OPPOSITION Nо B 3 060 461

 

Just Italia S.p.A, Via Cologne, 12, 37023 Grezzana, Fraz. Stallavena (VR), Italy (opponent), represented by Mondial Marchi S.r.l., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative) 

 

a g a i n s t

 

JustIngredients Limited, Units 2-3a Tabernacle Road, Wotton-Under-Edge GL12 7EF, United Kingdom (applicant), represented by Michelle Anne Ward, Woodfield House, Llanishen, Chepstow NP16 6QS, United Kingdom (professional representative).

On 17/08/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 060 461 is upheld for all the contested goods.

2.	European Union trade mark application No 17 891 812 is rejected in its entirety.

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

REASONS

 

On 30/07/2018, the opponent filed an opposition against some of the goods of European Union trade mark application No 17 891 812 (figurative mark), namely against all the goods in Classes 3 and 5. At that point, the application also covered goods in Classes 29 and 30, but these were divided out into separate European Union trade mark application No 17 964 693, registered on 04/10/2018. Consequently, at the moment of taking the present decision, the opposition is directed against all the goods of the contested trade mark application.

The opposition is based on Italian trade mark registration No 1 432 463 ‘JUST’ (word mark), and on Italian trade mark registration No 1 485 111 (originally No 623 537) (figurative mark).

The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, as listed in ‘Reasons’ hereinabove.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

 

In order to determine the period of use, it is noted that the contested European Union trade mark application, with the filing date of 25/04/2018, claims priority from first filing in the United Kingdom (UK trade mark No 3 269 761). The claim concerns all of the goods covered by the contested application. Having examined the claim, the Opposition Division is satisfied that the substantive requirements are fulfilled, and priority is validly claimed.

The date of priority of the contested European Union trade mark application is 10/11/2017. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in Italy from 10/11/2012 to 09/11/2017 inclusive.

 

The evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

1) Italian trade mark registration No 1 432 463 ‘JUST’ (word mark):

 

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. 

Class 44: Hygienic and beauty care for human beings or animals.

2) Italian trade mark registration No 1 485 111 (figurative mark):

Class 3: Cosmetics namely, bath products, relaxing activators, essences, products made from seaweed, essential oils, conditioners, body creams and facial, milk and sunscreens, tanning oils and creams, cellulite products in bulbs and in the form of creams, shampoos, hair lotions, perfumes, nail polish, soaps, liquid soaps, deodorants, toothpastes, bleaching preparations and other substances for laundry, cleaning, polishing, scouring and abrasive preparations, fabric softeners.

 

However, for reasons of procedural economy, the Opposition Division considers it appropriate to focus the assessment of proof of use on earlier Italian trade mark registration No 1 485 111.

On 02/10/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 07/12/2020 to submit evidence of use of the earlier trade marks. On 20/11/2020, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

List of evidence

The evidence to be taken into account is the following:

Enclosure 1a-c: Nine press articles and a reference to a book, providing information about the company Just Italia Spa. The evidence is in Italian, with a partial translation into English.

The article published on 23/03/2013, on L’Arena, titled ‘Cosmetics, € 137 million the Just Italia’s turnover’, describes the market of ‘cosmetics sold at home’. The article states that Just Italia has distributed 10 million products and has organised more than 530 thousand parties or meetings with consumers. It is mentioned in the article that the cosmetics distributed by Just Italia are ‘ten lines of products that include treatments for the face and body, essential oils, skin care creams, anti-cellulite products, sunscreens and other products for the home’. The article also states that the goods are made in Switzerland by the manufacturer Just International AG.

The article published on 30/12/2013, on L’Arena, presents a table titled ‘The first 631 company of the Verona system’, where Just Italia Srl ranked in the 50^th position, with more than 120 million euro turnover in 2012.

The article published in December 2013, on Italiapiū, titled ‘Invest in beauty, health and well-being. Safety and quality from Switzerland arrive in the Italian’s homes with the party of Just Italia’ contains images showing some cosmetics and essential oils bearing the ‘JUST’ sign, for example like this:

The article published on 02/06/2015, on L’Arena, titled ‘Just, turnover at 142 million and now aims at Spain’ presents the opponent’s business, that is to say house-to-house selling, both from an economic and social perspective.

The article published on 30/12/2015, on L’Arena, presents a table titled ‘The first 500 company of the Verona system for turnover’, where Just Italia Srl ranked in the 48^th position, with more than 136 million Euro turnover in 2014.

