OPPOSITION No B 3 087 063

Jean Patou, 24/32 Rue Jean Goujon, 75008 Paris, France (opponent), represented by T Mark Conseils, 9 Avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Shenzhen Goldreams Technology Co., Ltd., Room 1201‑1208, 12^th Floor, Creative Building, Nanhai Avenue And Shennan Avenue Interchange, Nantou, Shenzhen, People’s Republic of China (applicant), represented by RMW&C Mietzel Wohlnick & Calheiros Partnerschaft mbB, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 16/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 063 is upheld for all the contested goods, namely:

Class 3: Mint for perfumery; essential oils; ethereal oils; ethereal essences; geraniol; perfumery; food flavourings [essential oils]; food flavorings [essential oils]; extracts of flowers [perfumes]; safrol; terpenes [essential oils]; aromatics [essential oils].

Class 34. Cigarettes; cigarette tips; cigarette filters; oral vaporizers for smokers; tobacco pipes; matches; lighters for smokers; flavourings, other than essential oils, for tobacco; flavorings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes; electronic cigarettes.

2. European Union trade mark application No 18 015 723 is rejected for all the contested goods. It may proceed for the remaining uncontested goods.

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

REASONS

On 24/06/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 015 723 (figurative mark), namely against all the goods in Classes 3 and 34. The opposition is based on the following earlier marks:

1. European Union trade mark registration No 17 895 714 (figurative mark);

2. European Union trade mark registration No 10 596 047 ‘JOY’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and Article 8(5) EUTMR in relation to earlier right 2.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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

 The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

a) Reputation of the earlier trade mark

According to the opponent, earlier trade mark No 10 596 047 ‘JOY’ has a reputation in the European Union.

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

In the present case, the contested trade mark was filed on 28/01/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Perfumery; perfume, eau de toilette, eau de cologne.

The contested goods against which the opposition is directed are the following:

Class 3: Mint for perfumery; essential oils; ethereal oils; ethereal essences; geraniol; perfumery; food flavourings [essential oils]; food flavorings [essential oils]; extracts of flowers [perfumes]; safrol; terpenes [essential oils]; aromatics [essential oils].

Class 34: Cigarettes; cigarette tips; cigarette filters; oral vaporizers for smokers; tobacco pipes; matches; lighters for smokers; flavourings, other than essential oils, for tobacco; flavorings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes; electronic cigarettes.

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

On 10/01/2020 the opponent submitted the following evidence:

 Annex 1: witness statement, dated 18/12/2019 and signed by an authorised representative of the opponent. The document states that the mark ‘JOY’ was first used in relation to a fragrance produced by Jean Patou (famous Parisian fashion designer) in 1930. The following releases of additional fragrances under the ‘JOY’ brand (such as ‘ENJOY’, ‘JOY FOREVER and ‘Eau de JOY’) always contained the element ‘JOY’. There has been over 80 years of continuous, uninterrupted use of the ‘JOY’ mark in relation to perfume. ‘JOY’ fragrance was introduced by the Fragrance Foundation into its Hall of Fame in 1990 and was voted ‘Scent of the Century’ at the Fragrance Foundation FiFi Awards in 2000, beating its longstanding rival, Chanel No 5. Furthermore, the luxurious nature of ‘JOY’ fragrances has been maintained to this day. ‘JOY’ products are sold at a variety of selected luxury and prominent retailers and the opponent has limited and strict licencing policies. The witness statement also includes a table of sales figures for ‘JOY’ and ‘JOY FOREVER’ products in the European Union for 2013, 2014, 2015, 2016, 2017 and 2018, and the sales figures in Austria/Germany/Switzerland, Benelux, France, Italy, Portugal/Spain, and the United Kingdom for the financial years 2012-2013 and 2013-2014 (in thousand dollars (USD)). In addition, the witness statement introduces and explains the further evidence, submitted as exhibits 1-16:

o Exhibit 1: copy of a licence agreement, dated 14/09/2012, between the opponent (licensor) and a third party (licensee). The agreement grants a worldwide licence to use, inter alia, the ‘JOY’ trade mark in relation to fashion and fragrance products (the normal meaning of which would include perfumes).

o Exhibit 2: 15 pages containing undated images of products, mostly perfume, bearing the marks:

o Exhibit 3: copies of agreements, dated 30/06/2011, between the opponent and a third party, to assign various trade marks, amongst which are several ‘JOY’ rights.

o Exhibit 4: extracts from various websites:

­ from the opponent’s website, showing the opponent’s products (perfume) bearing the mark ‘JOY’ together with information about the brand (the extract only shows the date it was printed, 19/02/2019).

