OPPOSITION Nо B 3 104 692

 

Antonio Puig, S.A., Plaza Europa, 46-48, 08902 L'Hospitalet de Llobregat (Barcelona), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Sc Azur S.A., Constructorilor, Nr. 3-5, 300571 Timisoara, Romania (applicant), represented by Cabinet "ceciu Gabriela" Consultanta In Domeniul Proprietatii Intelectuale, Strada Martir Leontina Banciu, Nr. 6, Sc. A, Ap. 110, 300024 Timisoara, Judetul, Timis, Romania (professional representative).

On 10/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 104 692 is partially upheld, namely for the following contested goods:

 

	Class 3: Cleaning and fragrancing preparations (except body cleaning and beauty care preparations); Essential oils and aromatic extracts (other than preparations for cleansing and treating the body).
2.	European Union trade mark application No 18 114 916 is rejected for all the above goods. It may proceed for the remaining contested goods in Class 3 (Tailors' and cobblers' wax), as well as for all the remaining uncontested goods and services in Classes 1, 2, 4, 9, 16, 17, 19, 35, 37 and 42.

 

3.	Each party bears its own costs.

REASONS

 

On 29/11/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 114 916 (figurative mark), namely against all the goods in Class 3. The opposition is based on Spanish trade mark registration No M2 104 981 (figurative mark), Spanish trade mark registration No M2 583 253 ‘AZUR’ (word mark) and Spanish trade mark registration No M2 583 254 ‘AZUR DE PUIG’ (word mark). The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

Preliminary remark

In its observations of 28/10/2020 the applicant mentions several times throughout its submission that proof of use of the earlier marks has not been proven. For example, on p.19 of its observations, the following is stated

We consider that the trade mark no. 2583253 with the name “AZUR” is irrelevant to this case, because it has been registered since 2004, and, for this, evidence of use of the trade mark in the form in which it is protected had to be submitted, because the five-year period to use the opposition to registration of a later trade mark has expired, without proving its use.

Also, in the conclusion of its observations, on p.97, the opponent stated

Also, in accordance with Regulation UE 2018/625 Article 10 (3) - Proof of use “The
indications and evidence of use shall establish the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.”, which has not been proven.

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

 

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected. Furthermore, as required by Article 10(1) EUTMDR, a request for proof of use should be submitted by way of a separate document.

 

In the present case, none of the applicant’s statements are an explicit, unambiguous and unconditional request for proof of use, and have not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use. Furthermore, as mentioned, Article 10(1) EUTMDR requires that a request for proof of use is submitted by way of a separate document, which is not met in the present case either.

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

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No M2 583 253 ‘AZUR’.

 

a) The goods

 

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

 

Class 3: Perfumery, cosmetics.

Following several limitations made by the applicant, the contested goods are the following:

 

Class 3: Tailors' and cobblers' wax; Cleaning and fragrancing preparations (except body cleaning and beauty care preparations); Essential oils and aromatic extracts (other than preparations for cleansing and treating the body).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

 

Contested goods in Class 3

 

The contested fragrancing preparations (except body cleaning and beauty care preparations) include goods such as air and household fragrancing sprays and preparations. These goods are included in, or at least overlap with the broad category of the opponent’s perfumery. Therefore, they are considered identical.

The applicant submits comments in relation to the contested term fragrancing preparations (except body cleaning and beauty care preparations) and its counterpart in Romanian (‘odorizante’). In particular, according to the applicant ‘odorizant’ refers to a chemical compound with a strong odour, used to add smell to combustible gases (odourless), in order to detect accidental gas leaks from a pipe, a container, etc. In this respect, the Opposition Division does not agree with the applicant and notes that the term refers to ‘fragrances’ and is correctly translated in English. In addition, the goods ‘fragrancing preparations’ in Class 3 do not include any goods or substances that are used to identify gas leaks. As a last point, it is also reminded that in cases of discrepancy between the translation of the wording of the list of goods of an EUTM application and the original wording, the definitive version of the list of goods is the text in the second language indicated by the applicant (Article 147(3) EUTMR), if the first language of the application is not one of the five languages of the Office, as is the case here. Therefore, the applicant’s argument is rejected as entirely unfounded.