The article published on 19/03/2014, on Verona Economy, titled ‘For the 30 years of Just Italia more than 3000 guests in the Grezzana headquarters’, describes a series of events dedicated to the Italian sales force to celebrate the company’s 30^th anniversary. Just Italia is referred to as ‘a leading company in the house-to-house selling of Switzerland natural cosmetics’. The article describes Just Italia’s headquarters, mentioning that it is there where the company’s management, financial, commercial, marketing and logistics strategies are developed, and that the activities of the headquarters are flanked by 21,500 sales representatives, present in Italy, who promote and distribute the Swiss products in meetings at the consumers’ homes (called ‘parties’), and that a training program is available to the sales representatives. The article also touches upon the production of the goods themselves, by mentioning Just’s innovations to meet the growing needs of the international market (Just Italia manages, in addition to the domestic market, also those of Austria, Slovenia and Croatia), that the plant in Switzerland would have doubled its production capacity by 2015 thus strengthening its research activities etc.

The article published on 08/02/2017, on L’Arena, titled ‘Just Italia reaches 150 million and relaunches on its agents’, provides information on the turnover of Just Italia made in 2016, in Italy, Austria, Slovenia and Spain.

The article published on 17/12/2018, on ‘www.ilsole24ore.com’, titled ‘Just Italia, an analogue company in the omnichannel era’, states that, in 2019, Just Italia would celebrate 35 years of uninterrupted growth in the field of direct home sales of cosmetics with a network of 25 thousand sales representatives and a range of over 80 products.

Enclosure 2a-f: Large selection of purchase orders and invoices covering the years from 2013 to 2018 (i.e. dated from 28/01/2013 to 11/09/2017 insofar as 2017 is concerned, and up to 10/12/2018 insofar as 2018 is concerned). They were issued by the opponent’s company to numerous physical persons, namely the sales representatives who are in charge of the sale of the goods, based in many towns and regions in Italy (e.g. Misinto, Piossasco, Verona, Carpenedolo, Verucchio, Pollenza, Barberino di Mugello, Velletri, Pollena Trocchia, Trieste, Udine, Folgaria, Brindisi etc.). The orders and invoices are in Italian, and the opponent has provided a translation of the templates used. Although the descriptions of the goods have not been translated, each product is referenced by a code. The physical quantities of the goods sold are low, usually only a couple of units per product type, yet each transaction involves various types of goods. The monetary values of the transactions are usually several hundreds of euro, while sometimes only one hundred. On all of the orders and invoices, the following sign is displayed in the header:

Enclosure 3: Order proposal, dated 09/05/2016. The document is in Italian, and a translation into English is submitted. The document lists the goods for which an order can be placed. The goods are grouped into the following categories: ‘Hot baths’ (e.g. Marine bath, Alpine bath, Relax bath, Shower gel), ‘Essential oils’ (e.g. Eucalyptus, Lemon oil, Lavender oil, Orange oil), ‘Dermoactive creams’ (e.g. Tea tree cream, Calendula cream, Lavender cream, Hand cream), ‘Anti-cellulite line’ (e.g. Peeling, Day gel, Night cream), ‘Specific line’ (e.g. Anti-insect lotion, Lip balm, Hand-washing gel, Lightening cream), ‘Man line’ (e.g. Shaving gel, After shave gel), ‘Dermoprotective lotions and sprays’ (e.g. Balsam body, Reactivating oil, Mauve milk, Deo plus, Deo intimate), ‘Foot line’ (e.g. Foot salt Pedisal, Foot cream Pedicream), ‘Solar line’ (e.g. Solar milk 6, Solar milk spray 15, Solar face cream 30), ‘Face line Infiore’ (e.g. Intense day cream, Intense night cream, Eye and lips contours, Serum), ‘Hair line’ (e.g. Softening shampoo, Regenerating shampoo, Purifying shampoo), and ‘Home line’ (e.g. Mobile cleaner, Detergent Nr Plus, Lavanda spray). The goods are referenced by codes, the packaging volume and price. The prices range from 13 Euro to 49 Euro, depending on the product category. Next to the opponent’s name and contact details, the following sign is displayed:

Enclosure 4: Images, undated, showing the outer packaging of two types of cosmetic preparations, namely juniper cream and thyme cream:

Besides product descriptions and codes, the following information is displayed on the packaging:

Enclosure 5a-d: Images showing promotional material, namely wall calendars for the years from 2013 to 2016, 2018 and 2019. The calendars display the ‘JUST’ sign and contain promotional information in relation to the goods, all as described above in enclosure 3. The evidence also contains invoices issued by the typographer that printed the calendars, dated from 2012 to 2015, 2017 and 2018. The total numbers of the calendars printed for each year, as indicated on these invoices, are in the hundreds of thousands.

Enclosure 6a-d: Images showing promotional material, namely agendas for the years from 2013 to 2015, 2017 and 2018, and the covers of the magazine Naturalmente Just, dated from September 2013 to September 2016. In addition, the editions of December 2013 and December 2015 are submitted in full, with a partial translation from Italian to English. The promotional materials display the ‘JUST’ sign as shown in enclosure 3. The evidence also refers to other types of promotional material in the form of scarves, spray bottles etc., accompanied by invoices for personalising these items with the ‘JUST’ logo, referred to in the thousands in each invoice, during 2017 and 2018.

