OPPOSITION Nо B 3 083 331

 

LVMH Fragrance Brands, 77, rue Anatole France, 92300 Levallois Perret, France (opponent), represented by Plasseraud IP, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative) 

 

a g a i n s t

 

Ningbo Yinzhou Beauty Storm Cosmetics Co., Ltd., Room804, No.468 Taikang Middle Road, Yinzhou, Null Ningbo, Zhejiang, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª Planta, 28050 Madrid, Spain (professional representative)

On 15/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 083 331 is partially upheld, namely for the following contested goods and services:

 

Class 3: Cleansing milk; shampoos; lipsticks; cosmetics for animals; essential oils; cosmetics; breath freshening sprays; incense; beauty masks; perfumes. Class 21: Make-up brushes; cosmetic utensils; toothbrushes; combs; make-up removing appliances; nail brushes; toilet sponges; powder puffs; eyelash brushes. Class 44: Beauty salon services; pet grooming; massage; Beauty salons; manicuring; visagists' services; Beauty counselling.

2.

European Union trade mark application No 18 004 302 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 14/05/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 004 302 (figurative mark), namely against all the goods and services in Classes 3, 21 and 44. The opposition is based on European Union trade mark registration No 224 949, ‘GIVENCHY’ (word 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 mark on which the opposition is based European Union trade mark registration No 224 949, ‘GIVENCHY’ (word mark).

 

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

  

The date of filing of the contested application is 24/12/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 24/12/2013 to 23/12/2018 inclusive.

  

Furthermore, the evidence must show use of the trade mark  for the goods on which the opposition is based, namely the following:

 

Class 3: Soaps, toilet soaps, perfumery, perfumes, eau de cologne and eau de toilette, essential oils, cosmetic preparations, creams, cleansing milks, lotions, gels for face and body; preparations for the bath, namely bath salts and oils, beauty preparations, foundation creams, mascara, eyeshadows, cosmetic pencils, powders, make-up, nail varnishes, lipsticks; products for removing make-up in the form of milks, lotions, creams, gels; talcum powder, for toilet use; lotions and gels for the hair and scalp; lotions, gels, mousses, pre and after-shave creams; sun-tanning preparations in the form of creams, oils and gels, after-sun milks and creams; dentifrices, shampoos, deodorants for personal use.   

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.

 

On 19/02/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 24/04/2020 to submit evidence of use of the earlier trade mark. This time limit was later extended until 24/06/2020. On 18/06/2020, within the time limit, the opponent submitted evidence of use.

The opponent has requested that part of the evidence submitted on 27/11/2019 (i.e. before the time limit to submit proof of use referred to above) with the purpose of demonstrating that the earlier mark enjoyed a high degree of distinctive character, is also taken into account for the purpose of demonstrating use at this stage, and in particular Annexes 3, 5, 6, 8, 9 and 10. Therefore, since such evidence was submitted before the time limit referred to above, the Opposition Division will take it into account also as 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.

 

The evidence to be taken into account is the following:

Evidence submitted on 27/11/2019

Annex 3. Sample advertisements published in various magazines in France, Italy and Romania for the period 2010 – 2018:

Extracts and screenshots of French, Italian, Romanian publications (e.g. ‘Ici Paris’, ‘Journal des Femmes’, ‘Jalouse’, ‘Paris CAPITALE’, ‘Cosmopolitan’, ‘Glamour’, ‘Amica’, ‘ELLE’, ‘D Repubblica’ or ‘marie claire’) in French, Italian or Romanian, dated between 2010 and 2018. Some of the extracts contain partial translations of the parts considered more relevant by the opponent. The mark appears used both in word and in various figurative formats (various font types), sometimes alone and sometimes accompanied by other words (e.g. ‘L´Interdit’ or ‘Gentlement only’) or a logo formed by four shapes , in different colours.

The mark appears within the text/translations and also in images, always used in relation to perfumery products, cosmetics (including mist, nail polish, creams, skin care preparations, masks and make-up) for men and women. It is also used in relation to jewellery, shoes, boots and bags (e.g. in publication of the MADAME magazine dated 1/02/2015). Some examples are the following:

Annex 5. Rankings of newspapers, magazines and websites in France and Italy, dated 2016 and 2017, and their diffusion figures. Some of the publications listed in the ranking correspond with the sources of information described in the previous annex (e.g. Marie Claire, Elle, Glamour), which appear in, for instance, the following positions in the French ranking:

Annex 6. Invoices dated between 2013 and 2018, in French and English, some issued by Parfums ‘GIVENCHY’ Société Anonyme and others by LVMH Fragrance Brands – Société Anonyme and DIVISION DE LVMH Iberia SL. to various clients in France (e.g. Saran), Italy (e.g. Florence, Milan), Romania (e.g. Bucharest) and Spain (e.g. Alava).