Even if it is considered that the contested cleaning preparations (except body cleaning and beauty care preparations) exclude any body, beauty and personal care cleaning preparations, these contested goods are still similar to the opponent’s perfumery. This is because the broad category of the opponent’s perfumery encompasses a wide variety of perfumes and air fragrancing preparations, such as room scenting sprays, potpourri and incense. Since household fragrances are pleasant-smelling liquids and other articles used to make homes or other indoor spaces like cars smell nice, they satisfy the needs of the same consumers looking for household cleaning and maintenance goods, such as cleaners and polishes for floors, wooden or leather furniture, windows and other surfaces, scouring solutions and abrasive pastes for the kitchen and bathroom etc. These goods are commonly sold in the same specialised shops and sections of supermarkets or department stores, and the public can expect that they are produced under the control of the same undertaking. Therefore, perfumery, as a broad category, and cleaning preparations are found similar.

The contested Essential oils and aromatic extracts (other than preparations for cleansing and treating the body) are similar to the opponent’s perfumery. On the one hand the opponent’s perfumery includes perfumes and fragrances that are used not only for enhancing the odour or aroma of the body by giving it pleasant scent, but also include sprays and perfumers for fragrancing the air, the linen, etc. in a household. On the other hand, essential oils and aromatic extracts are fragrant liquid aroma compounds (synthetic or organic) that are used (among others) primarily as fragrances for rooms, or in aromatherapy. These sets of goods can therefore coincide in relevant public, distribution channels and producer. Consequently, they are similar.

The contested Tailors' and cobblers' wax are dissimilar to all the opponent’s goods, namely Perfumery, cosmetics. Tailor’s wax is used for waxing thread in relation to the production/repair of clothing and footwear and cobblers’ wax is a preparation used in the repair of shoes. These goods have no commonality or relevant similarity with the opponent’s cosmetic and perfumery goods. They differ in nature, purpose and method of use. They do not coincide in their producer and do not share the same distribution channels. Furthermore, these goods are neither complementary, nor in competition and they normally target different end users.

 

b) Relevant public — degree of attention

 

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

 

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

According to the applicant, the degree of attention is higher than average as the goods include hazardous products. The applicant refers to Annex 5 of its submissions showing a ‘hazard statement’ on the label of its goods as used on the market. The Opposition Division, however, does not consider that the degree of attention is more than average, in relation to the relevant goods. The goods involved are ordinary consumption goods, subject to frequent purchasing and are not highly specialised or sophisticated goods. These goods do not normally have a special impact on personal safety (as is the case with other goods, e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays, etc.) that may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41). Furthermore, as to the labels of the goods actually used by the applicant, it should be noted that the goods that are actually produced by the applicant are not relevant in the context of the present decision.

c) The signs

AZUR
Earlier trade mark	Contested sign

 

The relevant territory is Spain.

 

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 is a word mark and consists of the verbal element ‘AZUR’. The contested sign is figurative and consists of the same verbal element ‘AZUR’, written in fairly standard, blue letters, and of a device element in blue and white, placed above it, which represents a stylised ‘A’ letter. The marks have no element(s) that could be considered clearly more dominant than other elements.

The common verbal element ‘AZUR’ included in the signs has a meaning in Spanish, namely ‘heraldic: used to describe a heraldic colour which is represented in painting as a dark blue and in engravings with very thick horizontal lines’ (see ‘Diccionario de la lengua española’ online at rae.es). However, it is possible that not all Spanish consumers might be aware of the heraldic meaning of this word and will see it as a meaningless term. Whether understood or not, the verbal element ’AZUR’ has no descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods and it is considered that its inherent distinctiveness is normal.

According to the applicant, the word ‘AZUR’ is descriptive, evocative, suggestive in relation to the opponent’s goods, because the Puig family (founder/owner of the opponent company) is linked to the world of sailing and the colour of the eau de toilette and of the sea is also blue, or, because blue is most people’s favourite colour and because it is especially suited to men and connected with success, authority and business, and, because it is to be found in the skies, water and corporate logos. In this regard, the Opposition Division disagrees with the applicant and as noted above, the term ‘AZUR’, whether understood or not, has no descriptive, allusive or otherwise weak connotations in relation to any of the relevant characteristics of the goods at issue. Therefore, its distinctiveness is normal. In any case, it should be mentioned that whatever a meaning were to be attributed to this word, its degree of distinctiveness is the same in both marks.

