OPPOSITION Nо B 3 102 387

 

Azzaro Mugler Beauté, 14 rue royale, 75008 Paris, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative) 

 

a g a i n s t

 

Palm Angels S.R.L., Via Daniele Manin 13, 20121 Milano, Italy (applicant), represented by Cuccia & Simino S.R.L., Corso di Porta Romana, 23, 20122 Milano, Italy (professional representative).

On 24/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 102 387 is upheld for all the contested goods namely: Class 3: Eau de Cologne; Scented water; Toilet water; Aromatics for perfumes; Fragrances; Perfumery; Perfumes; Cosmetics in the form of creams; Deodorants and antiperspirants; Shower and bath foam; Make-up; Hair preparations and treatments; Bath preparations; Hair removal and shaving preparations; Cleaning preparations for personal use; Skin care preparations; Air fragrancing preparations; Sachets for perfuming linen.
2.		European Union trade mark application No 18 098 809 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 098 809 (figurative mark), namely against some of the goods in Class 3. The opposition is based on, inter alia, French trade mark registration No 1 685 045 ‘ANGEL’ (word mark). The opponent invoked Article 8(1)(b) and (5) EUTMR.

 

 

REPUTATION — ARTICLE 8(5) EUTMR

 

The opposition is based on several trade marks, inter alia French trade mark registration No 1 685 045, in relation to which the opponent claims Article 8(5) EUTMR. In the notice of opposition filed on 05/11/2019, these grounds are not indicated in relation to the European Union trade mark and the international registration designating Benelux, Austria, Germany, Italy and Portugal on which the opposition is also based. It is only in its further observations submitted on 24/03/2020 that the opponent refers for the first time to the reputation of its trade marks in territories other than France. These new claims are not admissible as the scope of the opposition can only be extended within the opposition period which in this case expired on 05/11/2019

 

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 France.

 

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 file  on 23/07/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in France 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, cosmetics, hair lotions. beauty products 

The opposition is directed against the following goods:

Class 3: Eau de Cologne; Scented water; Toilet water; Aromatics for perfumes; Fragrances; Perfumery; Perfumes; Cosmetics in the form of creams; Deodorants and antiperspirants; Shower and bath foam; Make-up; Hair preparations and treatments; Bath preparations; Hair removal and shaving preparations; Cleaning preparations for personal use; Skin care preparations; Air fragrancing preparations; Sachets for perfuming linen.

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 24/03/2020 the opponent submitted the following evidence:

 

Annex 1: printouts from Wikipedia and other websites, in English, as follows:

- Wikipedia extract, which bears the date of 08/07/2015, concerning Thierry Mugler referred to as an internationally recognized designer of clothing since the 1980-1990, who launched his first perfume, called ‘Angel’ in 1992. The summary table under the photograph indicates that he is a fashion and perfume designer who is ‘known for Angel fragrance, perfumes’. The perfume is described as containing a combination of praline and chocolate mixed with a strong accord of patchouli, being part of a new fragrance type called ‘gourmand’. The article refers to the characteristic bottle of the perfume, in the shape of a faceted star. It indicates that the perfume was subsequently declined into a male version called ‘Angel Men’ with notes of caramel, coffee, vanilla, patchouli and honey. It also mentions that ‘Angel’ and another perfume of the designer, ‘Alien’, together produce about USD 280 million in sales annually.

- extract from http://www.basenotes.net dated July 2015 entitled ‘Angel (1992) by Thierry Mugler’, which indicates that the perfume for women was launched in 1992.

- extract from http://www.fragrantica.com printed in July 2015, indicating that the base notes of the perfume ‘ANGEL’ are tonka bean, amber, patchouli, musk, vanilla, dark chocolate and caramel and that Angel by Thierry Mugler was launched in 1992 and was the winner of the award FiFi Award Hall of Fame 2007.