Although the clients’ information is not contained in the invoices, taking into account the number of items sold (various goods of the same kind, for instance 50 units of gentleman lotion) it is likely that the clients are retailers.

The mark is used in different parts of the invoices as , and as one of the companies of the LVMH Fragrance Brands group, as follows:

The opponent explains that the goods listed in the product description part are all sold under the mark ‘GIVENCHY’, despite the fact that the mark is not included as part of the product description. Indeed, some of the goods listed in the invoices, such as for instance “Rouge Interdit” lipstick, appear also in the magazines described above, as one of the goods under the ‘GIVENCHY’ trade mark:

In this regard, it must be also noted that in Annex C.7 (below), the opponent has submitted a list showing the products to which said abbreviations correspond. It can be therefore concluded that the invoices correspond to the sales of make-up, cosmetics, perfumes and skin care products under the mark ‘GIVENCHY’. The opponent has explained the following “The references in the invoices usually refer to the sub-brand of the product (L’INTERDIT, GENTLEMAN, LE ROUGE PERFECTO, etc). However, the sign “GIVENCHY” is affixed on all the products bearing these sub-brands: this can be seen on the various pictures of GIVENCHY products displayed in Annexes A.1 to A.4 and B.1 to B.7.”

Annex 8. Extracts of newspaper and blog articles on ‘GIVENCHY’ products published in Spanish, French and United Kingdom media dated 2007-2019. Some of them are the following:

- Extract from the blog ‘LesFlaconsdePartfum.com’ dated 2013 regarding the history of ‘GIVENCHY’ perfumes. According to the document, the first perfume was created in 1957. The list contains a significant number of perfumes until 2013 (only in 2013 a total of five perfumes for men and women appear listed)

- Extract from ‘LesFlaconsdeParfum.com’ dated 2017 including the history of ‘GIVENCHY’ and its perfumes for men and women throughout the years, since the 1950’s. The earlier mark appears mentioned not only in the text, but also in various figurative formats (same/similar to the ones indicated above) and appears also in the labels of perfumes and within pictures used for advertisement (same/similar to the ones indicated above)

- Extract from www.leparisien.fr in French, dated 2010 in relation to ‘GIVENCHY’ perfumes outside the relevant territory (e.g. United States, Russia or China). The text explains that the perfumes are produced in Beauvais (France).

In the extracts described, as well as in the rest of extracts submitted in this annex, the earlier mark is used in the same/similar ways described above as regards stylization, combination with other words (e.g. ‘L´interdit by Givenchy’), etc. and in relation to the same goods mentioned in the description of previous pieces of evidence.

Annex 9. The annex contains newspaper and blog articles on the different ambassadors of ‘GIVENCHY’ perfumes.

These documents consist of extracts from different French publications, such as one from www.leparisien.fr in French, about the different ‘muses’ of the ‘GIVENCHY’ perfumes. Although the publication is undated, the text refers to events and products under the ‘GIVENCHY’ trade mark taking place in 1952, 2003, 2013, etc. another one refers to a collaboration between ‘GIVENCHY’ and a famous singer.

The earlier mark is used in the same/similar ways described above as regards stylization, combination with other words (e.g. ‘L´interdit by Givenchy’), etc. and in relation to the same goods mentioned in the description of previous pieces of evidence.

Annex 10. The annex contains references to awards won by Givenchy. Some of these are the following:

- Award/ranking: The 16 winners of ‘Venus de la Beaute 2015’ (ranking of ‘GIVENCHY’ : 16^th) year 2015. Products: cosmetics. The award was granted by professionals in the cosmetic industry and readers of the Version Femina magazine. Territory: France.

- Award: ‘Travel Plus Award’, year 2014. Products: travel unisex kit of airlines companies Frist Class (different ‘GIVENCHY’ cosmetics and body-care products). Territory: Germany.