As to the differentiating elements between the signs, they reside in the device element representing a stylised ‘A’ letter and in the slight stylisation and colour of the letters of ‘AZUR’ of the contested sign. The latter, however, have a fairly ornamental nature and do not bring about much added distinctiveness to verbal element as such. As to the stylised ‘A’ letter device, it is normally distinctive as it does not contain any descriptive or otherwise weak meaning in relation to the goods. However, bearing in mind that it represents the first letter of the verbal element ‘AZUR’, it will be seen as somewhat subordinate/related to it and the verbal element ‘AZUR’ would have a stronger impact on the consumer as a trade identifier than the device element.

The applicant argues that consumers will attach special importance to the device element that accompanies the word ‘AZUR’ in the contested sign, because it is linked to the home town of the applicant’s company and because the hexagon is linked to the core of the applicant’s business - chemistry. According to the applicant, the solvents used in paints have a chemical formula represented by a hexagon and many chemical chains also include hexagons in their representation. In this regard, it is noted that the relevant goods are not paints/solvents or chemicals and are usually not connected with the representation of chemical formulas. Therefore, such interpretation of the device element is highly unlikely and the applicant’s arguments are unfounded.

Visually, the signs coincide in the inherently distinctive verbal element ‘AZUR’, which constitutes the only element of the earlier mark and is entirely contained as the most important verbal element of the contested sign. As mentioned, the font and colour of the contested sign will be seen as decorative and the device element representing a stylised ‘A’ letter has less impact on the consumer as a trade identifier than the verbal element ‘AZUR’. Therefore, taking into account the mentioned similarities and differences, the relevant factors and their respective weight in the signs, it is considered that the signs are visually similar to a high degree.

Aurally, it is considered that the great majority of consumers, if not all, will not pronounce the letter ‘A’ of the device element, and will refer to the contested sign as ‘AZUR’ only. This is because of the tendency of consumers shortening signs to economise on time and also in view of the fairly standard representation of the letters of ‘AZUR’, as compared to the more stylised ‘A’. In addition, as mentioned above, since ‘A’ represents the first letter of the element ‘AZUR’, it will be seen as somewhat subordinate to it and the verbal element ‘AZUR’ would have a stronger impact on the consumer. Consequently, as regards the great majority of consumers, if not all, the pronunciation of the signs coincides in full. Therefore, the signs are aurally identical for those consumers, and aurally highly similar for the part of the public that may pronounce the initial ‘A’ of the contested sign.

The concepts of the signs have been defined above. As mentioned, the verbal elements of the signs have the same meaning, for at least part of the public, or will not be associated with any meaning by the remaining public. The signs differ in the additional concept of the ‘A’ contained in the device of the contested sign. However, as it is the initial letter of ‘AZUR’ that follows it, its concept will be related to as being subordinate to that of ‘AZUR’. Therefore, the signs are conceptually highly similar, if not identical, for at least part of the relevant public. As regards the public for which the coinciding ‘AZUR’ is meaningless, the signs differ in the concept of the letter ‘A’ and the signs are not conceptually similar. Nevertheless, as explained above, since the device element of the contested sign has less impact on the consumer than the verbal element ‘AZUR’, the impact of this conceptual difference is fairly limited, as the attention of the relevant consumers will be attracted by the fanciful distinctive word ‘AZUR’ that will be perceived as the main trade identifier in the contested sign and is the only element of the earlier mark.

Finally, as regards the possible perception of three hexagon shapes within the device representing the ‘A’ letter of the contested sign, it is considered that such perception requires some effort, since the hexagons are not easily and immediately visible/discernible. In addition, the conceptual impact of those, if perceived, is not particularly relevant, as they are relatively basic geometric shapes that would be seen as having a rather ornamental function.

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

  

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

  

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present stage of the proceedings (see below in ‘Global assessment’).

 

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

 

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and similar, and partly dissimilar to the opponent’s goods. The relevant public is the public at large and the degree of attention is average. The inherent distinctiveness of the earlier mark is normal.

The earlier trade mark and the contested sign are visually similar to a high degree. They are aurally identical for the great majority of consumers and aurally highly similar for the remaining part of the public. For at least part of the public, the signs are conceptually similar to a high degree. In relation to the remaining part of the public, the signs are not conceptually similar but the impact of the conceptual difference is fairly limited, as the attention of the relevant consumers will be attracted by the fanciful distinctive word ‘AZUR’, which will be perceived as the main trade identifier within the contested sign and is the only element of the earlier mark.

In the present case, it is considered that the differences between the signs are not capable to offset the high degree of similarity between them and a likelihood of confusion exists. The similarities between the signs are on account of the only verbal and inherently distinctive element of the earlier mark, which is represented in its totality as the most important trade identifier within the contested sign.