­ an article from the website ‘fragrantica.com’ entitled ‘Gender Bender; Joy by Jean Patou (1930, 2015)’ dated 10/03/2015. The article refers to the perfume ‘JOY’ as being widely known in the second part of the 20th century, purportedly the second best-selling perfume of all time behind Chanel No 5. The extract also includes 11 pages of consumer reviews and comments.

­ an article from the website ‘fragrantica.com’ entitled ‘Extraits de parfum: Hidden Gems’ dated 04/02/2017. The article mentions, inter alia, the opponent’s ‘JOY’ perfume and its price.

­ an article from the website ‘fragrantica.com’ entitled ‘The Fragrances That Triggered Our Love of Perfume’, dated 25/06/2016, mentioning the opponent’s ‘JOY’.

­ an article from the website ‘therichest.com’ entitled ‘The 5 Most Popular Perfumes of All Time’, which puts ‘JOY’ in second position and indicates that it has gained recognition as one of the most popular and successful fragrances in the world (the extract only shows the date it was printed, 19/02/2019).

All articles are in English and contain pictures of the opponent’s goods (fragrances) bearing the mark ‘JOY’.

o Exhibit 5: extracts from books in French (1) and English (6):

- L’Univers des Parfums by Fabienne Pavia,

- Perfumes The A-Z Guide by Luca Turin and Tania Sanchez,

- Perfume: The Ultimate Guide to the World’s Finest Fragrances by Nigel Groom,

- Patou by Meredith Etherington-Smith,

- Scent & Subversion: Decoding a Century of Provocative Perfume by Barbara Herman,

- Perfume. A Cultural History of Fragrance from 1750 to the Present by Richard Stamelman, 2006,

- Vintage Perfumes by Jan Moran, 2015.

The books refer to the history and introduction of the brand ‘JOY’ in the 1920s/1930s and its subsequent use during the 20th century and the beginning of the 21st century in relation to perfumery. One of them indicates the opponent’s ‘JOY’ perfume among the five greatest perfumes in the world.

o Exhibit 6: a one-page screenshot of the web page of the Fragrance Foundation Hall of Fame 1990 showing ‘JOY’ perfume (the extract was printed on 01/12/2015).

o Exhibit 7: copies of six online articles.

­ Great joy for Patou (business.highbeam.com);

­ Jean Patou (fashionencyclopedia.com);

­ Perfume Fashion History (fashion-era.com);

­ Jean Patou (en.wikipedia.org);

­ Poor Little Rich Girl (scentury.com);

­ Discover: Jean Patou & His Legacy (eatlovesavor.com).

Only three of the articles are dated, the first (01/09/2000), the fifth (26/12/2013) and the sixth (02/06/2013), but the remaining articles refer to events from the 1930s onwards when referring to the trade mark, and the printing date of all extracts is 09/02/2015. Furthermore, all the articles mention the trade mark ‘JOY’ in conjunction with perfumes and fragrances and attest to its long-standing use (the articles give introduction dates ranging from 1930 to 1936) and reputation (five of the articles state that ‘JOY’ was voted ‘Scent of the Century’ by the public at the Fragrance Foundation FiFi Awards in 2000).

o Exhibit 8: five pages of undated images of products (perfumes) and their packaging, bearing the marks:

o Exhibit 9: copy of a trade mark licence agreement, dated 30/06/2011, between the opponent (licensor) and a third party (licensee) to allow the licensee the right to use ‘Joy of Pink’ for fragrances. Copy of an assignment, licence and coexistence agreement, dated July 2013, between the opponent and a third party, to allow (amongst other agreements) the third party the right to use ‘Joyful’. Annexes 1 and 2 show worldwide registrations for the trade marks ‘JOY’ and ‘JOYFUL’. Annex 3 contains the list of relevant countries.

