OPPOSITION No B 3 103 029

Beiersdorf AG, Unnastr. 48, 20253 Hamburg, Germany (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Dr. Willmar Schwabe GmbH & Co. KG, Willmar-Schwabe-str. 4, 76227 Karlsruhe, Germany (applicant).

On 18/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 103 029 is upheld for all the contested goods and services, namely:

Class 5: Pharmaceuticals; pharmaceutical preparations; nutritional supplements.

Class 10: Medical and veterinary apparatus and instruments.

Class 44: Medical services; human healthcare services.

2. European Union trade mark application No 18 080 405 is rejected for all the contested goods and services. It may proceed for the remaining goods and services, namely Classes 8 and 38.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 080 405 for the word mark ‘Nuvia’, namely against all the goods and services in Classes 5, 10 and 44. The opposition is based on, inter alia, European Union trade mark registration No 12 609 ‘NIVEA’ (word mark). The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM registration No 12 609, for which the opponent claimed repute in the European Union.

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in 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 11/06/2019. Therefore, the opponent was required to prove that the trade marks 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 1: Chemical products for industrial, scientific and especially pharmaceutical purposes; chemical products for preserving foodstuffs and for keeping foodstuffs fresh.

Class 3: Washing, cleaning and bleaching preparations; soaps; perfumery, essential oils and essences, cosmetics, including non-medicinal hygienic and cosmetic preparations, oral hygiene, skin-care and hair-care preparations and dentifrices.

Class 5: Pharmaceutical products for human and veterinary use and health-care preparations in all pharmaceutical forms; plasters, dressings, disinfectants.

The opposition is directed against the following goods and services:

Class 5: Pharmaceuticals; pharmaceutical preparations; nutritional supplements.

Class 10: Medical and veterinary apparatus and instruments.

Class 44: Medical services; human healthcare services.

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

On 29/06/2020 the opponent submitted, in particular, the following evidence:

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

Enclosures 2, 19

History and advertising over the years

 memorandum of reputation of the trade mark ‘NIVEA’ in the European Union, in which, notably, it is indicated that ‘NIVEA’ products have been sold in the European market since 1911.

 copy of a book entitled NIVEA Crème: 100 Years – Skincare for Life, in English, published in 2011 and telling the story of the ‘NIVEA’ brand. The evidence mentions, inter alia, the ‘Nivea Houses’ and the services offered (The first Nivea Haus was opened in 2006 in Hamburg. The wellness center receives more than 700 visitors per day. The Nivea Houses in Hamburg, Berlin and Dubai offer consumers the chance to experience NIVEA up close and personal. These Houses are places of relaxation and wellbeing. The Nivea House is open to men, too, with many special services on offer – from shaving and cosmetic treatments to a full-body spa treatments. Modern technology enables us to determine each individual hair and skin type so that we can recommend the right product for everyone.). Further references are made to the ‘Nivea’ homepage and ‘Nivea’ apps (The Nivea homepage was first launched in 1977. Even back then it offered its consumers a comprehensive services, providing exciting texts [...]. Experts gave tips for special skin types, beauty and fitness. In the year of the company’s 100^th birthday, there are 58 country-specific Nivea homepages in more than 30 languages. Nivea apps are also available.).

Promotion of NIVEA

 copy of a book entitled NIVEA: Evolution of a World-Famous Brand, in English, published in 2001 and telling the story of the NIVEA brand. In particular, various products commercialised under the trade mark ‘NIVEA’ regularly since 1911 are mentioned, such as skincare preparations, haircare preparations and treatments, hair removal and shaving preparations, bath preparations, soaps and gels, make-up, and deodorants and antiperspirants, some of which are depicted with their packaging. Moreover, numerous advertising materials, such as posters, printouts and TV spots, for the aforementioned ‘NIVEA’ products are included or illustrated, some targeting the public worldwide and some particular countries, such as Germany (1912, 1913, 1919, 1922, 1923, 1924, 1925, 1928, 1930, 1932, 1931, 1937, 1950, 1967, 1971, 1973, 1975, 1978, 1988, 1993, 1996, 2000), Spain (1930), France (1937, 1954), the United Kingdom (1939, 2000), Sweden (1943, 1986), Portugal (1936), Belgium (1936, 1989), Finland (1966), Italy (1979), the Netherlands (1986, 1988) and Greece (1988).