While it is true that the signs differ in certain aspects (the font, colour, the stylised ‘A’ device of the contested sign), the coincidences in the marks clearly prevail and it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public. The similarity of the signs is sufficient for the consumers to consider that the respective identical and similar goods have the same or economically-linked origin.

The applicant argues that its EUTM application has a reputation and filed various items of evidence to substantiate this claim. In this regard, it is noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

 

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

In its observations, the applicant argues that the opponent has a registered trade mark in Romania and that the applicant also owns several trade mark registrations consisting of, or including the word ‘AZUR’ in Romania. However, this fact is not relevant in the present case, as the relevant territory is Spain. Consequently, the registrations indicated in the applicant’s observations are irrelevant and the applicant’s argument that the marks are able to coexist peacefully must be rejected as unfounded.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No M2 583 253 ‘AZUR’.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

 

The rest of the contested goods, namely Tailors' and cobblers' wax in Class 3 are dissimilar to the opponent’s goods. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this earlier right and Article and directed at these goods cannot be successful.

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

 

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

 

The opponent has also based its opposition on the following earlier trade marks:

1) Spanish trade mark registration No M2 104 981 (figurative mark) based on Perfumery and cosmetics; body deodorants in Class 3; and

2) Spanish trade mark registration No M2 583 254 ‘AZUR DE PUIG’ (word mark) based on Perfumery, cosmetics in Class 3.

  

Since these marks cover the same or a narrower scope of goods than the mark which has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness, as the result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

REPUTATION — ARTICLE 8(5) EUTMR

 

The opponent claimed repute in relation to all its Spanish trade mark registrations, namely No M2 104 981 (figurative mark), No M2 583 253 ‘AZUR’ and No M2 583 254 ‘AZUR DE PUIG’ in relation to the same scope of goods in Class 3, on which the opposition is based under Article 8(1)(b) EUTMR (listed above).

 

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 establishes due cause for the use of the contested trade mark.

 
In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

 

a) Reputation of the earlier trade marks

 

As mentioned, according to the opponent, the earlier trade marks have a reputation in Spain in relation to all the goods ion which the opposition is based (listed above).

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 26/08/2019. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain 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:

 

ES No M2 104 981: Class 3: Perfumery and cosmetics; body deodorants.

ES No M2 583 253 and No M2 583 254: Class 3: Perfumery, cosmetics.

The opposition is directed against the following remaining goods:

Class 3: Tailors' and cobblers' wax.

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 16/06/2020 the opponent submitted evidence. In addition, in its observations of 16/06/2020, the opponent referred to evidence submitted in previous proceedings, namely B 573 347 of 03/02/2004. In the present case, the opponent clearly identified the material referred to and the proceedings in which it was submitted. In particular, the opponent clearly identified the number of the opposition it refers to; the title of the documents it refers to; the number of pages of the documents; and the date the documents were sent to the Office. Therefore, the Opposition Division accepts the references to evidence previously submitted and it will be duly listed herein below and taken into account in the present proceedings.

Therefore, the evidence consists of the following:

Evidence filed on 16/06/2020 in the present proceedings (Document 1 to 8):

Document 1: (10 pages) Copy of a decision of the First Board of Appeal, case R-0969/2005-1, 14/03/2006 relating to the refusal of EUTM No 2573731 ‘AZUR’, in which the reputation of the earlier mark ‘AZUR DE PUIG’ in the perfumery field was recognized (as per the relevant date 12/02/2002).

Document 2: (8 pages) Copy of a decision issued by the SPTO on 16/08/2006 in which the reputation of the earlier mark was acknowledged.

Document 3: (39 pages) Copy of evidence of reputation submitted on 16/07/2013 as Enclosures 5, 6, 7 and 8 and Attachments A and B in opposition proceedings B 2 146 093 against EUTMA No 11273844 ‘AZURELIA SPA’. In particular, this evidence consists of:

Enclosure 5: (5 pages) Printout of 21/11/2012 showing several pages from the website of ‘Leading Brands of Spain Forum’. It is stated therein that the opponent has a portfolio of famous brands, including ‘Azur de Puig’.

Enclosure 6: (10 pages) Copy of relevant pages taken from the 2008 edition of the book ‘Grandes Marcas de España’ [‘Leading Brands of Spain’]. The company ‘Puig Beauty and Fashion Group’ is included therein and it is stated therein that the company has a portfolio of famous brands, including ‘Azur de Puig’.