Enclosure 7a-d: Invoices, dated from 2013 to 2016, issued by the typographer that printed various promotional materials, including ‘general catalogues’, ‘products details’, ‘order proposals’, ‘brochures’ etc. The numbers of the items printed are in the thousands.

Enclosure 8: Catalogue, undated, in Italian, with a partial translation into English, showing the following categories of goods: ‘Essential oils’, ‘Dermoactive creams’, ‘Face Line Infiore’ and a number of specific goods within each of these categories, including their images and codes. The catalogue displays the ‘JUST’ sign as shown in enclosure 3. Furthermore, the same sign (or its slight variations) is affixed on the products and their packaging in the following forms:

Enclosure 9: Selection of evidence aimed at showing use of the ‘JUST’ sign on Facebook, covering the period from January to September 2017. The sign is displayed in the account as follows:

The sign is also visible on the product images shown on Facebook, in the same manner as shown in enclosure 8.

Enclosure 10: Decision of the Italian Trade Mark Office of 01/12/2015, with a partial translation into English. It is stated in the decision that, based on two market surveys, it was noted that the products of the company Just Italia Srl, belonging to the personal care / hygiene sector, hold a considerable share of the national market, especially taking into account the fact that to advertise, distribute and sell the same, the company makes use of the alternative channel of word-of-mouth, meetings at home, parties etc. It is added that, according to the evidence submitted, in December 2005 and in June 2012, the company Just Italia Srl was the third largest producer and supplier of products in question after other companies that also use the ordinary marketing channels. It was concluded that the ‘JUST’ trade mark enjoyed a high degree of distinctiveness.

Preliminary remarks

In its observations of 10/02/2021, the applicant argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. In particular, the applicant points out that in enclosure 1, containing the press articles, the first of these articles has only been translated in part, and the article from Italiapiū dated December 2013 has not been translated at all. In addition, neither the pages of the catalogue in enclosure 8, nor the Decision of the Italian Trade Mark Office in enclosure 10 have been translated in full, but only in part, and so the translated elements cannot be considered in the context of the whole. In a similar way, the applicant criticises the promotional materials submitted in enclosures 5 and 6. The applicant requests that the opponent be required to provide full translations in line with Article 24 EUTMIR in respect of all documentation they wish to rely upon in these proceedings.

However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the abovementioned documents that have not been translated in full, but only in part, and insofar as they are considered relevant for the present proceedings, which is not necessarily so in relation to each and every press article in enclosure 1, it is considered that, in the present circumstances, the partial translation provided by the opponent is sufficient to enable the Opposition Division to assess the evidence in its entirety, and that the applicant’s request is exaggerated. With respect to the catalogue in enclosure 8, the Opposition Division finds its content self-explanatory when read in conjunction with the other items of the evidence, for example the order proposal in enclosure 3 and its translation. The Decision of the Italian Trade Mark Office in enclosure 10 by definition cannot be considered a decisive piece of evidence since it was taken on the basis of evidence that is neither known nor relevant to the present proceedings. As regards the promotional materials in enclosures 5 and 6, it is noted that the opponent did submit partial translations of the most relevant parts of these items of the evidence. In any event, such evidence is circumstantial, and on its own it would not alter the outcome of the present assessment.

All in all, the Opposition Division considers that there is no need to request a full translation of the abovementioned evidence and, therefore, the applicant’s request is rejected.

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark under analysis is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Assessment of the evidence

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

The evidence in its entirety shows that the place of use is Italy. This can be inferred from the language of the documents, the locations mentioned in the press articles, the addresses of the sales representatives shown on the purchase orders and invoices, as described in the list of evidence above. Therefore, the evidence relates to the relevant territory.

As regards the time of use, most of the evidence is dated within the relevant period (i.e. from 10/11/2012 to 09/11/2017).

It is admittedly true that part of the evidence in enclosure 2 post-dates the relevant period. There are 30 purchase orders and invoices that pertain to 2018 meaning that they all show sales transactions after the relevant period. Nevertheless, it has to be borne in mind that over 80 of the purchase orders and invoices submitted fall within the relevant period.

With respect to the fact that there is hardly any evidence pertaining to the beginning of the relevant period and that none of the invoices submitted by the opponent covers the period from 10/11/2012 to 27/01/2013 (i.e. the first invoice is dated 28/01/2013), it must be recalled that use need not have been made throughout the period of 5 years, but rather within the five years. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52). Furthermore, the time gap in the present case is only slightly more than two months, which is insignificant.