 10 undated advertisements in German for ‘NIVEA’ cream.

 1960 advertisement in Italian showing the trade mark ‘NIVEA’ in relation to cosmetics.

 1989 ‘NIVEA’ advertising campaign in Austria including photographs of ‘NIVEA’ product displays.

 1996 ‘NIVEA’ advertising campaign in Austria including photographs of various ‘NIVEA’ products and ‘NIVEA’ product displays.

 2001 ‘NIVEA’ advertising campaign in German.

 1922 catalogue entitled ‘P. Beiersdorf & Co. A.-G. Fabbrica di prodotti chimici AMBURGO’, in Italian, in which various ‘NIVEA’ products are listed.

 undated advertisement in Italian for ‘NIVEA’ cream.

 1997 leaflet in Italian about ‘NIVEA’ sun protection products.

 2003 ‘NIVEA’ catalogue in Italian showing various products such as creams, cosmetics, deodorants, shaving products, bath products, haircare products and sun protection products.

 1936 ‘Beiersdorf N.V.’ catalogue in Dutch showing various products.

 1976 advertising campaign in Dutch for ‘NIVEA’ body milk.

 1992 advertising campaign in Dutch for ‘NIVEA’ cream.

 2003 advertising campaign in Dutch for ‘NIVEA’ cream.

 excerpts from the website www.nivea.de in German with English translations about the Nivea Haus spas in Hamburg and Berlin, offering ‘NIVEA’ products for sale, as well as spa services.

 printouts of various ‘NIVEA’ websites’ home pages dated 2010 for the United Kingdom, Sweden, Spain, Slovenia, Slovakia, Romania, Portugal, Poland , Norway, the Netherlands, Lithuania, Latvia, Italy, Ireland Hungary Greece, Germany, France, Finland, Estonia, Denmark, the Czech Republic, Bulgaria Belgium and Austria.

Nivea’s Market Position

 Table showing market shares for several European countries for 2010 for skin products (hand and body) by the research institutes A.C. Nielsen and IRI. The trade mark ‘NIVEA’ has a leading position in Belgium, Spain, France, Germany, the United Kingdom, Italy, Ireland, the Netherlands, Portugal, Denmark, Sweden, Finland, Bulgaria, the Czech Republic, Hungary, Croatia, Poland, Romania, Slovakia, Slovenia.

 Tables by the research institutes A.C. Nielsen and IRI showing the market position of the trade mark ‘NIVEA’ in 2010 for several European countries for various categories of products such as skincare, facial skincare, sun protection, men’s products, deodorants, bath products, hair products, lip care and baby products. In particular, the trade mark ‘NIVEA’ possesses a leading position for several types of products such as:

 skincare products in Austria, Belgium, Germany, France, Spain, Italy, Ireland, the United Kingdom, Portugal, the Netherlands, Sweden, Denmark, Finland, Bulgaria, the Czech Republic, Hungary, Croatia, Poland, Romania, Slovakia and Slovenia;

 facial skincare products in Austria, Belgium, Germany, France, Italy, the Netherlands, Portugal, Sweden, the Czech Republic, Croatia, Poland, Slovakia and Slovenia;

 sun protection products in Austria, Belgium, Germany, Spain, France, Italy, Portugal, the Netherlands, Sweden, Denmark, Finland, Hungary and Poland;

 men’s products in Austria, Germany, Spain, the United Kingdom, Italy, the Netherlands, Portugal, the Czech Republic, Hungary, Croatia, Slovakia and Slovenia;

 deodorants in Austria, Germany, the Netherlands, Portugal, the Czech Republic, Hungary, Croatia, Poland, Romania, Slovakia and Slovenia.

 An affidavit dated 10/06/2003 by the head of market research at Beiersdorf AG, stating that the documents submitted in Annexes 2‑17 come from the independent companies A.C. Nielsen and IRI and refer to the mass market for the product types in question in the countries specified.

 A 2013 brand health tracking report on the trade mark ‘NIVEA’ in Germany by the market research company Harris Interactive. The study was conducted from 16/04/2013 to 26/04/2013 in relation to skin and body care products. In particular, the report shows that more than 80% of respondents had used ‘NIVEA’ products. More than 30 % of the respondents stated that they mainly used ‘NIVEA’ products.