o Exhibit 10: five pages of undated product advertisements and images for the brands ‘ESCADA Joyful’ and ‘LACOSTE Joy of Pink’.

o Exhibit 11: 27 invoices for advertising and marketing services (such as press advertising, television advertising, promotional films, adverts, creation of a short retrospective film on Jean Patou, creation of a mini-book, improving the opponent’s website, tester display units, brochures, business cards) purchased by the opponent to promote its products. The dates are from June 2013 to September 2014 and one from 2018. The total value of the services is in the hundreds of thousands of euros. The services however are primarily related to the brands ‘JEAN PATOU’, ‘PATOU’ or ‘JOY FOREVER’ and there are only infrequent references to ‘JOY’.

o Exhibit 12: more than 100 pages containing press clippings from magazines in Belgium, Bulgaria, Estonia, France, Germany, Italy, Portugal and the United Kingdom dated in 2013, 2014, 2016 and 2017. They show the brands ‘JOY’, ‘ENJOY’ and ‘JOY FOREVER’ used for perfumes and fragrances.

o Exhibit 13: two invitations to events in Paris in 2013 and 2014 hosted by ‘JEAN PATOU’ and related to perfumes and creams under the brands ‘JOY’ and ‘JOY FOREVER’.

o Exhibit 14: selection of tweets (39 pages), dated from 2013 and 2014, showing the opponent’s perfumes bearing the marks ‘JOY’ and ‘JOY FOREVER’, of which the majority are in English.

o Exhibit 15: extracts from the opponent’s website (jeanpatou.com), which show the opponent’s products (perfume) bearing the marks ‘JOY’ and ‘JOY FOREVER’. Extracts are in French and they were printed on 03/12/2015.

o Exhibit 16: approximately 268 invoices (in part redacted). Approximate numbers for each year are: 25 invoices dated 2013, 23 invoices dated 2014, 72 invoices dated 2015, 80 invoices dated 2016, 33 invoices dated 2017 and 35 invoices dated 2018. The invoices show customers in the United Kingdom, and various parts of the European Union, namely Belgium, Bulgaria, Denmark, Germany, Estonia, Spain, France, Italy, Lithuania, Hungary, Portugal and Romania. The invoices show sales of goods under various brands. The goods in the invoices are referred to as ‘JEAN PATOU’ followed by ‘JOY’, or ‘JOY FOREVER’, or ‘1000’, or ‘SUBLIME’. The products then have descriptive terms such as the type of product (parfum/perfume), EDT (eau de toilette), EDP (eau de parfum), the container (e.g. spray, tester) and the size (e.g. 15ml, 50ml, 75ml). The invoices document regular sales for perfumery products under the ‘JOY’ brand in thousands of euro.

 Annex 2: extract from the book Les Cent Onze Parfums by Yohan Cervi, Jeanne Dore and Alexis Toublanc (in French, without English translation), which provides information about the ‘JOY’ brand, together with pictures of containers for ‘eau de parfum’ and ‘eau de toilette’. Sets of advertisements containing images of the opponent’s fragrances bearing the mark ‘JOY’ (two in English and the remaining in French). In two of these, ‘JOY’ is indicated as ‘the costliest perfume in the world…’ and only one is dated (December 1950).

 Annex 3: copy of Opposition Division decision No B 2 403 635, dated 16/12/2015.

 Annex 4: copy of French Trademark Office’s decision OPP 17‑4746 GDA, dated 26/03/2018, recognising reputation of the trade mark ‘JOY’ (in French, without English translation).

 Annex 5: copy of Opposition Division decision No B 3 063 221, dated 27/09/2019.