Enclosure 7: (8 pages) Price lists dated November 2008 and November 2009 showing the prices of, inter alia, ‘Azur de Puig’ toilet water and the deodorant. A photograph of the toilet water product ‘Azur de Puig’ is also attached.

Enclosure 8: (3 pages) Copy of a report regarding a market survey of awareness of the brand ‘Azur’ conducted in July 2009. The survey extended to 850 persons who were asked which brands, of those with the greatest relevance within the sector in Spain, they knew of. 66% of those asked mentioned the ‘AZUR’ mark.

Attachment A: (1 page) Net revenue figure for ‘AZUR’ in 2012.

Attachment B: (5 pages) ‘AZUR’ Brand Value and Brand Review Outline (one of the pages shows it is dated in 2005).

Document 4: (20 pages) Three press articles, which mention ‘AZUR de PUIG’, namely:

-Article dated 25/02/2019 from the magazine ‘Vanity Fair’ referring to an award given in 2019 to Mr. Mariano Puig, which looks at his brilliant career and mentions, inter alia, the launch of the ‘AZUR’ perfume in 1968;

-Article on the history of the Puig Group published on 11/12/2014 in ‘El País Semanal’ supplement of the ‘El País’ newspaper, which mentions the perfume ‘AZUR’ created in 1968, as well as ‘Brummel’ (1968) and ‘Quorum’ (1977), and refers to those as ‘products that form part of the country’s visual and sentimental education’;

-Article from www.diariosigloxxi.com dated 17/02/2014 titled ‘Puig 100 years of perfumes and fashion’. It is mentioned that the Puig family has been linked to the world of sailing and that they sponsored the King’s Cup of sailing from 1984 to 2006 and were the owners of the sailing yacht ‘Azur de Puig’.

 

Document 5: (18 pages) Printouts from the websites of several stores (‘Primor’, ‘Druni’, ‘Amazon.es’, ‘El Corte Inglés’ and ‘Douglas’), showing the ‘AZUR’ perfume is available for sale.

Document 6.1 and 6.2: (20 pages) Screenshots from ‘YouTube’ showing three advertisement videos of ‘AZUR de Puig’ (2209 views, 10/12/2018; 27718 views, 01/02/2015 and 4224 views 18/11/2013) and an extract from the book ‘El alma de la cosmética’ (The soul of cosmetics) by Ángeles Sánchez - Cueca, published in Spain in 2013, showing a review titled ‘Enrique Puig: the soul of an internationally recognized trade mark’ mentioning, inter alia, that ‘other perfumes’ such as ‘Agua Brava’ (1968) and ‘Azur de Puig’ (1969) became one of the best- selling fragrances in the history of the company and the country.

Document 7: (4 pages) Google search results of ‘azur de piug’ search in Google.es (973,000

hits).

Document 8: (66 pages) A table showing annual sales figures for ‘Azur de Puig’ for 2015-2019 and a selection of invoices dated in 2016-2019, itemising the sale of, inter alia, ‘Azur’ goods to different entities in Spain.

Evidence filed in previous proceedings (B 573 347 of 03/02/2004 - Attachments III to XXV):

Attachment III: Article dated 05/08/2002 from the Spanish magazine “Tiempo” (6 pages, from p.78 to p.83) referring to a regatta with the ‘Azur de Puig vessel’.

Attachment IV: Article from “Lecturas” magazine of 28/02/2002 (6 pages, from p.84 to p.89) referring to the ‘Azur de Puig’ sailing crew.

Attachment V: Article from “Lecturas” magazine of 09/08/2002 (5 pages, from p.90 to p.94) referring to the ‘Azur de Puig’ yacht.

Attachment VI: Article from “Hola” magazine of 15/08/2002 (9 pages, from p.95 to p.103) referring to a regatta.

Attachment VII: Article from “Men’s Health” of August 2002 referring to the ‘Azur de Puig’ sailing yacht (4 pages, from p.104 to p.107).

Attachment VIII: Advertising brochure of the 19th Edition of the King’s Cup held from 29/07 to 06/08/2000, including references to the ‘Azur de Puig’ boat, as well as direct advertising of the product (7 pages, from p.108 to p.114).

Attachment IX: Advertising brochure of the 16th Edition of the King’s Cup held from 2 to 10/08/1997 including references to the ‘Azur de Puig’ boat (6 pages, from p.115 to p.120).

Attachment X: Update of 12/05/2003 in the digital version of “El Periódico de Catalunya” referring to the ‘Azur de Puig’ yacht (3 pages, p.121 to p.123).