 A brand health tracking report on the trade mark ‘NIVEA’ in France by the market research company Harris Interactive. The study was conducted from 22/04/2013 to 06/05/2013 on 1 000 women aged 15 to 70 years who used skin and body care products. In particular, the report shows that when asked which skin and body care brands they knew, almost 30 % of the women mentioned the trade mark ‘NIVEA’ first, even if they only knew it by name. Moreover, almost 70 % mentioned that trade mark spontaneously in their responses, and 99 % of the remainder knew the trade mark ‘NIVEA’ when it was suggested to them. Furthermore, 80 % of the respondents had used ‘NIVEA’ products. More than 20 % of the respondents stated that they mainly used ‘NIVEA’ products.

 A report entitled ‘NIVEA in Europe – awareness – likeability – usage’ by the market survey institute Kai Voss Brand Equity Insights GmbH. The study was conducted between 1994 and 2002 in Germany, Austria, Belgium, Spain, France, Italy, the Netherlands, Portugal and the United Kingdom on samples varying from 500 to approximately 1 000 people. In particular, the report shows a high degree of public awareness of the ‘NIVEA’ trade mark in all the abovementioned countries between 2000 and 2002, both in terms of spontaneous awareness (between 55 % and 83 %) and aided awareness (between 91 % and 100 %). Moreover, most respondents had used ‘NIVEA’ products, more than 50 % in France, Spain and the Netherlands; more than 60 % in Germany, Austria and Portugal; and more than 70 % in Italy and Belgium.

 A questionnaire, in German, used in the survey, the results of which are presented in previous evidence.

Enclosure 2, 25

 Extracts from a 2002 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German ( with English translations of parts thereof). The report presents the results of a study of 5 010 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the cosmetics sector, ‘NIVEA beauté’ products were known by more than 70 % of the respondents and used by almost 30 %. Moreover, in the facial care sector, ‘NIVEA Visage’ products were known by more than 80 % of the respondents and used by 30 %. The skin cream products ‘NIVEA Body’ and ‘NIVEA Creme’ were known by more than 70 % and 80 % of the respondents, respectively, and used by more than 30 %. ‘NIVEA’ hair and bath products were known by more than 70 % and 80 % of the respondents, respectively, and used by more than 20 % and 30 %. Finally, ‘NIVEA’ deodorant was known by more than 80 % of the respondents and used by more than 30 %.

 Extracts from a 2004 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German. The report presents the results of a study of 6 608 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the cosmetics sector, ‘NIVEA beauté’ products were known by more than 70 % of the respondents and used by almost 30 %. Moreover, in the facial care sector, ‘NIVEA Visage’ products were known by more than 80 % of the respondents and used by 30 %. The skin cream ‘NIVEA Creme’ was known by more than 80 % of the respondents and used by more than 30 %. ‘NIVEA’ hair and bath products were known by more than 70 % and 60 % of the respondents, respectively, and used by approximately 20 %. Finally, ‘NIVEA’ deodorant was known by more than 70 % of the respondents and used by more than 20 %, and ‘NIVEA’ sun protection products were known by more than 70 % of the respondents and used by more than 30 %.

 Extracts from a 2006 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German. The report presents the results of a study of 5 054 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the cosmetics sector, ‘NIVEA beauté’ products were known by more than 70 % of the respondents and used by almost 30 %. Moreover, in the facial care sector, ‘NIVEA Visage’ products were known by more than 80 % of the respondents and used by 30 %. The skin cream ‘NIVEA Creme’ was known by more than 80 % of the respondents and used by more than 30 %. ‘NIVEA’ hair and bath products were known by more than 70 % and 60 % of the respondents respectively, and used by more than 20 %. Finally, ‘NIVEA’ deodorant was known by more than 80 % of the respondents and used by more than 30 %, and ‘NIVEA’ sun protection products were known by more than 70 % of the respondents and used by more than 30 %.

 Extracts from a 2008 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German. The report presents the results of a study of 5 082 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the cosmetics sector, ‘NIVEA beauté’ products were known by more than 80 % of the respondents and used by more than 30 %. Moreover, in the facial care sector, ‘NIVEA Visage’ products were known by more than 80 % of the respondents and used by 30 %. The skin cream ‘NIVEA Creme’ was known by more than 80 % of the respondents and used by more than 30 %. ‘NIVEA’ hair and bath products were known by more than 80 % of the respondents and used by more than 20 % and 40 %, respectively. Finally, ‘NIVEA’ deodorant was known by more than 80 % of the respondents and used by more than 30 %.