- Award/ranking: ‘Toiles de la beauté Parents’, rewarding «’the most efficient cosmetics of the year’. Date: 2015. Territory: France. The award was granted by beauty professionals, readers, bloggers and journalists. The awards were granted to, inter alia the following products under the earlier mark:

In the extracts described, as well as in the rest of extracts regarding awards/rankings submitted, the earlier mark is used in the same/similar ways described above as regards stylization, combination with other words (e.g. ‘L´interdit by Givenchy’), etc. and in relation to the same goods mentioned in the description of previous pieces of evidence.

Evidence submitted on 18/06/2020

Annexes A.1 to A.4 show various advertisements campaigns

- Annex A.1 shows various advertisement campaigns that took place in 2017 and 2018 in Germany:

o Campaign of February 2017 showing an online advertisement on the website “parfuemerie.de” promoting the lipstick “Rouge Interdit” by Givenchy;

o Campaign of June 2017 showing a mini website promoting the perfume “Live Irressistible” by Givenchy on the website “douglas.de”;

o Campaign of August 2017 showing advertisement pop-ups promoting the new mascara “Noir Interdit” by Givenchy on the website “douglas.de”;

o Campaign of August 2017 showing advertisement promoting the lipstick “GIVENCHY Le Rouge” on the website “flaconi.de”;

o Campaign of September 2017 showing advertisement promoting the new perfume “GIVENCHY Gentleman” on the website “douglas.de”;

o Campaign of May and June 2018 showing advertisement promoting the lipstick “Le Rouge Perfecto” by Givenchy and the perfume “GIVENCHY Gentleman” on the website “douglas.de”.

In all the evidence submitted under Annex A.1, the earlier mark is used as described in previous pieces of evidence, and in relation to make-up products and men and women perfumes. The text appearing in documents and the images is, in the majority of cases, in English and/or German and the dates are visible in most of them. Although the dates are not visible on every page, there are sufficient dates in the various parts of the campaigns and references to the dates of launching the products advertised to know to which period of time the documents correspond.

- Annex A.2 shows leaflet extracts promoting new ‘GIVENCHY’ products in Spain:

o Leaflet extract promoting a gloss “GIVENCHY Gloss Interdit Vinyl” available from “February 2018”;

o Leaflet extract promoting a ‘GIVENCHY’ “LE SOIN NOIR GIVENCHY – 2ND GENERATION », mentioning that the second generation has been launched in 2014;

o Leaflet extract promoting the new perfume “GENTLEMAN GIVENCHY” launched in 2017.

In all the evidence submitted under Annex A.2, the earlier mark is used as described in previous pieces of evidence, and in relation to make-up products and men and women perfumes. The text appearing in documents and the images is, in the majority of cases, in Spanish and the dates are visible in most of them. Although the dates are not visible in every page, there are sufficient dates in the various parts of the campaigns and references to the dates of launching the products advertised to know to which period of time the documents correspond.

- Annex A.3 shows various advertisement campaigns in Poland in physical shops and online.

o Campaign to promote the new perfume “L’INTERDIT GIVENCHY” in partnership with Sephora in Poland in 2018. According to the opponent: “physical campaigns in Sephora stores, leaflets distributed to 10.000 Sephora “gold” clients, 650K catalogues distributed in September, 165k in October, 230k in December, 550k leaflet inserted in various magazines in December (Elle, Cosmopolitan, Viva!, …), advertisement on Sephora Facebook Polish page and Sephora Polish website, newsletter sent to Sephora Polish clients”

o Campaign to promote the new perfume “L’INTERDIT GIVENCHY” in Douglas shops in Poland in 2018. According to the opponent “350k catalogues distributed in September, 550k in December, advertisement in physical Douglas stores in Poland”

o Campaign to promote the new perfume “GENTLEMAN GIVENCHY” in Douglas Shops in 2018. According to the opponent: “advertisement in physical Douglas stores in Poland, newsletter sent to 250k Douglas clients, 350k catalogues distributed, advertisement on Facebook pages and on diverse blogs articles”.

o Campaign to promote the new perfume “GENTLEMAN GIVENCHY” in Sephora shops in December 2018. According to the opponent: “leaflets distributed to 10.000 clients, advertisement inserted in various magazines, advertisement on Sephora Polish website and Facebook page, catalogues sent to 165k Sephora Polish clients, blog articles”

In all the evidence submitted under Annex A.3, the earlier mark is used as described in previous pieces of evidence, and in relation to make-up products and men and women perfumes. The text appearing in documents and the images is, in the majority of cases, in Polish and the dates are visible in most of them. Although the dates are not visible in every page, there are sufficient dates in the various parts of the campaigns and references to the dates of launching the products advertised to know to which period of time the documents correspond.