- extract from https://www.nstperfume.com consisting of an article posted in September 2005 which refers to the new fragrance from Thierry Mugler called Alien and mentions that the previous perfume ‘Angel’ has been ‘so widely worn, and so widely copied that it is difficult now to remember how distinctive it was considered upon its release’. The article also refers to the perfume’s ‘blockbuster debut’.

Annex 2: documents (sources unknown) to evidence the collaboration of the opponent with celebrities acting as ambassadors of its perfume ‘ANGEL’, namely models and actresses including Estelle Lefébure in 1992, Jerry Hall in 1995, Naomi Watts in 2008 and Eva Mendes in 2011 as well as Georgia May Jagger since 2014 (including a list of these celebrities and undated pictures of the advertisements for the perfume ‘ANGEL’ in which they appear). The star-shaped bottle is visible in almost all of them as well as, prominently, the trade mark ’ANGEL’).

Annex 3: press articles dated October-December 2011 illustrating the collaboration with actress Eva Mendes as published in magazines distributed in Italy, Austria, Germany, the Netherlands and France.

As regards France, the articles are from the magazines ‘L’Officiel’, ‘Marie-France’, ‘Elle’, ‘Commerce International’, Version Fémina’, ’Paris-Match’, ‘Psychologies’, ‘Direct Matin’, ‘Gala’.

The article from ‘L’Officiel’ refers to the ‘mythique parfum Angel’, the article from ‘Version Fémina’ uses the word ‘cultissime’ by reference to the star shaped bottle of the perfume ‘Angel’.

An article from an Italian magazine (‘Reve’), dated September 2011 refers to the ‘fragranza culto di Thierry Mugler Angel’. Another from ‘L’Officiel’ in Dutch mentions the ‘legendarishe parfum Angel’ and the same word is used in ‘Beauty & You’ distributed in Belgium (‘légendaire parfum Angel de Thierry Mugler’).

Several articles use the words ‘gourmet’ or ‘gourmand’ when describing the perfume itself.

Annex 4: articles from magazines distributed in various EU countries (Italy, Germany, Belgium, Netherlands, France) concerning the 20th anniversary of the perfume ‘ANGEL’ in 2012, dated September 2012-January 2013.

As regards France the magazines are: ‘BE’ which refers to the perfume Angel as a ‘best seller’ and mentions the ‘révolutions Angel’, ‘VOTRE BEAUTE’, ‘LE FIGARO’, ‘CULTE(S)’ ‘PARIS CAPITALE’, ‘Le Nouvel Observateur’, ‘Madame Figaro’, ‘Glamour’, ‘L’EXPRESS STYLES’ (article entitled ‘Angel… Une star signée Mugler’), ‘Gala’, ‘AVANTAGES’, ‘Marie Claire’ (the article includes the expression ‘produit culte’ as regards the perfume ‘Angel’). As in the previous annex, the word ‘gourmand’ is used to qualify the fragrance in some of these articles.

An article from a magazine in German (‘Stern’)’ reads: ‘Spektakulär sind die FLAKONS des Bestsellers „Angels“.

Annex 5: articles from magazines distributed in various EU countries, dated 2013, concerning the perfume ‘ANGEL’. As regards France, the magazines are ‘La Tribune’, ‘Paris Match’, ‘La Parisienne’, ‘Gala’, ‘L’Officiel’, ‘Glamour’, ‘BE’, ‘Biba’, ‘Ici Paris’, ‘Maxi’, ‘Marie-France’. An article in German in ‘Grazzia’ uses the expression ‘Kultparfum’, another in Italian in ‘Vanity Fair’ refers to ‘il mitico profumo’.

Annex 6: articles from magazines distributed in several EU countries concerning the collaboration with Georgia May Jagger in relation to the perfume ‘Angel’, dated May-October 2014. For France, the magazines are ‘Gala’, ‘Elle’ and ‘Grazia’. The opponent indicates the circulation numbers of the magazines. (‘Gala’ approximately 350 000, ‘Elle’ approximately 380 000, ‘Grazia France’ approximately 190 000).