 Extracts from a 2010 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German. The report presents the results of a study of 5 047 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the cosmetics sector, ‘NIVEA beauté’ products were known by more than 80 % of the respondents and used by 30 %. Moreover, in the facial care sector, ‘NIVEA Visage’ products were known by more than 80 % of the respondents and used by almost 30 %. The skin cream ‘NIVEA Creme’ was known by more than 80 % of the respondents and used by more than 30 %. ‘NIVEA’ hair and bath products were known by more than 80 % of the respondents and used by more than 20 % and 40 %, respectively. Finally, ‘NIVEA’ deodorant was known by more than 80 % of the respondents and used by more than 30 %, and ‘NIVEA’ sun protection products were known by more than 70 % of the respondents and used by more than 30 %.

 Extracts from a 2012 report entitled ‘Brigitte Kommunikations Analyse’, originating from the German magazine Brigitte, in German and English translations of parts thereof. The report presents the results of a study of 5 026 German women aged 14 to 64 years conducted by MMA Media Markt Analysen and IPSOS. It shows that in the facial care sector, ‘NIVEA Visage’ products were known by more than 70 % of the respondents and used by almost 20 %. The skin cream ‘NIVEA Creme’ was known by more than 80 % of the respondents and used by 30 %. ‘NIVEA’ hair and bath products were known by almost 80 % and 90 % of the respondents, respectively, and used by more than 20 % and 40 %. Finally, ‘NIVEA’ deodorant was known by 90 % of the respondents and used by more than 30 %, and ‘NIVEA’ sun protection products were known by more than 70 % of the respondents and used by more than 30 %.

Enclosure 2, 26-41

 Extracts dated 22/11/2010 from the Gruner+Jahr Medien website www.gujmedia.de showing the print circulation of the German magazine Brigitte, namely 859 957 copies.

 Extract of a 2006 article relating to the history of the trade mark ‘NIVEA’, in English, from the Business 2000 website www.business2000.ie , a resource centre for studies.

 Extract of an undated article about ‘NIVEA’ marketing development from the Times 100 website www.thetimes100.co.uk, a resource centre for business studies.

 Article about ‘NIVEA’ cream in English, dated 11/09/2013, from the website www.dailymail.co.uk.

 Results of the 2007 Reader’s Digest Trusted Brands survey from the website www.rdtrustedbrands.com; the survey of 293 631 voters was conducted in 2007 in 15 European countries. The trade mark ‘NIVEA’ was notably the most ‘trusted brand’ for an unknown category in Austria from 2004 to 2007; in Belgium from 2001 to 2005; in the Czech Republic in 2001 and 2002; in France, Hungary, the Netherlands, Spain and Poland in 2001; in Germany in 2001 and 2007; and in Portugal in 2001 as well as from 2005 to 2007.

 Article in English, dated 06/10/2005, from the website >www.ameinfo.com about ‘NIVEA’ having been voted the most trusted skincare and cosmetics brand by participants in the Reader’s Digest European Trusted Brands survey. The study was conducted in 2005 on 24 832 men and women in 14 European countries.

Enclosure 2, 31

 Results of the 2010 Reader’s Digest Trusted Brands survey in the cosmetics category from the website www.rdtrustedbrands.com. The trade mark ‘NIVEA’ was the most trusted brand in Austria, Belgium, the Netherlands, Poland, Portugal and Romania.

 An undated article entitled ‘Focus on Brandz^TM Germany’ by the Branding-Institute, stating that the trade mark ‘NIVEA’ was 12th among the 20 most loved brands out of 410 brands assessed in Germany in 2007.

Awards

 Awarded TOP brand 2010 in the category body care by the ‘Lebensmittelzeitung’ for its ‘NIVEA diamond Touch Creme öl Dusche’; the ‘NIVEA Volume Sensation Haaransatz Booster’ was awarded the ‘Glammy 2010’, being selected by the readers of the magazine Glamour as the best Hairstyling product; and the ‘NIVEA silk comfort Tagespflege’ came in first in a 2008 face care product test conducted by the well-known, independent product testing institute ‘Stiftung Warentest’.