- Annex A.4 shows diverse advertisement campaigns in Portugal in physical shops and online.

o Campaigns to promote the perfume “GENTLEMAN GIVENCHY” in 2017:

 Extracts of an article published in the magazine GQ in 2017 promoting the perfume “GENTLEMAN GIVENCHY”;

 PR campaigns reports;

 Shelves and decorations in physical stores such as in El Corte Inglès (in Gaia and Lisboa)

 Banners on websites and social medias (Perfumes & Companhia, Douglas).

 Campaigns to promote the perfume “L’INTERDIT GIVENCHY” in 2018

 Decorations and events organized in physical stores (Douglas, Perfume & Companhia, Sephora, El Corte Inglès, Marionnaud);

 Publications on social medias and distributor websites (Douglas, Sephora, Perfumes & Companhia);

 Magazines distributed to the clients (Perfumes & Companhia).

In all the evidence submitted under Annex A.4, the earlier mark is used as described in previous pieces of evidence, and in relation to make-up products and men and women perfumes. The text appearing in documents and the images is, in the majority of cases, in Portuguese and the dates are visible in most of them. Although the dates are not visible in every page, there are sufficient dates in the various parts of the campaigns and references to the dates of launching the products advertised to know to which period of time the documents correspond.

Annexes B.1 to B.7 are various extracts from press clippings showing advertisements and articles directly relating to ‘GIVENCHY’ products.

- Annex B.1 shows extracts of press clippings for various magazines and newspapers in Germany.

- Annex B.2 shows extracts of Marionnaud catalogues in Austria showing the sale of ‘GIVENCHY’ products.

- Annex B.3 shows a significant amount of extracts of press clippings from various newspapers and magazines in Spain displaying various ‘GIVENCHY’ products.

The Annex B.3 concerning also contains a table for the year 2014 evidencing the amount spent by LVMH FRAGRANCE BRANDS for promoting the mark ‘GIVENCHY’ in various magazines for the year 2014.

- Annex B.4 shows various extracts of press clippings from various magazines in France displaying various ‘GIVENCHY’ products.

- Annex B.5 shows a significant amount (over 200) of extracts of press clippings from various magazines in Italy for the sole year 2017 displaying various ‘GIVENCHY’ products .

- Annex B.6 shows a significant amount (over 100) extracts of press clippings from various magazines in Poland displaying various ‘GIVENCHY’ products.

- Annex B.7 shows 77 extracts of press clippings from various magazines in Portugal displaying various ‘GIVENCHY’ products.

In all the evidence submitted under Annex B.1 to B.7 the earlier mark is used as described in previous pieces of evidence, and in relation to make-up products and men and women perfumes, for instance as follows:

Reference is made to the descriptions carried out in relation to the previous annexes as regards the analysis of the dates of the publications, the use of the mark and kind of products in relation to which the mark is used, since the same conclusions are herein reached after analysing this piece of evidence.

Annexes C.1 to C.6 are 255 invoices extracts dated between December 2013 and December 2018, showing the sale of ‘GIVENCHY’ products in various European Union countries.

- Annex C.1 displays 8 invoices for Austria dated between 2014 and 2018.

- Annex C.2 displays 23 invoices for Spain dated between 2014 and 2018.

- Annex C.3 displays 2 invoices for Poland dated 2018.

- Annex C.4 displays 2 invoices for Portugal dated 2018.

- Annex C.5 displays more than 130 invoices for Italy between 2014 and 2018.

- Annex C.6 displays around 90 invoices for Germany between 2014 and 2018.

Like in Annex 6 above, the invoices herein referred to do not contain the earlier mark in the product description part of the document. Instead, what is shown is a combination of codes and abbreviations. In this regard, it must be noted that in Annex C.7 (below) the opponent has submitted a list showing the products to which the abbreviations appearing in the invoices correspond. Gathering all the information and combining it, it is considered that the invoices show sales under the earlier mark of cosmetics, make-up and perfumes por men and women.