As regards the applicant’s argument that part of the evidence is undated, such as the packaging samples and the catalogue (enclosures 4 and 8), it is recalled that material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other pieces of evidence that are dated (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 33). Here, a combined reading of the abovementioned items of the evidence that are admittedly undated, and the evidence that is dated within the relevant period, such as the press article published in December 2013, on Italiapiū, the promotional material in the form of wall calendars, agendas and magazines (enclosures 1, 5 and 6) allows the Opposition Division to examine the evidence as a whole and determine the relevant factors of use, particularly nature of use.

It is, therefore, considered that the evidence relates to the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

 

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

 

The purchase orders and invoices in enclosure 2, read in conjunction with the order proposal in enclosure 3 and the catalogue in enclosure 8, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It is clearly shown that numerous sales transactions took place in the years from 2013 to 2017. For each of the years from 2013 to 2016, the opponent submitted around 15 invoices and purchase orders, and for the year 2017 it submitted 27 invoices. Moreover, the Opposition Division notes the opponent’s argument that the submitted invoices are a mere selection and do not represent the entire sales carried out under the mark at issue. This can be inferred from the non-consecutive numbering of the invoices.

The abovementioned invoices demonstrate the movement of the goods from the opponent to physical persons, i.e. its sales representatives who market the goods to end consumers in a house-to-house selling business model. The turnover figures of these subsequent sales transactions, as indicated in the press articles in enclosure 1, are significant, notwithstanding the relatively low commercial volumes of the individual transactions and the moderate prices of the goods themselves.

Furthermore, it is clear that use of the sign was not merely token. On the contrary, the evidence shows use of the ‘JUST’ sign in order to create or preserve an outlet for the goods put on the market by the opponent.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark under analysis.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The applicant argues that the opponent is a retailer of the goods which are in fact manufactured by a third party, namely the Swiss company Just International AG. The applicant emphasizes that the retail of third-party goods is a Class 35 service, and the opponent has claimed no earlier rights in relation to such services. The applicant also argues that the trade marks in use on the packaging are in fact those of another undertaking, Ulrich Justrich Holding AG, a statement that is supported by printouts from the EUIPO eSearch database showing European Union trade mark registrations No 10 450 741 and No 153 809, and international registration No 831 061 designating the European Union, for the following signs:

The applicant asserts that, although it is not at all uncommon for an undertaking to have their products manufactured by a third party under a manufacturing contract and to have their brands applied by the manufacturer as part of that contract, in the present case, the packaging samples in enclosure 4 clearly show that the products are marked with the branding of the manufacturer, i.e. the Swiss company, and that the opponent is merely listed as an importer and distributor.

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services … The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive’, namely it cannot be considered to be used as a trade mark (11/09/2007, C‑17/06, Céline, EU:C:2007:497; 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156).

In the present case, however, the Opposition Division is satisfied that the proof of use establishes a clear link between the use of the ‘JUST’ sign and the specific goods directly referenced in the evidence, in a way that a sufficient link can be ascertained between the goods and the person responsible for their marketing, namely the opponent.

Notwithstanding the applicant’s arguments, the Opposition Division notes that the evidence clearly shows the ‘JUST’ sign being affixed on the goods at issue. This can be ascertained on the basis of, inter alia, the packaging samples and the product images in the catalogue, in enclosures 4 and 8. Irrespective of the fact that the product packaging indeed indicates that the opponent is the importer of the goods that were manufactured by another entity, it cannot be left out of sight that, from the consumers’ perspective, the badge of origin displayed on the goods is the trade mark ‘JUST’, and rights in such a trade mark have been relied upon by the opponent in the present opposition proceedings.

This finding must be considered to prevail over the circumstances described by the applicant with respect to the methods used for distributing the goods, the ownership of other trade marks comprising the word ‘JUST’, or the opposition proceedings between the applicant and the company Ulrich Justrich Holding AG before the United Kingdom Intellectual Property Office, and the evidence and conclusions reached in those proceedings.

Rather, what matters in the present assessment is whether the actual forms of use shown in the evidence are broadly equivalent to the earlier mark under analysis.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The evidence submitted by the opponent refers to the following signs:

Registered form	Actual use Enclosure 2	Actual use Enclosure 3	Actual use Enclosure 4	Actual use Enclosure 8	Actual use Enclosure 8

The applicant claims that the form of use evidenced by the opponent in their proof of use does not match the logo format covered by the earlier mark under analysis. The Opposition Division finds that, whilst there are some differences between the sign as registered on the one hand, and the actual forms of use on the other hand, as shown in the table above, these differences are likely to go unnoticed by the average consumer.

