due cause of the contested sign for part of the contested goods, namely cosmetics; non-medicated cosmetics; cosmetic kits; cosmetics for the use on the hair; make-up preparations; facial wash (cosmetics); cleaning agents for the hands; toothpaste; tooth care preparations; dentifrice; dentifrices; toiletry preparations; fragrancing preparations may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character and the repute of the earlier trade marks.

However, with respect to the remaining contested goods, the use of the contested trade mark is unlikely to take unfair advantage of the distinctive character or the repute of the earlier marks and, therefore, the examination of the opponent’s claims continues in relation to the other types of injury.

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality that may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 39).

Reference is made to the opponent’s line of argument in which it claims that, given the similarity of the marks, the use of the contested sign for the contested goods will cause detriment, inter alia, to the repute of the earlier marks since such use can be adverse to the image created by the opponent over the years as a result of a substantial time and cost investment.

As the opponent demonstrated and as it can be inferred from the documents submitted, its trade marks convey a particular image connected with values such as beauty, youth, trendiness, glamour. The creation of such a positive image has also been supported by several social media marketing initiatives involving influencers, mainly composed of young and attractive women, who are popular among the target public.

Whether the use of the contested sign for the remaining contested goods, namely washing liquids and cleaning preparations, can potentially provoke a negative mental link in consumer’s mind is a highly subjective matter. However, in this assessment, the Opposition Division will only consider the general nature and characteristics of the goods per se. In this respect, the Opposition Division notes that these contested goods originate from an industry that is generally connected with household cleaning activities which are in clear contrast to the values conveyed by the earlier trade marks. The opponent’s reputed dietary supplements and vitamins are intrinsically related to the concept of beauty, youth and glamorous lifestyle, whereas the contested goods are products linked to routinely necessary activities that might be considered unpleasant and unattractive among the mainstream public. Therefore, such use could damage the idea that the earlier marks convey to its public and thus could have a serious unfavourable impact on their repute.

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35).

In this regard, as explained above, although the cleaning preparations and dietary supplements/vitamins satisfy very different needs of the public, the public can mentally register them in the same commercial environment. Furthermore, in addition to visiting physical premises, consumers are often given the alternative option of making purchases online. In this case, it cannot be ruled out that some of the public that is already familiar with the earlier marks and is very aware of its values may be involuntarily exposed to the contested mark ‘Jelly Bear Hair’ (used in connection with household cleaning products).

Therefore, given a certain degree of reputation of the earlier marks and the opponent’s line of argumentation regarding the possible injury as a result of the contested mark’s presence on the market, which, contrary to the applicant’s view, has to be deemed coherent and sufficient, the Opposition Division concludes that the use of the contested mark for the remaining contested goods, namely washing liquids and cleaning preparations, is likely to be detrimental to the repute of the earlier marks.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade marks.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade marks or it would be detrimental to the repute of these marks. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that an unfair advantage or detriment to the repute established for only part of the relevant public of the European Union is sufficient to reject the contested application (as set out in section b) of this decision, the assessment is focused on the public in the UK), there is no need to analyse the remaining part of the public.

As the earlier European Union trade mark registrations No 15 466 691 and No 15 466 717 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful on the basis of the ground of Article 8(5) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) and Article 8(4) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Rosario GURRIERI

María del Carmen COBOS PALOMO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.