Annex 7: articles from countless magazines distributed in various EU countries concerning the fact that Georgia May Jagger became the ‘face’ of the perfume ‘Angel’, dated November 2014-April 2015. They feature interviews of the model mentioning her collaboration with the perfume. As regards France, the magazines are ‘Paris Match’ (circulation 600 000), ‘Biba’ (circulation 340 000) which refers to ‘Angel’ as a ‘parfum iconique’, ‘Marie-Claire (circulation 180 000), ‘Glamour’ (circulation 320 000), or the websites ‘Abc-luxe com France’, ‘ParisMatch.com France’.

Information regarding the impact of an event organized in Paris around the perfume ‘ANGEL’ called ‘Beware of Angels’, on 30/01/2015, with Georgia May Jagger and her mother Jerry Hall as guest-stars and with the participation of some other French celebrities. This section of the annex includes a large number of screenshots from social networks (referring to 850 publications on Instagram and 500 tweets in twitter), numerous articles in French online magazines such as ‘Public’, ‘Gala, ‘Pure people’, ’Elle’, ‘Paris Match’ etc. and in French blogs. An article published on the website of ‘L’Officiel’ on 02/02/2015 refers to the ‘cultissime Angel’, another on the online version of ‘Public’ dated 03/02/2015 mentions the ‘parfum mythique’, the term ‘bestseller’ is also used on http://www.saywho.fr.

Annex 8: extracts from the press in Germany dated 2016 mentioning the ‘Angel’ perfume. They mostly refer to the new Angel fragrance called ‘Eau Sucrée’.

Annex 9: copies of advertisements published in magazines distributed in France in 2017, 2018, and January 2019. The magazines are ‘Elle’, ’Marie-Claire’, ‘Avantages’, ‘Grazzia’, ’Gala’, ‘Cosmopolitan’, ‘Marie-France’ (several issues of most), etc.

The advertisements consist of full pages photographs such as:

Annex 10: affidavit in English by Mr JMB Chief Financial Officer of the company Clarins Fragrance Group (company in charge of the distribution of the perfume ‘ANGEL’) indicating sales figures and advertising expenses in relation to the trade mark ANGEL allegedly used for perfumery, cosmetics, hair lotions, soaps and beauty products, from 2012 to 2017, for France, Benelux, Italy, Germany, Spain and Portugal. It is indicated that approximate numbers are given for confidentiality reasons.

For France the yearly turnover from 2012 to 2017 is between EUR 18 million and EUR 23 million each year (France has the highest turnover, being followed by the UK and Germany). The advertising expenses for France amount to several millions of Euro from 2012 to 2016 and approximately EUR 700 000 in 2017.

Annex 11: market study in English dated April 2015 issued by the company IFF Consumer Science (based on data collected in 2013) entitled IFF Fine Fragrance and Beauty Care Marketing publication. The document analyses shopping patterns of consumers in the field of fragrances, the affinities between key players in the sector trade marks of perfume, determines the top brand core users (such as ‘traditionalists’ customers for Thierry Mugler), and contains a list of the 25 ‘Top bathroom: fragrances – women’ in which ‘Thierry Mugler – Angel’ is ranked second (section of the study dedicated to France).

Annex 12: two decisions of the French Office of intellectual property (INPI) dated June 2019 in French not translated, and of the EUIPO in English dated July 2019 to show that the reputation of the earlier mark ‘ANGEL’ has previously been recognized.

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34).

The evidence submitted proves that the trade mark ‘ANGEL’ enjoys recognition among the relevant public in France, to an extent which allows the conclusion that it is reputed.

 

The affidavit mentions substantial sales and advertising expenses for France. The probative value of statements made by witnesses that are employed or acting for the opponent is dependent on corroboration by other evidence (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 43).