The most important and distinctive element of the sign as registered is the verbal element ‘JUST’. The stylisation of the verbal element, limited to an italicised font, is very slight and the figurative elements are purely decorative and not distinctive on their own. It is acknowledged that the word element in the sign’s registered form is depicted in a way that interacts, to a certain degree, with the figurative elements. Nevertheless, the figurative elements, whether perceived as an oval whose left and right sides are partially blocked by the verbal element, or as arches above and below the verbal element, serve as mere carriers of the word. Therefore, the figurative elements of the sign as registered play only a minor role.

Admittedly, the actual forms of use feature some differences in their graphical representations, as shown for example in the purchase orders and invoices, the order proposal and – most importantly – in the catalogue (enclosures 2, 3 and 8). Specifically, instead of a partial oval shape, or two arches, there is an oval sweeping border around the word leaving the right-hand side open, and the border itself is significantly softer when compared to the sign’s registered form. Nevertheless, since these differences are confined to purely decorative elements and are not striking, they do not affect the distinctive character of the sign as registered.

The applicant points out that the word ‘ITALIA’ does not appear anywhere in the actual forms of use. The Opposition Division considers that, from the consumers’ perspective, the word ‘ITALIA’ is directly descriptive of, inter alia, the territorial scope of availability of the goods and is, therefore, non-distinctive. Furthermore, due to its small size and marginal position, this element clearly has a secondary visual role in the overall impression produced by the sign. Based on these findings, the omission of the word ‘ITALIA’ does not alter the distinctive character of the sign as registered (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

The applicant also argues that, in some forms of use, in the top right-hand corner there is a white cross on a background of a different colour, and that the conceptual impact of the different logos is quite noticeable, as the attempt to make a reference to ‘Italy’ with use of the word ‘ITALIA’ has been replaced with a cross, in an entirely different location, making a clear and unmistakable connection with Switzerland. The Opposition Division notes in this regard that, irrespective of whether the relevant public perceives the cross device in the sign as a link to Switzerland which reduces the element’s distinctiveness as the public may associate this with the place where the goods were manufactured, or whether this device is perceived as a decoration which again diminishes its trade mark significance, the cross device plays only a minor role due to its small size and position in the configuration of the sign. Therefore, this addition is not capable to alter the distinctive character of the sign’s registered form.

In view of the above, the evidence shows that the mark has been used in accordance with its function and as acceptable variations of its registered form, within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to establish genuine use of the earlier mark under analysis during the relevant period in the relevant territory. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods on which the opposition is based.

 

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

 

In the present case, the evidence clearly shows genuine use of the trade mark for a range of essential oils on the one hand, and facial and body creams on the other hand, as can be established on the basis of a combined reading of the documents evidencing the sales, the order proposal that lists the assortment of the goods, the product packaging samples and the catalogue (enclosures 2, 3, 4 and 8). These goods correspond to the following goods covered by the earlier mark under analysis:

Class 3: Essential oils, body creams and facial creams.

The Opposition Division notes that the specification of the goods covered by the earlier mark is the following: cosmetics namely, bath products, relaxing activators, essences, products made from seaweed, essential oils, conditioners, body creams and facial, milk and sunscreens, tanning oils and creams, cellulite products in bulbs and in the form of creams, shampoos, hair lotions, perfumes, nail polish, soaps, liquid soaps, deodorants, toothpastes, bleaching preparations and other substances for laundry, cleaning, polishing, scouring and abrasive preparations, fabric softeners. Generally, the term ‘namely’ is used in lists of goods to show the relationship of individual goods to a broader category. Here, such an interpretation would lead to the conclusion that essential oils and body creams and facial creams are sub-categories of cosmetics. That would be incorrect insofar as essential oils are concerned (i.e. essential oils are considered similar to cosmetics, but not identical to them). Therefore, for the avoidance of doubt as to the scope of protection in relation to essential oils, and since the mention of the broader category of cosmetics does not alter the scope of protection in relation to body creams and facial creams, account will only be taken of the goods that are expressly listed.

Furthermore, although there are other types of cosmetic and household cleaning products mentioned in the evidence, for the purposes of the present assessment it is considered sufficient to conclude that genuine use has been proven in relation to the abovementioned categories of goods.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

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.

 

Proof of use has been assessed in relation to earlier Italian trade mark registration No 1 485 111. The examination of the opposition continues on the basis of this earlier right.

 

a) The goods

 

Following the assessment of proof of use in relation to earlier Italian trade mark registration No 1 485 111, the goods on which the opposition is based are the following:

 

Class 3: Essential oils, body creams and facial creams.

After the limitation requested by the applicant on 10/09/2019, and considering that the opposition has been maintained, the contested goods are the following:

 

Class 3: Henna; aromatherapy oils; almond oil; essential oils; aromatic oils; natural essential oils; blended essential oils; aromatic essential oils; pot pourri.