The opponent has also explained the following: “The references in the invoices usually refer to the sub-brand of the product (L’INTERDIT, GENTLEMAN, LE ROUGE PERFECTO, etc). However, the sign “GIVENCHY” is affixed on all the products bearing these sub-brands: this can be seen on the various pictures of ‘GIVENCHY’ products displayed in Annexes A.1 to A.4 and B.1 to B.7.”

Taking into account all the pieces of evidence submitted, including the information in the product description of the invoices, the catalogues, advertisement, and other images where said products appear, it can be concluded that the invoices correspond mainly to the sales of make-up, cosmetics and perfumes under the mark GIVENCHY.

The invoices have the same characteristics as explained in Annex 6 above as regards their formatting and the use of the mark. Reference is therefore made to that description.

The invoices are in different languages, some of them are in French and English, others in Spanish, Italian or German.

- Annex C.7 shows a list of the abbreviated references used in some pieces of the evidence submitted to refer to various sub-branded ‘GIVENCHY’ products (e.g. invoices). The opponent explains that, even if the year does not coincide, the reference is still valid. An example of this is the following (left the product abbreviation used as a reference in the invoices / right the meaning)

Therefore, whenever ‘VIG L'INTENSE EDP 50ml’ appears in the invoices, it is considered that the goods ‘VIG’ listed in the invoices as products being sold, do contain the mark ‘Givenchy’, as claimed by the opponent.

Annex D. Extract from the website “statista.com” in English, and dated 2020, although the information it contains refers to 2014-2018. The document shows that perfumes of the brand ‘GIVENCHY’ are used by hundreds of thousands of consumers in France during the years referred to.

The document contains references to various ‘perfume and eau de toilette’ products, all under the mark ‘Givenchy’, for instance: ‘Givenchy Veri Irrésistible’ or ‘Givenchy Ysatis’. According to the information at the end of the document, the release date of it was 2019, the region to which the information corresponds is France and number of respondents was over 15 000 people.

Annex E. Awards won by ‘GIVENCHY’ products in United Kingdom, Benelux, Germany, Spain, France, Poland, Romania, Hungary, Latvia in relation to make-up, skin care preparations (skincare) and perfumes.

On 22/12/2020, after expiry of the time limit, the opponent submitted additional evidence.

  

Even though, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

 

According to Article 10(7) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late indications or evidence merely supplements, strengthens and clarifies the prior relevant evidence submitted within the time limit with the purpose of proving the same legal requirement laid down in Article 10(3) EUTMDR, namely, 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 opposition is based.

 

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. 

 

The additional evidence merely strengthens and clarifies the evidence submitted within the timeframe for doing so initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. It is clear that the additional evidence would not prove a wider scope of genuine use than the evidence filed within the relevant time limit. Therefore, there is no need to enter into its description or detailed analysis, since the same findings reached above apply.

Analysis of the evidence submitted

Despite the large amount of information submitted, its index, clear structure, translations and the explanations of the opponent enable the Opposition Division to understand its content and to have a good view of the use made of the earlier mark.

In all of the evidence submitted, the earlier mark is clearly used in the same/similar ways described above as regards stylization, combination with other words (e.g. ‘L´interdit by Givenchy’), etc. and in relation to the same goods mentioned in the description of previous pieces of evidence, namely cosmetics, make-up, skin-care preparations and perfumes. Some examples of this are the following:

(Annex A.2)

(Annex A.3.) (Annex A.4.)

 

 

 

The documents submitted (e.g. catalogues, advertisement, press articles, online publications, invoices, etc.) show that the place of use of the earlier mark covers a significant part of the relevant territory, including (and mainly) France, Spain, Portugal, Poland, Austria and Romania. This can be inferred from, for instance, the language of the documents, the currency (Euro) and the addresses in the invoices. Therefore, the evidence clearly relates to the relevant territory.

 

The vast majority of the evidence is dated within the relevant period or refers to it.

 

The documents filed, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The invoices are issued by Parfums ‘GIVENCHY’ Société Anonyme and others by LVMH Fragrance Brands – Société Anonyme and DIVISION DE LVMH Iberia SL. In this regard, the opponent explained the following (and submitted evidence in this regard as Annex 1):

Therefore, the evidence in which these different names appear is considered valid and relevant for the purpose of demonstrating use, since the evidence is considered to relate to or originate from the opponent itself.