The abovementioned evidence indicates that the opponent’s mark ‘JOY’ has been used for a substantial period of time (since the 1930s). Although some of the evidence is undated, it supports the remaining evidence that is dated and attests the use of the trade mark ‘JOY’ and its recognition in the relevant market. In particular, the introduction of ‘JOY’ perfume into the Fragrance Foundation Hall of Fame in 1990 (exhibit 6), and the ‘Scent of the Century’ award given in 2000 (exhibit 7), as reported by third-party sources, are quite important accolades that imply both long‑standing use and a degree of recognition. The book extracts (exhibit 5) that reference the introduction of the brand ‘JOY’ in the 1920s and 1930s, and its subsequent use, and third-party reviews referring to ‘JOY’ as number two in the list of most popular perfumes of all time (exhibit 4) are further confirmation of long-standing use of the mark and the degree of recognition achieved. Moreover, the sales figures for the financial years 2013-2014, provided in the witness statement (Annex 1), suggest high turnover, and invoices for advertising and marketing services (exhibit 11) show significant effort and investment on the part of the opponent in promoting its ‘JOY’ brand.

Although the evidence also includes marks such as ‘ENJOY’ and ‘JOY FOREVER’, the element ‘JOY’ is always in central position and there is sufficient evidence of the mark ‘JOY’ on its own, or more usually with the house mark ‘JEAN PATOU’. In terms of the intensity and duration of use, information submitted in the witness statement (Annex 1) and supported by third-party evidence (exhibits 4 to 6), invoices (exhibits 11 and 16) and press clippings (exhibit 12), confirm the use of the mark since the 1930s and demonstrate continued use in the 21st century. In terms of geographical extent of use, some of the evidence, such as invoices and sales figures submitted in the witness statement, demonstrate that the opponent sold its goods in EU countries, such as Belgium, Bulgaria, Germany, Estonia, Spain, France, Italy, Lithuania, Portugal and Romania. Most of the remaining evidence relates to France and the United Kingdom.

According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for an EUTM the relevant territory is the European Union. However, the Court has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice. An EUTM must be known in a substantial part of the EU by a significant part of the relevant public for the goods and services protected by that trade mark. When evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory (06/10/2009, C‑301/07, Pago, EU:C:2009:611).

In the present case, the Opposition Division finds that, taken as a whole, the evidence demonstrates a degree of recognition and reputation of the mark ‘JOY’ among the relevant public, at the very least in France. As France is among the largest EU countries by area and/or population, it constitutes a substantial part of the European Union. Under these circumstances, the Opposition Division finds that reputation is proven in the relevant territory for the opponent’s EUTM No 10 596 047 for the word mark ‘JOY’, and it extends to all of the goods for which reputation is claimed, namely perfumery; perfume, eau de toilette, eau de Cologne in Class 3.

b) The signs

JOY
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark ‘JOY’. The parties disagree on whether the contested sign, depicted in a fairly standard font, will be perceived as comprising one word or two words by the relevant public. The applicant claimed that the contested sign will be perceived as one word, ‘Vapejoy’, since the only capitalised letter is the letter ‘V’ at the beginning. The opponent claimed that the contested sign will be perceived as comprising two words ‘Vape’ and ‘joy’, due to the space between them. The Opposition Division agrees that it is very likely that the contested sign may be perceived as comprising two words, as the space between ‘Vape’ and ‘joy’ is slightly bigger than between the remaining letters. However, even if the contested sign is considered as composed of one word, the relevant consumers, when perceiving a verbal element, may break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, it is reasonable to assume that, in any case, at least the English-speaking part of the public, who speak English as their first or second language, will perceive the contested sign as comprising two meaningful components ‘Vape’ and ‘joy’.

Bearing in mind that overall similarity between signs is greater when there is a conceptual link between them, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public that will perceive the common meaningful component ‘JOY’ in both marks.

The verbal element ‘JOY’ will be understood by this part of the public as referring to ‘a vivid emotion of pleasure arising from a sense of well-being or satisfaction; the feeling or state of being highly pleased or delighted; exultation of spirit; gladness, delight’ (information extracted from Oxford English Dictionary on 01/07/2021 at https://www.oed.com/). Contrary to the applicant’s assertions, it does not directly describe or allude to any characteristics of the goods in question, nor will it be seen as a laudatory term equivalent to ‘SUPER’. Therefore, it has an average degree of inherent distinctiveness in both marks. The verbal component ‘Vape’ of the contested sign will be perceived as meaning ‘to inhale and exhale the vapour of (a substance) using an electronic cigarette or similar device; to use (such a device) in this way’ (information extracted from Oxford English Dictionary on 01/07/2021 at https://www.oed.com/). It has an average degree of distinctiveness for the goods in Class 3, as it does not directly refer or allude to any of their characteristics. However, its distinctiveness is very limited, if it exists at all, in relation to the goods in Class 34, since it will be seen as merely referring to the intended purpose of the goods in question, namely, that they are for vaping, and are parts and/or accessories for oral vaporisers.