Class 5: Medicinal herbs; extracts of medicinal herbs; pollen as a dietary supplement; gums and resins for medicinal use; medicinal oils; Chinese herbs; Chinese medicinal herbs; supplements; capsules; herbal capsules; tinctures.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

In its observations, the applicant notes that the opponent did not submit evidence or arguments to support the finding of similarity between the goods at issue, and asserts that there is no similarity between some of the goods in Classes 3 and 5. However, the Opposition Division recalls that the degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it (16/01/2007, T-53/05, Calvo, EU:T:2007:7, § 59).

Another point raised by the applicant is that it does not sell or manufacture end products; rather, its business is aimed at manufacturers and individuals who like to make their own home made beauty products such as face masks and oil blends for beauty and relaxation purposes. To support these statements, the applicant submits evidence showing the background to its business, the nature of its products and the way in which it uses its brand. However, it must be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s arguments and evidence submitted in this regard must be set aside.

 

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

 

The contested aromatherapy oils; almond oil; essential oils; aromatic oils; natural essential oils; blended essential oils; aromatic essential oils are identical to the opponent’s essential oils in Class 3, either because these goods are identically contained in both lists, or because the contested goods are included in, or overlap with, the opponent’s goods.

The contested henna is a cosmetic dye. Such goods are commonly available in retail outlets offering natural body and beauty care products, including the opponent’s essential oils in Class 3. The goods satisfy the needs of the same public which can expect that they are manufactured under the control of the same entity. Therefore, they are similar.

The contested pot pourri is a perfumed pleasant-smelling mixture of dried petals and leaves used to make homes and indoor spaces smell nice by providing fragrant, pleasant odours. The opponent’s essential oils are fragrant liquid aroma compounds that are used, inter alia, as fragrances for rooms. Such goods can originate from the same manufacturers and are commonly found in the same places of sale. Furthermore, they target the same relevant public. They are, therefore, similar.

Contested goods in Class 5

The contested medicinal herbs; extracts of medicinal herbs; gums and resins for medicinal use; medicinal oils; Chinese herbs; Chinese medicinal herbs; capsules; herbal capsules; tinctures belong to the categories of pharmaceutical preparations and natural remedies.

It should be noted that the abovementioned capsules are a broad term that, without any restriction to the contrary, must be considered to encompass ‘filled’ capsules that contain, in principle, any sort of active ingredients or pharmaceutical preparations. Therefore, these goods must be considered to be identical to pharmaceutical preparations (see, to this effect, 30/09/2015, T-720/13, KARIS / CARYX et al., EU:T:2015:735, § 70, 75-76, 80). The abovementioned herbal capsules are considered to include capsules filled with herbal substances for medicinal use.

The contested pollen as a dietary supplement; supplements are, or include, substances prepared for special dietary requirements.

In view of the above considerations, all of the contested goods in this class are used for the purpose of treating or preventing a disease. Although the opponent’s body creams and facial creams in Class 3 are non-medicated cosmetic preparations, they serve a similar purpose to that of the contested goods in this class, insofar as for example they can all be used for treating skin conditions. Such goods are commonly sold in the same places that offer pharmaceuticals and natural remedies, as well as dietary supplements, for example pharmacies and drug stores. The goods under comparison target the same relevant public which expects that they are manufactured under the control of the same undertaking, or an economically-linked undertaking. Therefore, all of the contested goods in this class are similar to the opponent’s body creams and facial creams in Class 3.

b) Relevant public — degree of attention

 

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

 

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

 

The relevant public’s degree of attention varies from average to relatively high, depending on the specialised nature, price and other characteristics of the goods purchased, such as the impact they may have on one’s health.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. For the same reasons, a relatively high degree of attention on the part of the public is found also in relation to dietary supplements.

However, goods such as essential oils and cosmetics are mass consumption products that generally do not imply a particularly high purchase involvement, and for those goods the public’s degree of attention is considered average.

 

c) The signs

 

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).

The earlier mark features the word ‘Just’, depicted in an italicised, but otherwise standard font. The word is meaningless in the Italian language. Regardless of whether the word’s meaning (in English) will be grasped by a part of the public in Italy, it has no concrete meaning in relation to the relevant goods and is, therefore, distinctive to an average degree (07/04/2020, R 1765/2019-5, JST COSMETICS (fig.) / Just ITALIA (fig.) et al., § 31).

The other elements comprised in the earlier mark have already been described in the Proof of use section of this decision above (see the assessment in relation to ‘nature of use’). Reference is made to the assertions given in relation to the lack of distinctiveness of the word ‘ITALIA’ and the figurative elements of the earlier mark, as well as the secondary visual impact of the word ‘ITALIA’. Notwithstanding the fact that the verbal element ‘Just’, together with the figurative elements surrounding it, are the co-dominant (i.e. visually, the most eye-catching) elements of the earlier mark, the weight that the figurative elements have in the comparison of signs is very low.

