OPPOSITION No B 3 033 498

Procter & Gamble Holding S.r.L., Viale Giorgio Ribotta 11, 00144 Roma, Italy (opponent), represented by Catherine Montheil, 163 Quai Aulagnier, 92665 Asnières sur Seine Cédex, France (employee representative)

a g a i n s t

Andrzej Zagozda, 15 Avenue De Coumeres, 64100 Bayonne, France (applicant).

On 17/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 033 498 is upheld for all the contested goods and services, namely

Class 3: Toiletries; Cleaning preparations.

Class 5: Dental preparations and articles, and medicated dentifrices; adhesives for affixing prostheses; hygienic preparations and articles; dental preparations and articles; breath-freshening chewing gum for medicinal purposes; medicated toiletry preparations; cooling sprays for medical purposes; reagents for medical use; breath refreshers for medical purposes; hydrogen peroxide for medical purposes.

Class 44: Human hygiene and beauty care; human healthcare services.

2. European Union trade mark application No 17 397 803 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 397 803 for the figurative mark , namely against some of the goods and services in Classes 3, 5 and 44. The opposition is based on Italian trade mark registration No 1 144 850 for the word mark ‘AZ’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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 mark

According to the opponent, the earlier trade mark has a reputation in Italy.

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 29/10/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Dentifrices.

The opposition is directed against the following goods and services:

Class 3: Toiletries; Cleaning preparations.

Class 5: Dental preparations and articles, and medicated dentifrices; adhesives for affixing prostheses; hygienic preparations and articles; dental preparations and articles; breath-freshening chewing gum for medicinal purposes; medicated toiletry preparations; cooling sprays for medical purposes; reagents for medical use; breath refreshers for medical purposes; hydrogen peroxide for medical purposes.

Class 44: Human hygiene and beauty care; human healthcare services.

In order to determine the mark’s 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.

On 28/06/2018 the opponent referred, in particular, to the following evidence, submitted in earlier proceedings, which was duly conveyed to the applicant.

 Report on oral care in Italy, dated June 2014, issued by Euromonitor International (Annex 6): this report indicates that Procter & Gamble Italia SpA was the leading manufacturer in oral care in Italy in 2013 with a 20 % market share through its brands AZ, Oral-B, Kukident and Braun.

 Brand history from the opponent’s website (Annex 7): the brand ‘AZ’ was first launched in 1967 and the goods have been marketed over the years under different variations of this mark, such as ‘AZ15 Gengidentifricio’, ‘AZ Verde’, ‘AZ Uno’, ‘AZ Protezione Gengive’, ‘AZ Denti Sesibili’, ‘AZDent’.

 Report from Mintel Group Ltd showing ‘AZ’ products by Procter & Gamble from 1996 to 2015 (Annex 8).

 Market share: the opponent states that nowadays ‘AZ’ is the third most important brand in the toothpaste market in Italy, and provides market share figures (source: AC Nielsen). ‘AZ’ market share was 13.2 % in 2011–12; 12.8 % in 2012-13; and 12.3 % in 2013-14. Furthermore, the opponent states that for the period from October 2013 to September 2014, unaided brand awareness of ‘AZ’ was 41.2 % (source: GFK BHT).

 Product line-up (Annex 10): the ‘AZ’ toothpaste line includes 23 products divided into 7 ranges (AZ Pro-Expert, AZ Complete, AZ 3D White, AZ Multi Protezione, AZ Idea Natura, AZ Protezione Gengive, AZ Kids).

 Advertising (Annexes 11, 12, 13, 14, 15 and 16): the opponent states that the total annual advertising budget to support the ‘AZ’ trade mark amounts to between EUR 4 000 000 and EUR 5 200 000. This is mainly for advertising on nationwide TV and digital media (evidence is submitted for the 1980s to 2010s). Also included is advertising using many other means, such as print campaigns, outdoor advertising, presentations to journalists, presence at fairs, websites promoting ‘AZ’ products (az-oralb.it, site.azricerca.it, dentalcare.it, etc.), Facebook pages and sponsorship of the Italian fencing team at the 2012 Olympic Games in London.

 Photographs of presence in shops (Annex 19): ‘AZ’ is available in mass-market retailers (mainly hypermarkets, supermarkets and drugstores) and chemists. Examples are Auchan, Carrefour, Conad, Coop, etc. ‘AZ’ is also widely available for purchase via the internet (Annex 20).

It is clear from the evidence that the earlier trade mark, which was first commercialised in 1967, has been subject to long-standing and intensive use, and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by independent sources, and more specifically by the report on oral care in Italy issued by Euromonitor International. The market share figures provided by the opponent (source: AC Nielsen) are considerable, taking into account that the relevant goods, namely dentifrices, are rather cheap goods for mass consumption. The marketing expenditure and market share shown by the evidence unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

Therefore, the Opposition Division concludes that the earlier trade mark has obtained a reputation in Italy for dentifrices in Class 3 prior to 29/10/2017.

b) The signs

AZ
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

A negligible element refers to an element that, due to its size and/or position, is not noticeable at first sight or is part of a complex sign. In the contested sign, the words ‘from’ (depicted inside the letter ‘A’) and ‘to’ (depicted inside the letter ‘Z’) are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration.

The element ‘AZ’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The elements ‘ANDRÉ’ and ‘ZAGOZDA’ of the contested sign will be understood as a name and a surname, respectively. They have a normal degree of distinctiveness. The verbal element ‘LABORATORY’, which is similar to the Italian equivalent laboratorio, will be understood as a building or room where scientific experiments, analyses and research are carried out. Bearing in mind that the relevant goods and services are related to beauty, hygiene, dental and pharmaceutical preparations, this word has limited distinctiveness, if any.