 A 1999 report of a ‘legal survey on body care’ by INRA Deutschland. In the 1999 survey, the respondents associated the packaging with the trade mark ‘NIVEA’. In the United Kingdom, Italy, Spain, Germany, Denmark, the Netherlands and France, the majority of respondents associated the packaging with the trade mark ‘NIVEA’.

 A list of rankings from the website www.rankingthebrands.com in which the trade mark ‘NIVEA’ appeared alongside its position in each case. For example, the trade mark ‘NIVEA’ was ranked first in the list ‘Best Product Brands Germany’ by Das Deutsche Markenranking in 2013 and second in the list ‘Germany’s Top 10 Most Meaningful Brands’ by Havas Media in 2013.

 Lists of best global brands for 2001-2010 by Interbrand from the website www.interbrand.com, the magazine Business Week (issues dated 06/08/2001 and 06/08/2007) and the magazine’s website, http://bwnt.businessweek.com. ‘NIVEA’ was ranked, for example 87th in 2010, 86th in 2009, , 96th in 2007, 99th in 2006, 98th in 2005, 97th in 2004, 92nd in 2003, 91st in 2002 and 87th in 2001.

 A report entitled ‘Best brands 2013’ by Deutsche Marketing, in German, with English translations of parts. The winner of the best product brand is the trade mark ‘NIVEA’.

 Article in German from the magazine Wirtschafts Woche, dated 06/02/2013 (with English translations of parts) about a 2013 best brands survey in which the trade mark ‘NIVEA’ is mentioned.

Enclosure 2, 37

 ‘Top 100 Most Valuable Global Brands 2010’ by Brandz. In the ‘personal care’ category, the trade mark ‘NIVEA’ was 5th out of 15.

 ‘Top 100 Most Valuable Global Brands 2013’ by Brandz. In the ‘personal care’ category, the trade mark ‘NIVEA’ was 4th out of 15.

 Document listing the winners of the 2007 Superbrands awards in Germany, one of which was the trade mark ‘NIVEA’.

 Extracts from the book The Talented Mr. Ripley by Patricia Highsmith, in which the trade mark ‘NIVEA’ is mentioned twice.

Reputation in Poland (market survey)

 The market survey institute GfK SE conducted a survey that shows consumer’s awareness of the NIVEA brand. A consumer survey related to NIVEA MAN, conducted in October 2014 on a valid sample of 1 000 Polish male consumers aged 16 to 60.

 A market survey showing awareness of Polish consumers of NIVEA represented by white lettering on a blue background in 2014 and 2015, respectively.

Enclosure 3

Decisions taken at the EUIPO and at national level acknowledging the reputation of the NIVEA trade mark.

Enclosure 3

Decisions at EUIPO and national level acknowledging the reputation of the NIVEA trade mark.

Analysis of the evidence

When assessing reputation, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered. Account must also be taken of factors such as, inter alia: the market share held by the mark, intensity, geographical extent and duration of its, the amount invested by the undertaking in promoting the mark, and the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

As a preliminary remark, the evidence submitted by the opponent relates to several kinds of goods, such as:

 skincare products, including creams

 cosmetics

 bath products including soaps

 haircare products

 deodorants

 sun protection products.

The opponent submitted documents stating that the abovementioned goods have been continuously marketed in Europe under the trade mark ‘NIVEA’ since 1911. Several items of evidence attest to this long-standing and regular use of the ‘NIVEA’ trade mark in Europe, such as the marketing and advertising materials and the tables of market shares.

The opponent also submitted evidence that the ‘NIVEA’ trade mark has been used throughout the entire European Union, including advertising and marketing materials, tables of market shares and reports on public awareness of the ‘NIVEA’ mark. These all relate to various countries including Austria, Belgium, Croatia, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. In particular, it should be noted that the opponent submitted a substantial amount of evidence concerning Germany.

Furthermore, the opponent submitted evidence of the intensity of use of the ‘NIVEA’ trade mark, in particular the tables of market shares. Although actual numbers cannot be disclosed for reasons of confidentiality, the ‘NIVEA’ trade mark appears to have had a leading position on the skincare products market of several Member States of the European Union during the relevant period. Therefore, the ‘NIVEA’ trade mark has been subject to widespread, long-standing and regular use in the European Union.