Visually and aurally, the signs coincide in the sequence of letters/sounds ‘JOY’, which comprises the entire sole verbal element of the earlier mark and the second verbal component of the contested sign. The signs differ in the sequence of letters/sounds ‘Vape’, at the beginning of the contested sign.

Although, as emphasised by the applicant, the part of the mark placed on the left of the sign (the initial part) is the one that first catches the attention of the consumer, the principle that the beginning of the word has a greater impact on the consumer cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of their overall impression (08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 29; 14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 50; 06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48). Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). Therefore, the coincidence must be ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In the present case, the contested sign fully incorporates the entire earlier mark, ‘JOY’, as its second component. Although this element is preceded by the differing component ‘Vape’, it plays an independent distinctive role in the contested sign and will not be overlooked by the relevant consumers. This is even more the case in relation to the goods in Class 34, for which the component ‘Vape’ has only a very low degree of distinctiveness, if any at all, as the relevant public will focus on the most distinctive component, ‘JOY’, of the contested sign. Consequently, the coincidence in the component ‘JOY’ is relevant and will be noticed by the relevant public. Therefore, the signs are visually and aurally similar to at least a low degree for the contested goods in Class 3 and similar to at least an average degree for the contested goods in Class 34.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements that comprise the marks. The signs are similar in that they both refer to the same meaning, on account of the coinciding distinctive component ‘JOY’. The signs differ in the meaning conveyed by the component ‘Vape’ of the contested sign, whose distinctiveness varies depending on the goods in question, as explained above. Therefore, the signs are conceptually similar to at least a low degree for the contested goods in Class 3 and conceptually similar to at least an average degree for the contested goods in Class 34.

The applicant claimed that the contested sign will be associated with ‘a state of happiness or pleasure caused by or experienced while vaping’, while the earlier mark will not create the same conceptual association. However, since the contested sign does not form any known conceptual unit or clear meaningful expression, only the meanings of its individual components will be understood. In the absence of any evidence that the contested sign will be perceived in the way described by the applicant, the applicant’s arguments must be set aside as unfounded.

Considering all the above, the signs are similar to a certain degree. The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks that is to say, to establish a link between them (23/10/2003, C‑408/01 Adidas, EU:C:2003:582, § 27, 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66). Therefore, it remains necessary to examine the other conditions stipulated in Article 8(5) EUTMR, that is, whether the relevant public establish a link between the earlier mark and the contested sign and if, in view of the link that the public would make between the marks, there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The opponent claimed that due to the reputation of the mark ‘JOY’, and because it is entirely reproduced in the contested sign, the contested sign ‘Vapejoy’ will bring the opponent’s reputed trade mark to the mind of the consumer.

As indicated previously, the earlier mark ‘JOY’ has a reputation for perfumery; perfume, eau de toilette, eau de Cologne in Class 3. It must be recalled that the contested goods, against which the opposition is directed, are the following:

Class 3: Mint for perfumery; essential oils; ethereal oils; ethereal essences; geraniol; perfumery; food flavourings [essential oils]; food flavorings [essential oils]; extracts of flowers [perfumes]; safrol; terpenes [essential oils]; aromatics [essential oils].

Class 34: Cigarettes; cigarette tips; cigarette filters; oral vaporizers for smokers; tobacco pipes; matches; lighters for smokers; flavourings, other than essential oils, for tobacco; flavorings, other than essential oils, for tobacco; flavourings, other than essential oils, for use in electronic cigarettes; flavorings, other than essential oils, for use in electronic cigarettes; electronic cigarettes.