The contested sign features the words ‘JUST INGREDIENTS’, written in a standard font, and the word ‘TRADE’ depicted in white against yellow, although quite small in comparison to the words ‘JUST INGREDIENTS’ above it. The Opposition Division accepts the applicant’s argument that the word ‘TRADE’ in the sign will not be understood by the majority of the relevant public, as it is neither a basic English word nor resembles its equivalent in Italian, ‘commercio’. That results in this element being distinctive in relation to the goods at issue. Nevertheless, considering the size, position and lighter colours of the element ‘TRADE’, the words ‘JUST INGREDIENTS’, depicted in bold black letters, are the co-dominant elements in the contested sign.

The Opposition Division does not accept the applicant’s argument that the word ‘INGREDIENTS’ is the dominant element of the contested sign. Despite the fact that the word ‘INGREDIENTS’ is much longer than the word ‘JUST’, both words are depicted in the same colour and font. Moreover, they are placed over two lines, and it can be reasonably assumed that consumers will attribute more importance to the word that appears on the top line. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader.

The words ‘JUST INGREDIENTS’ do not form a semantic unit in the Italian language, although the English word ‘INGREDIENTS’ will be understood by the relevant public due to its closeness to the Italian equivalent term, ‘ingredienti’. This word refers to, inter alia, the components of a mixture. Bearing in mind that the quality or other objective characteristics of the relevant goods in Classes 3 and 5 are usually determined by their ingredients, whether active, organic, plant-based etc., and since consumers are used to make their purchasing decision on the basis of the ingredients of a cosmetic preparation, medicinal product or any other of the goods in question, the distinctiveness of the term ‘INGREDIENTS’ is weak. That is to say, from the consumers’ perspective the term ‘INGREDIENTS’ does not have the same degree of distinctiveness as that of the term ‘JUST’, distinctive for the relevant goods for the same reasons as described above in relation to the earlier mark.

It cannot be ruled out that part of the public in the relevant territory perceives the contested sign’s words ‘JUST INGREDIENTS’ as an expression in English, to which the English word ‘TRADE’ is added. Nevertheless, there is a significant, non-negligible part of the relevant public which will not grasp the English meaning of the words ‘JUST’ and ‘TRADE’.

Since a likelihood of confusion for only part of the relevant public in the pertinent territory is sufficient to reject the contested application, and to avoid analysing several scenarios in the comparison of signs, the Opposition Division proceeds on the basis of the part of the public for whom the words ‘JUST’ and ‘TRADE’ are meaningless and for whom the contested sign does not convey a semantic unit.

The applicant argues that the different graphical means used to depict the signs put sufficient distance between them. Whilst it is true that the stylisations of the signs under comparison are very different, the impact that these elements have on the relevant public’s perception of the signs is lesser than that of the signs’ verbal elements, especially considering the lack of distinctiveness of the figurative elements of the earlier mark and the simple stylisation used in portraying the contested sign.

Visually, the signs coincide in the word ‘JUST’, albeit depicted in different manners in each sign. Although the signs differ in the additional elements as established above, they are incapable to counteract the strong similarity resulting from the common element, ‘JUST’. It is the most distinctive and otherwise important verbal element of the earlier mark, and the first distinctive verbal element of the contested sign. In both signs, the common word plays a visually co-dominant role.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters forming the word ‛JUST’, present identically in both signs. As regards the word ‘ITALIA’ in the earlier mark, part of the public is likely to omit it when referring to the earlier trade mark aurally, because this term is non-distinctive and visually secondary. Although the contested sign differs from the earlier mark insofar as the aurally relevant – and admittedly much longer – element ‘INGREDIENTS’ is concerned, its weak distinctiveness must be weighed in the comparison. The presence of the word ‘TRADE’, albeit distinctive in the contested sign, creates a point of aural difference. Nevertheless, that element is the third and last one in the overall composition of the contested sign and its impact is accordingly lesser than that of the coinciding element, ‘JUST’.

Therefore, the degree of aural similarity between the signs varies from average to above average, depending on whether the term ‘ITALIA’ is pronounced in the earlier mark or not.

 

Conceptually, neither of the signs has a clear meaning as a whole for the relevant public under analysis. The common element, ‘JUST’, is meaningless, as is the additional term ‘TRADE’ in the contested sign. It is true that the differentiating words, ‘ITALIA’ in the earlier mark and ‘INGREDIENTS’ in the contested sign, evoke the concepts as set out above, thus rendering the signs not conceptually similar. Nevertheless, the differentiating concepts are of limited distinctiveness, or none at all. This reduces the weight that the conceptual difference will have on the consumers’ perception of the signs.

 

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

 

d) 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.