As for the public awareness of the trade mark ‘NIVEA’, the opponent submitted various kinds of marketing and promotional materials, such as advertisements, catalogues, leaflets, website extracts and examples of marketing operations. Moreover, the opponent submitted several reports and surveys from independent sources showing a high degree of public awareness of the trade mark ‘NIVEA’ throughout Europe in relation to cosmetics and skincare products, whether spontaneous or aided. Finally, the opponent submitted items of evidence of the recognition of the trade mark ‘NIVEA’ as a renowned and trusted brand in Europe through its presence in various brand rankings and the numerous awards it has won. Therefore, due to the substantial investment made in promoting ‘NIVEA’ products, and the aforementioned evidence of knowledge and recognition of the trade mark ‘NIVEA’ by professionals and the general public, the Opposition Division is of the opinion that the public in the European Union has a very high degree of awareness of the trade mark ‘NIVEA’.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The volume of sales shown by the evidence and the various references in the press to its success unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to washing and cleaning preparations and soaps; cosmetics, including non-medicinal hygienic and cosmetic preparations, skin-care and hair-care preparations, in Class 3, whereas there is no reference to the remaining goods.

b) The signs

NIVEA	Nuvia
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).

Both signs are word marks that do not have any dominant (visually eye-catching) element. Furthermore, the protection of a word mark concerns the word as such, as long as the depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. The fact that the contested sign is depicted in lower-case letters is, therefore, immaterial.

The earlier mark has no meaning with regard to the relevant goods and is, therefore, of normal distinctive character. The contested sign comprises the verbal element ‘Nuvia’, which does not have any particular meaning for the relevant public. Therefore, it is also distinctive to a normal degree.

Visually and aurally, the signs coincide in the letters ‘N*V*A’ depicted in the same order and place in both signs. Additionally, the signs are identical lengths and coincide in the position of three out of five letters. The signs differ in two vowels, ‘I’ and ‘E’ of the earlier mark versus ‘u’ and ‘i’ of the contested sign. Taking into account the above considerations, the signs are visually and aurally similar to an average 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 examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some degree. 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.

In the present case, it has been established above that the earlier mark enjoys a high degree of reputation in the EU, where its recognition is the result of its long-standing and intensive use. In this respect, case-law has established 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, when encountering 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).

Furthermore, it has been established that the signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods and services. It should be noted in this respect that the Court of Justice has stated that Article 8(5) EUTMR expressly covers cases where the goods or services are not similar (07/05/2009, C‑398/07 P, Waterford Stellenbosch, EU:C:2009:288, § 34). Therefore, the dissimilarity between the goods designated respectively by the marks at issue is not a sufficient factor for excluding the existence of a link between those marks. Indeed, the existence of such a link must be assessed globally by taking into account all of the relevant factors of the case (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 41 and 42; 06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 21).

The existence of similarity between the goods and services at issue is not conclusive to determine whether a link may be established, but numerous additional factors should be taken into account. In the present case, the contested goods and services and the opponent’s goods do have relevant points of coincidence.

The goods in Class 5 are all items that the entire population needs, uses and, therefore, purchases on a very regular basis. As seen from the above, the earlier mark’s reputation is particularly strong and it may be reasonably expected that the consumers of the contested goods have been widely exposed to it. Consequently, while consumers may not be confused when encountering the contested sign, the fact remains that, because of the similarities between the signs, it is quite likely that when they see the contested mark in relation to these goods, it will bring to mind the reputed brand, at least for the public that does not see any meaning in the contested mark, which is a significant part of the EU public.

The relevant public of the goods under comparison coincides. For example, pharmaceutical preparations; nutritional supplements are inexpensive and can be easily acquired online or in pharmacies. Therefore, many of the contested goods target both a professional public and the public at large, depending on specific factors of the contested goods, such as those for healthcare. Some of the contested goods coincide at least to a minimal level with the opponent’s goods, as they also target the public at large. These products in Class 5, and the opponent’s goods, may be manufactured by the same undertakings. They also coincide in their distribution channels and are offered on adjacent shelves in stores, pharmacies and supermarkets. As explained above, the goods at issue target the public at large and professionals.