The more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the contested sign is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark or is, or will be, detrimental to it (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67‑69; 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44).

In the present case, both signs are inherently distinctive, despite the presence, in the contested sign, of the verbal component ‘Vape’, which has a very low degree of distinctiveness for the goods in Class 34, if any at all. The earlier mark and the contested sign are similar due to the coinciding verbal element ‘JOY’, which is the sole element of the earlier mark and the second component of the contested sign. As can be seen from the assessment of the evidence of reputation, the earlier mark ‘JOY’ has been used alone or as an integral and omnipresent part of the opponent’s brand for many years and enjoys a degree of reputation among the relevant public.

Therefore, a link will inevitably be established when the contested sign is used in relation to perfumery in Class 3, which is identical to the opponent’s reputed goods. A link will also be established between the contested mint for perfumery; essential oils; ethereal oils; ethereal essences; geraniol; food flavourings [essential oils]; food flavorings [essential oils]; extracts of flowers [perfumes]; safrol; terpenes [essential oils]; aromatics [essential oils], which are used for scenting perfumery, cosmetic goods, including fragrances for rooms, in aromatherapy, and for adding flavour and aroma to food, and the opponent’s reputed goods. This is because a nice fragrance or pleasant smell is an important feature of all of these goods and may be one of the factors considered when choosing them. Moreover, it is quite usual for these goods to be sold in the same shops or neighbouring sections of supermarkets, and they may originate from the same undertaking. Therefore, considering that the entire earlier mark is contained within the contested sign, and the repute of the opponent’s mark, the contested sign ‘Vapejoy’, when seen on these goods, will bring the opponent’s reputed mark ‘JOY’ to the minds of the relevant consumers, and they may expect these goods to have the same or similar smell to the opponent’s perfume.

The contested goods in Class 34 are generally tobacco products and various smoker’s articles, which differ in nature and purpose and have different methods of use from the opponent’s reputed goods. However, both types of goods target the same general public. Moreover, it is common in the tobacco industry to manufacture various flavoured and aromatised tobacco products to enrich the smoking experience. Aromatic mixtures are used in electronic cigarettes, and consumers may select and buy various aromas and flavours to make vaping e-liquids that suit their taste best. The earlier mark’s reputation also includes the idea of scent and tobacco is quite widely used as an ingredient in perfumery. Furthermore, it has been set by the case-law that the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 54). Therefore, taking into account all the above, as well as the strong reputation of the earlier mark, the very low degree of distinctiveness, if any at all, of the verbal component ‘Vape’ of the contested sign for the goods in Class 34, and that the most distinctive component of the contested sign, ‘joy’, reproduces the entire earlier mark, it is likely that the contested sign may bring the opponent’s reputed mark ‘JOY’ to the minds of the relevant consumers, when seen in relation to the contested goods in Class 34, despite the fact these goods have no direct connection with the opponent’s reputed goods.

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

d) Risk of injury

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

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

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

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

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

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

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

Unfair advantage (free-riding)

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

The opponent based its claim on the following.

 The earlier mark ‘JOY’ is known for high quality perfumery products. Significant investments over several decades have been made in order to create and maintain its distinct image among consumers.

 It is very likely that the contested sign ‘Vapejoy’, intentionally or unintentionally, will benefit from the particular distinctiveness of the earlier mark and the reputation it possesses.

 There is a high risk that the image and repute of the earlier mark, ‘JOY’, will be transferred to the contested sign, ‘Vapejoy’, with the result that the marketing of those goods, commercialised under the contested sign, will be made easier by their association with the reputed earlier mark.

 The applicant will make a profit out of the similarity of the signs and will use the repute of the earlier mark to generate interest in their own goods, since the applicant is able to ‘free-ride’ on expenditure already undertaken by the opponent to promote the reputed mark and, therefore, substantially save on the expenditure required to promote and advertise their own goods to consumers.

 This constitutes taking an unfair advantage of the earlier trade mark, since the reward for the investment that it has made in promoting, maintaining and enhancing the trade mark belongs to the opponent alone.

The Opposition Division accepts the opponent’s arguments regarding the risk of unfair advantage as being serious and not merely hypothetical.