In the present case, the opponent has submitted an impressive amount of articles from a large variety of magazines widely distributed in France, referring to the perfume ‘ANGEL’ or to the celebrities selected as the trade mark’s ambassadors/muses (all mentioning the perfume). These publications are dated from 2011 to 2015. The evidence also includes advertisements in the same press with dates of publication in 2017, 2018 and 2019. The party organized in Paris in October 2015 for the launch of the new ‘ANGEL’ fragrance was subject to massive press coverage in all types of media. All of these documents convincingly corroborate the substantial marketing expenses indicated in the affidavit and prove steady, outstanding public exposure of the mark.

The evidence further testifies to the longevity of the trade mark, created in 1992 and steadily mentioned in the French national press over almost the entire decade previous to the relevant date namely from 2011-up to January 2019. The longevity of a trade mark is a useful indication to establish reputation as the longer the mark has been used on the market, the larger the number of consumers who are likely to have encountered the mark more than once (29/03/2012, T-369/10, Beatle, EU:T:2012:177, §36).

Additionally, the qualifiers used in some of the articles (‘iconic’, ‘mythical’, ‘cult’, ‘bestseller’) unequivocally point to the commercial success of the product as indicated in the affidavit and even to a special status in the sector of perfumes, not only in France but also in other countries of the European Union. This is confirmed by the market study which indicates that the perfume was the second in the Top bathroom fragrances in France in 2013.

The applicant argues that the opponent did not submit translations of some of the evidence of reputation and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the evidence filed with a view to show the reputation of the earlier mark(s), unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties. It has to be borne in mind that it might be extremely costly and burdensome for the opponent to translate the evidence of use submitted into the language of the proceedings. In the present case, the Opposition Division considered that a translation was not necessary because the finding of reputation is essentially based on the abundance of the articles in the press regarding the opponent’s trade mark and product, rather than on the specific content of these articles. Most of these articles are self-explanatory in the sense that they manifestly concern the earlier trade mark as can be gathered from the titles, or the captions of the photographs. Furthermore, the documents submitted in English also provide relevant indications in support of reputation such as the market study, the affidavit, or the website extracts from Annex 1.

Given the long standing presence of the mark in the French market, its intensive and regular exposure to the public through advertisements and articles in the widely circulated press, the various references to its success and impact, the Opposition Division concludes that the earlier mark enjoyed reputation France at the relevant date.

However, the evidence succeeds in establishing reputation only for perfumes (for personal purposes) as the remaining goods for which the opponent claims reputation do not appear or only scarcely in the documents submitted.

 

b) The signs

 

ANGEL
Earlier trade mark	Contested sign

 

 

The relevant territory is France.

 

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

 

The earlier mark consists of the term ‘ANGEL’ which the public in France will immediately understand with the same meaning as in English (a celestial being), as the term is very close to the equivalent French word ‘ANGE’ also bearing in mind, as regards the additional final letter ‘L’ that other French words from the same semantic field include the ‘L’ such as ‘angélique’, ‘angelot’, ‘angelus’. The term is distinctive to an average degree because its meaning neither describes nor evokes perfumes or the usual characteristics of such goods.

The contested sign is a more complex mark which includes several elements. A palm tree is depicted in the upper part of the sign; below it, the mark features the letter ‘c’ inside a circle followed by a short horizontal line and the verbal elements ‘PALM ANGELS x PALM ANGELS’ (and a full stop punctuation mark). The verbal elements ‘ALL RIGHTS RESERVED’ (also followed by a full stop mark) are depicted on the third line.

All of the verbal elements are portrayed in the same typeface which is close to standard (black, bold upper case letters).

The expression ‘PALM ANGELS’ which features twice in the sign does not make sense as a whole and will be perceived as just the juxtaposition of two unrelated terms. The ‘x’ between the two expressions ‘PALM ANGELS’ will be perceived as the symbol of multiplication rather than as the single letter.

The element ‘ANGELS’ has the same meaning as in the earlier mark as the ‘S’ is used to form the plural in French. The meaning of the term is not related to the goods at issue. Therefore, the term is distinctive to a normal degree.