Although the contested goods in Class 10, medical and veterinary apparatus and instruments, might not coincide in their relevant public with the opponent’s goods, the Court of Justice has held that certain marks may have acquired such a reputation that goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. For the purposes of assessing where there is a link between the conflicting marks, it may therefore be necessary to take into account the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51-54).

Even if they are not produced or offered by the same kind of undertakings, they do coincide in that they are all used in relation to the outer appearance of the human body. In addition, the public that they target can coincide.

The services in Class 44 are different in their nature from the goods for which the earlier mark has a reputation. However, they are all intended to improve or maintain health, well-being and beauty, so they may serve a similar purpose. Providers of medical services or cosmetic treatments may also offer their clients beauty care products for use at home. Consequently, the goods and services may have the same distribution channels, target the same end consumers and the same business operators can provide both the service and the products. The applicant’s goods and services are also likely to be offered in connection with the goods of the earlier mark for which reputation has been proven. For instance, consumers often need to use certain cosmetic products (e.g. skincare lotions) during or after a cosmetic treatment, such as the contested services in Class 44, which are also complementary.

Article 8(5) EUTMR grants protection for registered trade marks not only as regards identical/similar goods but also in relation to dissimilar goods/services without requiring any likelihood of confusion.

Considering the above, given the similarities between the marks and the reputation of the earlier mark in connection with the goods in Class 3, it must be concluded that when encountering the contested mark in relation to the contested goods in Classes 5 and 10 and services in Class 44, the relevant consumers, even with a higher level of attention, will be likely to associate it with the earlier sign. They will be likely to establish a mental ‘link’ between the signs due to the reputation of ‘NIVEA’.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

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

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

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

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

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

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

The opponent claims that use of the contested trade mark would take unfair advantage of and be detrimental to the distinctive character and reputation of the earlier 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 proprietor of the earlier mark bases its claim on the following.

 The use of the contested mark will take unfair advantage of the reputation of the earlier marks, in that it enhances the consumers’ readiness to take note of, and trust in, the products marketed under the contested mark.

 In the case at issue there is a clear risk that the goodwill of the earlier marks, their reputation and high-quality image, will be transferred to the goods and services covered by the contested mark, with the result that the marketing of those goods and services is made easier by the association with the earlier mark’s reputation.

 Furthermore, the risk of a sign taking unfair advantage of a reputed mark is particularly high if the marks target the same relevant public (16/04/2008, T‑181/05, Citi, EU:T:2008:112, § 82), as is the case here with the personal care sector.

 We have shown that the earlier marks enjoy an outstanding reputation in the personal care sector. It follows from the evidence submitted with this brief that, with respect to personal care products, the earlier word and logo marks are widely known in the territory of the European Union and seen by consumers as a synonym for quality, trust, reliability, protection, care and good value. The ensuing image transfer would facilitate the sale of the contested goods and services. This would take unfair advantage of the long-standing efforts of the opponent regarding the marketing and quality control of its goods.

According to the Court of Justice of the European Union

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

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

The Opposition Division notes that the earlier mark enjoys a high degree of reputation in the European Union in connection with washing and cleaning preparations and soaps; cosmetics, including non-medicinal hygienic and cosmetic preparations, skin-care and hair-care preparations in Class 3. The mark has built up and maintained the reputation of the ‘NIVEA’ trade mark in the European market since 1911 and the high degree of public awareness and recognition of it.

Bearing in mind the link between the goods in question, as established above, the strong reputation of the earlier mark and the similarities of the signs, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to all the contested goods. Indeed, the accumulation of all of the above factors makes it quite likely that the contested sign recalls in the minds of the public the earlier mark and, therefore, misappropriates its attractive powers and advertising value.

The attractive power of a distinctive sign has various dimensions and aspects and even if consumers are not likely to directly confuse the two signs, the reminiscences that the contested sign might provoke of this widely-known brand, and the positive image it possesses, would inevitably compel consumers to further explore the contested mark and the goods offered under it. This way, the contested mark will already unfairly benefit from the promotional efforts and continuous investments of the opponent in creating and preserving the positive image of its mark.

On the basis of the above, it is concluded that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

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

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark.

It follows that there is no need to examine whether other types also apply.

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

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

Peter QUAY

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.