As can be inferred from the evidence submitted by the opponent, the ‘JOY’ brand has conveyed an image of luxury and stable success over the 80 years of its continuous and uninterrupted use and recognition achieved in the relevant market. The opponent is considered to be among the oldest companies in the perfume sector and the brand is known among both the general public and other professional operators in the perfume industry. The brand has been widely advertised in various kinds of public media and described in various articles and books.

As already established above, the relevant public will make an association between the opponent’s mark, which enjoys reputation for perfumery; perfume, eau de toilette, eau de Cologne, and the contested sign in relation to all the contested goods. There is a close connection between the opponent’s reputed goods and the contested goods in Class 3, which allows for some of the qualities of the opponent’s reputed goods to be attributed to those of the contested goods.

This association between the marks will enable the transfer of the attractiveness of the earlier mark to the contested sign. The ‘good’ and ‘special’ reputation of the earlier trade mark could positively influence the choice of consumers as regards the goods of other providers. The use of the contested sign in relation to perfumes, essential oils and other related goods in Class 3, which are closely related to the opponent’s reputed goods, can lead to a situation where consumers prefer the applicant’s goods to those of other competitors in the market, precisely because the contested sign includes the opponent’s mark ‘JOY’. Therefore, the Opposition Division considers that the special brand image, power of attraction and advertising value of the opponent’s trade mark can be misappropriated. This may stimulate the sales of the applicant’s goods in Class 3 to an extent that may be disproportionately high in comparison to the size of their own promotional investment and, consequently, lead to the unacceptable situation where the applicant is allowed to ‘free-ride’ on the investment of the opponent in promoting and building-up the value of their trade mark.

On the basis of the above, the Opposition Division concludes that, in view of the relevant public’s exposure to the opponent’s earlier mark in relation to the goods for which a reputation has been found, and insofar as the existence of a ‘link’ with the contested goods has been established, there exists a probability that the use without due cause of the contested sign in relation to the goods in Class 3 may acquire some unearned benefit and lead to free-riding, that is to say, it is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

As regards the contested goods in Class 34, the only argument put forward by the opponent was that the contested sign not only covers smoking-related goods in Class 34, but also perfumery goods in Class 3, which are the very heart of the opponent’s field of activity, and for which the ‘JOY’ trade mark enjoys repute and, therefore, this shows obvious bad faith on the part of the applicant, and its deliberate will to target the same public and take unfair advantage of the ‘JOY’ trade mark’s repute. However, even if use of the contested sign in relation to the goods in Class 3 is likely to take unfair advantage of the repute of the earlier trade mark, this does not automatically extend to the contested goods in Class 34. Although the earlier mark may be associated with the opponent’s reputed mark, and both marks share the same relevant public, there are no indications suggesting that the use of the contested trade mark for the goods in Class 34 will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Detriment to repute (tarnishing)

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

In this respect the proprietor of the earlier mark argued the following.

 Regarding the contested goods in Class 34, it is universally known that tobacco products are harmful to human health and cause diseases as well as addiction.

 For these reasons, provisions have been put in place in a number of countries, as well as at EU level, to regulate the packaging, advertising and display of tobacco products, as well as to reduce exposure to such goods.

 Smoking tobacco is a well-known health hazard that often leads to respiratory and cardiovascular diseases. Moreover, smoking can impair physical fitness long before these chronic diseases arise.

 Considering the above, the use of ‘JOY’ for tobacco products will negatively impact/affect the image connected to the opponent’s trade mark, or at least create an ‘unfortunate association’, since the negative connotations conveyed by the tobacco products of the contested mark contrast sharply with the specific image of the earlier mark and will undoubtedly tarnish its image and cause detriment to its reputation. See by analogy:

Consumers who choose to drink ‘CHIVAS REGAL’ will consider themselves people of good taste. It is easy to see, therefore, how the mark ‘CHIVAS’ used on ‘foodstuff for animals’ would serve to cheapen the renown of the mark ‘CHIVAS REGAL’ whisky. It would bring into an unfortunate association, a quality whisky with ‘foodstuff for animals’ because of the close similarity of the signs. Whisky is a product that is produced with great expertise and is matured over many years to the finest perfection. On the other hand, even the highest quality ‘foodstuff for animals’ (e.g. dog food), is generally perceived to be unfit for human consumption. The qualities associated with Scotch whisky, assiduously nurtured by the opponent, are simply not translatable to bulk food for farm animals, or to food for domestic animals. Therefore, in the Board’s opinion, the opposition based upon the provision of Article 8(5) CTMR, must succeed.