Neither in the notice of opposition, nor within the time limit given to the opponent to submit further facts, evidence and arguments for completing the opposition (which expired on 17/11/2020, as communicated to the parties on 20/11/2018 and 02/12/2019), did the opponent explicitly claim that the earlier marks on which the opposition is based are particularly distinctive by virtue of intensive use or reputation.

It was only on 20/11/2020 (i.e. on the same day when the proof of use was filed in reply to the applicant’s request), that the opponent stated that the evidence submitted on that date is proof of the enhanced distinctive character of the earlier marks and explicitly requested the Opposition Division to take into account also the enhanced distinctiveness of the earlier marks. Moreover, the opponent pointed out that this fact had been recognised by the Italian Trade Mark Office, the decision of which was submitted as enclosure 10 of the evidence.

For the sake of clarity, it is noted that in its last submissions of 28/04/2021, the opponent explained that the batch of evidence filed as proof of use was identical to the other batch of evidence aimed at showing enhanced distinctiveness, both submitted on the same day.

On 08/12/2020, the Office forwarded the evidence filed by the opponent on 20/11/2020 to the applicant and invited the applicant to submit its comments. On 10/02/2021, the applicant filed its observations, stating that the opponent had failed to present the necessary information to make a case for a claim of enhanced distinctiveness.

Be that as it may, in the present case and as will become apparent in the following section of this decision, the opponent’s claim concerning enhanced distinctiveness of the earlier marks, whether admissible or not, is irrelevant to the outcome of the opposition. It follows that, for reasons of procedural economy, neither the evidence filed by the opponent to prove its claim of enhanced distinctiveness nor the applicant’s arguments in this respect have to be assessed in the present case.

Consequently, the assessment of the distinctiveness of the earlier mark under analysis will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear meaning for any of the goods in question from the perspective of the relevant public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark, as stated above in the section on Proof of use and section c) of this decision.

 

e) Global assessment, other arguments and conclusion

The contested goods are identical or similar to the goods covered by earlier Italian trade mark registration No 1 485 111, namely the earlier right on which the present assessment is focused. The relevant goods are directed at the public at large and at business customers whose degree of attention varies from average to relatively high in relation to the purchases in question. The earlier mark is endowed with an average degree of inherent distinctiveness which affords it a normal scope of protection.

As regards the signs under comparison, as set out in detail in section c) of this decision, there is an average degree of similarity between them on the visual level, and from the aural perspective the degree of similarity varies from average to above average. Although the signs are not conceptually similar for the relevant public under analysis, the impact of the differentiating concepts present in each sign should not be overestimated, due to their limited distinctiveness or complete lack of distinctiveness, as previously covered.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Here, on account of the distinctive verbal element, ‘JUST’, being immediately identifiable in both signs, and given the reduced impact of the differentiating elements in the signs, it is highly conceivable that the relevant public will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

This finding is not called into question by the fact that the relevant public’s degree of attention may be relatively high in relation to some of the goods at issue. Bearing in mind the principle that the evaluation of likelihood of confusion implies some interdependence between the relevant factors, the sufficiently strong similarity between the signs on the visual and aural levels, viewed in conjunction with the fact that the goods at issue are either identical or similar, counteracts the potentially heightened degree of the public’s attentiveness.

Considering all the above, there is a likelihood of confusion on the part of the public for whom the words ‘JUST’ and ‘TRADE’ are meaningless and for whom the contested sign does not convey a semantic unit. Given that a likelihood of confusion for significant part of the relevant public of the relevant territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 485 111. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark under analysis, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent, under the circumstances described in section d) of this decision. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, since the opposition is successful on the basis of some of the goods covered by earlier Italian trade mark registration No 1 485 111 in relation to which the Opposition Division established that genuine use had been proven, it is unnecessary to continue with the examination of the proof of use in relation to the remaining goods on which the opposition is based, as that would have no impact on the outcome.

As earlier Italian trade mark registration No 1 485 111 leads 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 right invoked by the opponent, namely Italian trade mark registration No 1 432 463 ‘JUST’ (word mark) (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). It is, therefore, unnecessary to examine the evidence of use filed in respect to this earlier mark and the goods and services that it covers.

As mentioned above, in order to support its arguments, the applicant refers to previous opposition proceedings before the United Kingdom Intellectual Property Office, between the applicant and a third party, Ulrich Justrich Holding AG. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Furthermore, the previous case referred to by the applicant is not relevant to the present proceedings. This is because the conflicting parties are not the same. Moreover, account must be taken of the difference in the relevant territories that determines how the signs are perceived by the consumers and has a decisive impact on the outcome of the case. Therefore, the applicant’s arguments submitted in this regard must be set aside.

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

 

 

Christophe DU JARDIN

Solveiga BIEZA

Agnieszka PRZYGODA

 

 

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.