The word ‘PALM’ does not exist in French but is likely to evoke a palm-tree as the French word is ‘PALMIER’ and in view of the palm-tree’s depiction placed above (additionally, the leaf of the palm-tree is called ‘PALME’ in French).

The opponent argues that French consumers will understand the element ‘PALM’ as indicating that the goods are made of palm tree oil. The term ‘PALM’ is very close to the French word ‘palme’ used in ‘huile de palme’ (palm oil). This type of oil is indeed widely used in cosmetics or soaps for its moistening, emulsifying and texturising properties. However, there is a lot of ethical concern worldwide including in France regarding the use of this type of oil: environmental groups are intensely campaigning against the use of palm oil, and even for the boycotting of products which contain palm oil, because the cultivation of oil palm-trees leads to massive deforestation (and to habitat destruction, endangering of animal species, increase in greenhouse gas production) in some regions which make space for oil-palm monoculture in order to satisfy the huge demand worldwide. Therefore, consumers are well aware that no company would emphasise that their products contain palm-oil and, on the contrary, the tendency is rather to indicate that products are free from palm-oil. It follows that the element ‘PALM’ will not be perceived as suggested by the opponent and does not evoke any characteristics of the goods at issue but just a palm-tree, as depicted in the upper part of the sign. Both the verbal element ‘PALM’ and the palm tree’s depiction are distinctive to a normal degree for the goods at issue.

The letter ‘c’ in the circle will be perceived as the symbol of copyright, thus as an administrative indication not related to the commercial origin of the goods and it is likely that the expression ‘ALL RIGHTS RESERVED’ will be related to this symbol albeit consisting of English words because the term ‘RIGHTS’ is immediately reminiscent of the word ‘COPYRIGHT’ which is used in French and the term ‘RESERVED’ also immediately evokes the French word ‘RÉSERVÉS’ which is usually mentioned in copyright notices (the full expression being ‘TOUS DROITS RESERVÉS’). Therefore, it is highly probable that the public would attribute more trade mark significance to the expression ‘PALM ANGELS x PALM ANGELS’ of the signs than to the other verbal elements.

The palm-tree’s device is rather small but its position makes it immediately visible. No visually dominant element can be ascertained in the contested sign

Visually, the signs coincide in the letters ‘ANGEL’ which form the entire earlier mark.

On the other hand, the signs differ in all of the additional elements of the contested sign. Whereas some of these elements may produce less of an impact on the public (such as the administrative reference to copyright) or the additional ‘S’ of the term ‘ANGELS’, others play a significant role in the sign, in particular the distinctive word ‘PALM’.

The signs clearly differ in their structure. However, the fact that the coinciding word ‘ANGEL’ features twice in the contested sign, in the first line of text, makes it unequivocally perceptible despite the presence of the other elements.

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

Aurally, as consumers tend to shorten marks containing several words (03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34), it can be safely excluded that the expression ‘ALL RIGHTS RESERVED’ placed below the other verbal sequence may be pronounced (also bearing in mind that it is highly likely to be perceived as an administrative indication rather than as being part and parcel of the trade mark).

Consumers may even refer to the trade mark only by the expression ‘PALM ANGELS’ (the final ‘S’ being silent), rather than by ‘PALM ANGELS x PALM ANGELS’ (in which the ‘x’ would be pronounced as ‘par’ or ‘fois’ like the symbol of multiplication), to avoid the repetition.

Therefore the degree of aural similarity of the signs is at least low and even below average for a part of the relevant public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the concept of ‘angel,’ which is distinctive. Considering that the concept conveyed by the other distinctive elements of the contested sign (the concept of a palm tree as conveyed the palm-tree’s device and the term ‘PALM’) does not alter the meaning of the coinciding element, the signs are conceptually similar to an average degree.

Taking into account that the signs have been found similar, the examination of the opposition will proceed. At this stage, it is noted that the protection provided for under Article 8(5) EUTMR is not conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the public. 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 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).

c) The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are similar from the three perspectives of the comparison 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.