The elements ‘A’ and ‘Z’ in the contested sign, which will both be perceived as the single letter they each represent, and which have a normal degree of distinctiveness, are significantly larger than the remaining verbal elements ‘ANDRÉ’, ‘ZAGOZDA’ and ‘LABORATORY’ (whether these are considered individually or together). Therefore, the letters ‘A’ and ‘Z’ are the co-dominant elements in the contested sign, as they are the most eye-catching.

Visually, the signs coincide in the letters ‘A’ and ‘Z’, being the sole letters of the earlier mark and the co-dominant elements of the contested sign. However, they differ in the fact that those letters are used together in the earlier mark, while they are separated from each other in the contested sign. The signs differ in the remaining, less dominant elements in the contested sign.

Therefore, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AZ’, which are also likely to be pronounced together in the contested sign due to their dominant character and proportional depictions. The pronunciation differs in the sound of the remaining verbal elements in the contested sign, which are all less dominant. Moreover, ‘LABORATORY’ also has limited distinctiveness.

Therefore, the signs are aurally similar to at least a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark is perceived as meaningless, while some concepts are evoked by the contested sign, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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) 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 conflicting signs coincide visually and aurally in the letters, ‘A’ and ‘Z’, which constitute the entire earlier mark and which are the most dominant elements in the contested sign. Despite their different structures and the additional elements in the contested sign, the similarities will not go unnoticed.

The earlier mark, ‘AZ’, has a normal degree of inherent distinctiveness and has obtained, as seen in section a) of this decision, a solid reputation for dentifrices through long-standing and intensive use. It has been on the market for many years and has a high degree of recognition among the relevant Italian public.

The contested goods are:

Class 3: Toiletries; Cleaning preparations.

Class 5: Dental preparations and articles, and medicated dentifrices; adhesives for affixing prostheses; hygienic preparations and articles; dental preparations and articles; breath-freshening chewing gum for medicinal purposes; medicated toiletry preparations; cooling sprays for medical purposes; reagents for medical use; breath refreshers for medical purposes; hydrogen peroxide for medical purposes.

Class 44: Human hygiene and beauty care; human healthcare services.

While some of the contested goods and services might target a professional public, the goods for which the earlier mark is reputed, namely dentifrices, target the public at large. Therefore, it is considered that the professional public targeted by the contested sign is also aware of the reputation of the earlier mark, as they also target users of dentifrices.

The opponent’s dentifrices are closely connected with the contested goods and services. Dentifrices cross the line between cosmetics and medical preparations as they are used for oral health. They are included in the contested toiletries; cleaning preparations in Class 3 and are therefore identical. They are similar to the contested goods in Class 5, as these goods comprise all kinds of dental preparations for medical use or goods used in dentistry. Finally, there is also a connection with the contested hygiene, beauty and healthcare services in Class 44 as the opponent’s dentifrices have similar purposes and are often used to render those services.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

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 that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and 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; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

By using a sign which is highly similar to a brand name already widely known on the market, the relevant public is very likely to make a link between the parties’ signs and the proprietor of the mark applied for will be capable to exploiting that link for the marketing of the goods covered by the mark. The applicant will benefit from the attractiveness of the earlier trade mark ‘AZ’, misappropriating thus its attractive powers and advertising value. This would constitute a clear exploitation and trade upon the reputation of the opponent’s reputed mark and an attempt to transfer the attractiveness to the applicant’s sign. This will lead to unacceptable situations of commercial parasitism where the applicant is allowed to free-ride on the investment of the opponent in promoting and building a goodwill for his mark, as it will stimulate the sales of the applicant’s products to an extent which is disproportionately high in comparison with the size of his promotional investment. This benefit would not be based on the applicant’s merits but solely on the reputation and high distinctive character of the earlier sign in the related territory. Thus, by permitting its registration and subsequent use of the Office would be allowing the applicant to benefit from the goodwill enjoyed by the opponent as a result of its use and promotion of the mark.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36).

Taking into account the contested goods and services in Classes 3, 5 and 44, the relevant public is the public at large and a professional public, and the degree of attention varies from average to high.

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53, 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example, where there is clear exploitation and free-riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark.

The concept of taking unfair advantage concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

The earlier mark has obtained a reputation and has become an attractive and powerful brand in Italy. The evidence submitted by the opponent shows that the earlier mark has a positive image and has built up a certain image, corresponding with certain values, such as reliability and innovation.

As explained in section c) of this decision, considering the reputation of the earlier mark, the visual and aural similarities between the signs, and the fact that the conflicting goods and services are closely connected, the relevant public will make a link between the marks. This link will create an association that will produce a commercial benefit for the applicant as the image of reliability and innovation will be easily transposed to the applicant’s goods and services. Therefore, there is a high probability that the use of the mark applied for may lead to free-riding, that is to say, it would take unfair advantage of the reputation of the earlier mark and the considerable investments undertaken by the opponent to achieve that reputation. The use of the letters ‘A’ and ‘Z’, in a dominant position in the contested sign, might also lead to the perception that the applicant was associated with or belonged to the opponent and, therefore, could facilitate the marketing of the goods and services for which registration is sought.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

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

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 mark. 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 and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground on which the opposition was based.

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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Carlos MATEO PÉREZ

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.