(26/03/2003, R 165/2002‑1, CHIVAS / CHIVAS REGAL § 60).

The French law strongly prohibits direct or indirect advertising in favor of tobacco products. In this sense, the Court of Appeal of Paris judged, in a decision involving the company BAT group Poland and company Belvedere that ‘tobacco brand owner and tobacco product manufacturer had to ensure, before filing a name as a trade mark, that the name was not already registered for goods other than tobacco. The company BAT group Poland acted in a causeless manner by filing a trade mark that includes the name ‘SOBIESKI’ for tobacco goods, whereas ‘SOBIESKI’ is a distinctive sign used by the company Belvedere that designate goods other than tobacco. The Poland Company could not ignore the provisions of the Public Health Code prohibiting any indirect advertising in favor of tobacco products and in doing so, the company Belvedere could no longer use the sign ‘SOBIESKI’ to designate its own products during campaigns advertising.’ (Translated from French). (SOBIESKY Vs. JAN III SOBIESKY, CA Paris, 4e ch. B, 19 déc. 2003, Sté BAT Group Poland and Sté Belvédère).

(25/04/2001, R 283/1999‑3, HOLLYWOOD / HOLLYWOOD).

 It is clear that the contested trade mark filed for tobacco products and goods related to the consumption of tobacco in Class 34 will not only impinge but also violate the opposing party’s prior rights on ‘JOY’, registered for goods in Class 3.

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

Therefore, in assessing whether use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods as indicated in the list for each trade mark. The harmful effects of use of the contested sign for the goods applied for must derive from the nature and usual characteristics of the relevant goods in general.

In addition to being an indication of origin, a trade mark may also serve to convey an image. This image becomes part of the sign through the use made of it as well as advertising, and may refer to the product’s qualities or to intangible values such as luxury, lifestyle, exclusivity, adventure and so on. It may result from the qualities of the goods or services for which it is used, but also from the proprietor’s reputation or other elements, such as the particular presentation of the product or service or the exclusivity of the sales networks (23/11/2010, R 240/2004‑2, WATERFORD STELLENBOSCH (fig.) / WATERFORD, § 87).

In the present case the earlier mark is reputed for perfumery; perfume, eau de toilette, eau de cologne in Class 3. As can be seen from the evidence, the opponent’s ‘JOY’ brand is among the oldest brands in the perfume sector, and has conveyed an image of luxury lifestyle, exclusivity and beauty for many years. In contrast, the contested goods are intrinsically linked to a very different image. Smoking tobacco is universally considered to be an extremely unhealthy habit, which directly contradicts the concept of luxury lifestyle or beauty, which are directly associated with well-being and health. Even though the contested goods also cover tobacco substitutes and electronic cigarettes, which may be considered less harmful, they are still far removed from the image of beauty, health or well-being. Therefore, the use of the contested sign, ‘Vapejoy’ for the goods in Class 34 is likely to prompt negative mental associations with the opponent’s earlier mark or associations conflicting with and detrimental to an image of beauty and well-being the earlier reputed mark conveys (12/03/2012, R 297/2011‑5, KAPPA/KAPPA et al, § 38).

On the basis of the above, the Opposition Division concludes that the use of the contested trade mark in relation to the goods in Class 34 is likely to be detrimental to the repute of the earlier trade mark.

Other types of injury

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

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in relation to the goods in Class 3 and be detrimental to the repute of the earlier trade mark in relation to the goods in Class 34. It follows that there is no need to examine whether the third type also applies.

e) Conclusion

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

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

COSTS

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

Since the applicant is the losing party, 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

Zuzanna STOJKOWICZ

Rasa BARAKAUSKIENĖ

Biruté SATAITE-GONZALEZ

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.