 

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The above 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, beyond the fact that the goods at issue target the same public, there is an obvious proximity between them. The earlier mark is reputed for perfumes and the contested goods either belong to the same sector of perfumery (Eau de Cologne; Scented water; Toilet water; Aromatics for perfumes; Fragrances; Perfumery; Perfumes) or to the closely related sector of beauty and cosmetics (Cosmetics in the form of creams; Deodorants and antiperspirants; Shower and bath foam; Make-up; Hair preparations and treatments; Bath preparations; Hair removal and shaving preparations; Cleaning preparations for personal use; Skin care preparations) or are, at least, goods whose essential characteristics is their scent (Air fragrancing preparations; Sachets for perfuming linen).

As regards the inherent distinctiveness of the earlier mark, the applicant argues that the term ‘ANGEL’ is often used in trade marks for perfumes and submits some screenshots from websites in its observations. However, the websites in question do not appear to be extracted from websites in French and do not in any case provide any indication in relation to the extent of the use of these trade marks in France. Consequently, it is not proved that these other trade marks may constitute an obstacle to an establishment of the link between the contested sign and the reputed earlier mark.

Considering the degree of similarity of the signs as established (visually low, aurally low or below average and conceptually average), as well as the clearly established reputation of the earlier mark, the normal inherent distinctiveness of the earlier mark/coinciding term ‘ANGEL’ and the obvious links between the goods, the Opposition Division is of the view that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

 

d) Risk of injury

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

 

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

 

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

 

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

 

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

 

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

The opponent claims that the use of the contested trade mark is likely to take unfair advantage of, or be detrimental to, the repute 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).

 

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30). In principle, the opponent should put forward a coherent line of argument demonstrating what the unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent’s arguments are quite succinct since it claims than unfair advantage will occur as a result of the link between the signs at issue, of the reputation of the earlier mark and of the fact that the contested goods are all beauty or perfumery products.

The close connections between the goods at issue, as mentioned by the opponent, are indeed a convincing argument in support of the probability of a non-hypothetical future risk of unfair advantage being taken by the mark applied for and, because of this proximity between the goods, the opponent did not need to put forward or adduce evidence of any other fact to that end.

The earlier mark is reputed for perfumes. The contested goods are on the one hand, perfumes and cosmetics (which are sold side by side with perfumes, are used for the same purpose by consumers namely beauty purposes and are often produced by the same undertakings) and on the other hand house perfuming preparations which are obviously chosen primarily because of their fragrance. It almost goes without saying that consumers may be tempted to buy the contested goods because of the reputation of the opponent’s perfumes. The image of these is easily transferrable to the contested goods. Indeed, the evidence establishes that the earlier mark transmits a glamourous image achieved though the opponent’s partnerships with models and actresses, which consumers will easily project on to the contested perfumes and cosmetics. Additionally, consumers will expect that the scent of the contested house fragrancing preparations is based on the same notes as the opponent’s successful perfume. In other words, the use of the goods marketed under the trade mark applied for could be more attractive for consumers, due to the reputation of the earlier mark.

Furthermore, the evidence proves that the opponent has made significant investments in the marketing of its perfume over a long period of time to achieve the abovementioned glamorous image, which supports the conclusion that this may give the applicant an advantage in the marketing of its products which it would normally not have, which no financial compensation being paid to the opponent.

It follows from the above that the marketing of the contested goods targeting the same group of consumers as the opponent’s reputed perfume, is likely to be facilitated by the association of the relevant consumer with the reputed mark and therefore, that the applicant might unfairly benefit from the reputation of the earlier mark.

On the basis of the above, it is concluded that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark, which is sufficient for the opposition to be considered as well-founded. Therefore, there is no need to examine whether detriment to repute also applies.

 

f) 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

 

 

Begoña URIARTE VALIENTE

Catherine MEDINA

Christian STEUDTNER

 

 

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.