 

The evidence shows that the mark has been used in accordance with its function and as registered. Although the earlier mark is used using various font types, colours or stylisations, these do not differ significantly from the mark as registered. The earlier mark is sometimes used together with other words preceding or following it. This is a frequent practice in, for instance, the perfume market, in which the main trade mark is accompanied by other marks, or by words that indicate the characteristics of the goods (e.g. ‘GENTLEMAN GIVENCHY PARIS’ or ‘L´INTERDIT GIVENCHY’), and consumers are aware of which is the main mark, representing the entity responsible for the design/production of the product.

 

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

The applicant 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 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.

 

  

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

 

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 shows genuine use of the trade mark for a significant number of different products, all consisting of:

 

Class 3:   Perfumery; cosmetic preparations; creams; make-up.

 

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

It is not necessary to assess in detail whether the opponent proved use also for the other specific goods mentioned in the list of goods because all the specific goods for which use has been demonstrated anyway fall under the broad categories for which genuine use has already been found.

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.

 

 

a) The goods and services

 

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

 

Class 3:   Perfumery; cosmetic preparations; creams; make-up.

The contested goods and services are the following:

 

Class 3: Cleansing milk; shampoos; lipsticks; cosmetics for animals; essential oils; cosmetics; breath freshening sprays; incense; beauty masks; perfumes.

Class 21: Make-up brushes; cosmetic utensils; toothbrushes; combs; make-up removing appliances; tea services [tableware]; nail brushes; toilet sponges; powder puffs; eyelash brushes.

Class 44: Beauty salon services; pet grooming; plastic surgery; massage; nursing home services; Beauty salons; manicuring; visagists' services; Beauty counselling; gardening. 

 

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.

  

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 cosmetics; perfumes are also contained in the opponent´s list of goods, either identically or by using synonyms.

The contested cleansing milk; shampoos; lipsticks; cosmetics for animals; beauty masks fall in the broad category of, or overlap with, the opponent´s cosmetic preparations, and they are therefore considered identical.

The contested essential oils are similar to the opponent´s cosmetic preparations, since they coincide in distribution channels/points of sale, can be directed at the same consumers and sometimes originate from the same kind of undertakings.

The contested breath freshening sprays are similar to the opponent´s cosmetic preparations, since they can coincide in purpose, coincide in distribution channels/points of sale and can be directed at the same consumers.

The contested incense is identical to the opponent´s perfumery, since they overlap.

 

Contested goods in class 21

The contested make-up brushes; cosmetic utensils; make-up removing appliances; nail brushes; powder puffs; eyelash brushes; combs; toilet sponges are similar to the opponent´s cosmetic preparations and/or make-up in Class 3, since they coincide in distribution channels/points of sale, can be directed at the same consumers, frequently originate from the same kind of companies and some of them are complementary.

The contested toothbrushes are similar to at least a low degree to the opponent´s cosmetic preparations in Class 3, since they can coincide in distribution channels/points of sale, and can coincide in purpose.

The contested tea services [tableware] are dissimilar to the opponent´s goods, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and do not originate from the same kind of undertakings.

Contested services in class 44

The contested Beauty salon services; pet grooming; massage; beauty salons; manicuring; visagists' services; Beauty counselling are similar to the opponent´s cosmetic preparations in Class 3 since they can coincide in purpose, are complementary, can be directed at the same consumers and coincide in distribution channels/points of sale.

The opponent´s plastic surgery; nursing home services; gardening are dissimilar to the opponent´s goods, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and do not originate from the same kind of undertakings.

 

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 and services found to be identical or similar (to varying degrees) are directed at both, the public at large and professionals. The degree of attention paid by consumers during their purchase will vary from average to high.

For part of the goods and services involved, nothing in their manner of purchase or average price requires that consumers are particularly attentive and observant when choosing such goods and services (e.g. in relation to powder puffs). Therefore, the degree of attention is considered to be average. A high degree of attention is likely to be paid in relation to goods and services that are, for instance, expensive, not frequently purchased or that can have an impact on the health of consumers.

 

c)  The signs

 

GIVENCHY
Earlier trade mark	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, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Depending on the pronunciation rules of the different languages of the European Union, the signs can be aurally closer. The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, since for them the signs are not only meaningless and of average distinctive character, but also closer phonetically (see aural comparison below) than for non-French-speakers in the relevant territory.

The opponent argues that the signs at issue could be perceived as surnames, and concludes that this perception would lead to finding conceptual similarity between them. However, the applicant has not submitted any supporting evidence in this regard. The Opposition Division considers that the words forming the marks are perceived by the relevant public as meaningless invented terms of normal distinctive character.

The words ‘GIVENCHY’ and ‘Gichancy’ are meaningless for the relevant public under analysis and of normal distinctive character.

The contested sign has no element/part/letter that could be considered clearly more dominant than others. Contrary to the applicant´s opinion, the typeface of the contested mark is only slightly stylised, and does not contain any particularly striking or stylised elements, letters or colours. The earlier mark is a word mark, and therefore the word as such, not its written form, is protected.

The applicant argues that the marks are short signs, and therefore the differences between them will be easily perceived. However, the marks are formed by eight letters, and are therefore not considered short signs (i.e. shorts signs have, in principle, no more than three letters).

Visually, the signs coincide in their first letters ‘GI’, middle letters ‘NC’ and last letter ‘Y’. They differ in letters ‘VE**H’ of the earlier mark and ‘CHA’ of the contested mark. Both signs contain letters ‘CH’, despite their different positions within them.

The signs coincide in their beginning and ending letters. The impact of the differing middle letters of the marks is somewhat reduced for being preceded and followed by coinciding letters.

The signs are visually similar to an average degree.

Aurally, the signs are pronounced as ‘GI-VAN-CHY’ and ‘GI-CHAN-CY’, since the letters ‘E’ and ‘a’ of the earlier and contested signs, respectively, are pronounced in the same way in this case.

Therefore, the coinciding letters ‘Gi’ are pronounced identically, and ‘ENCHY’/‘ancy’ are phonetically highly similar. The signs differ in the sound of ‘V’ and ‘ch’ in the earlier sign and in ‘ch’ and ‘c’ in the contested sign.

The signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the existence of a risk of injury will be examined.

 

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.

  

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’), although part of it has been already described in the Proof of Use section above.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e)  Global assessment, other arguments and conclusion

 

The signs are visually similar to an average degree, aurally similar to a high degree and cannot be compared conceptually. The earlier mark is of an average distinctive character.

The goods and services compared are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at both the public at large and professionals. The degree of attention paid by them during the purchase of the goods and/or services will vary from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). In the present case the main differences are found in the letters placed in the middle part of the signs, which are preceded and followed by coinciding letters, and their visual impact will be somehow diluted. In addition, said spelling differences do not lead to significant aural differences between the marks, which result to be aurally highly similar.

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The applicant refers to the fact that it has other registrations around the world. It refers to trade marks in China, South Korea, Macao and Taiwan, and submits evidence in this regard (registration certificates).

 

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

However, the earlier marks referred to by the applicant are not registered in the same territory as the earlier mark herein concerned, namely the European Union, or any of its Member States. In addition, the applicant has not proven that said earlier marks are in fact used in the relevant territory at all. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict. Therefore, the applicant´s claim is dismissed.

 

The opponent refers to a previous national decision to support its arguments. 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).

 

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the opponent argued the following:

The decision referred to by the opponent is in fact relevant at least partially, since it concerns the same signs herein involved, and the same territory in relation to which the signs have been examined in section c) above. The Opposition Division agrees with the fact that there is likelihood of confusion between the marks, at least for the French-speaking part of the relevant territory, as explained above, at least in relation to the goods and services that could be found to be identical or similar.

However, the findings on the similarity of the goods and services in the decision referred to by the opponent cannot be followed (e.g. the degrees of similarity found between the goods and services), since the conclusions reached in section a) above are the result of the examination of the proof of use submitted by the opponent, and bound by the results on the Similarity Tool of the Office (https://euipo.europa.eu/sim/), which is binding for the Opposition Division.

The parties refer to previous decisions of the Office to support their arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

 

This practice has been fully supported by the General Court, which has stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

  

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the parties refer to trade marks and/or goods and/or services different from the ones herein involved. Therefore, the same reasoning cannot be expected to be followed, or the same outcome reached. In addition, they do not provide convincing reasoning that would refute the findings reached in the different sections above (e.g. comparison of signs, comparison of the goods and services, etc.)

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. The opposition is also successful insofar as the goods and services found to be similar to a low degree or at least a low degree, since the similarity between the signs is sufficient to outweigh the low similarity of those goods and services. 

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

 

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark, as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

Vít MAHELKA

 

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.