Attachment XI: News update from www.masmar.com referring to the César Manrique Trophy celebrated in 2002 (5 pages, p.124 to p.128).

Attachment XII: News update of 06/10/2002 from www.fuerteventuradigital.com referring to the 9th HRH Infanta Cristina Trophy (5pages, p.129 to p.123).

Attachment XIII: News update of 06/10/2002 from the website www.nautigalia.com referring to the HRH Infanta Cristina Trophy (5 pages, p.134 to p.138).

Attachment XIV: News update of 26/07/2002 providing in-depth analysis of the technical characteristics of the latest construction of the ‘Azur de Puig’ (7 pages, p.139 to p.145).

Attachment XV: News update of 18/05/2001 from www.rcbn.com referring to the ‘Freixenet’ regatta (6 pages, p.146 to p.151).

Attachment XVI: Notice of 27/10/2000 from www.mundoaventura.com referring to the world IMS 50 (4 pages, p.152 to p.155).

Attachment XVII: Copy from a news update of 06/10/2000 from www.eldia.es referring to the HRH Infanta Cristina Trophy (5 pages, p.156 to p.160).

Attachment XVIII: Article of 30/07/2001 from the digital version of the newspaper “EL SIGLO” which deals with the participation of the members of the Royal Family in the promotion and advertising of trade marks, among which ‘Azur de Puig’ is mentioned (8 pages, p. 161 to p.168).

Attachment XIX: Printout from www.dooyoo.es showing opinions on perfumery products (6 pages, p.169 to p.174).

Attachment XX: Invoices dated in 2003 relating to advertising slots on various TV channels (22 pages, p.175 to p.197).

Attachment XXI: Certificate by the Advertising Agency Publicidad Media planning expressing the total investment figures for the TV slots of the 1996 advertisement (4 pages, p.198 to 201).

Attachment XXII: Sample of some of the goods marketed under the trade mark ‘Azur de Puig’ (8 pages, p.202 to 209).

Attachment XXIII: (not included).

Attachment XXIV: Certificate referring to 2002 and 2004, issued by the Chamber of Commerce of Barcelona attesting to the notoriety of ‘Azur de Puig’ trade mark and a translation in English (3 pages, p.211 to 213).

Attachment XXV: Declaration of 04/11/2003 executed before a Notary Public attesting to the sales and advertising investment in relation to the ‘Azur de Puig’ trade mark (11 pages, p.214 to 224).

Having carefully examined all the evidence in its entirety, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation in relation to the relevant goods as per the relevant date 26/08/2019.

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.

Therefore, reputation requires recognition of the mark by a significant part of the relevant public. The relevant public in the present case is the public at large. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, 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, § 22).

Furthermore, it must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings, the Office is restricted in its examination to the facts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier marks have a reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R 437/2014‑1, SALSA / SALSA (FIG MARK) et al.).

In the present case, the Opposition Division is unable to extract any indication as regards the degree of recognition of the trade marks amongst the relevant public and their general position

in the relevant Spanish market.

The relevance of all the Attachments III to XXV (the evidence of 03/02/2004, B 573 347), as well as Documents 1, 2 and 3 of 16/06/2020 is very limited, as they refer to time periods which are very far apart from the relevant date (26/08/2019). In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. In the present case, the decisions included as Documents 1 and 2 refer to the reputation of ‘AZUR DE PUIG’ prior to the date 12/02/2002 and prior to 16/08/2006, respectively. Document 3 shows: price lists of 2008 and 2009; references to the famous brands of the opponent, amongst which ‘Azur de Puig’ (dated in 2012 and 2008); a market survey report issued in July 2009; revenue figures for 2012; and, a brand overview of 2005. Although this evidence is suitable to demonstrate the history of the opponent’s brand in the past, as well as the duration of use, it does not shed any light as to the possible degree of recognition in more recent time periods. All these documents are dated more than ten years before the reputation date to be taken into consideration. The only exception is the revenue figures for 2012, which however, originate from the opponent itself and are not corroborated by any independent source.

As to the remaining evidence, namely Documents 4 to 8, the information that can be extracted from them is that the brand ‘Azur de Puig’ was created back in 1968 and was promoted through sponsorship in regattas from 1984 to 2006 (Document 4). Document 5 demonstrates that the the ‘AZUR’ perfume is currently available for sale and Document 6.1 shows that there are several videos on ‘YouTube’ that promote the opponent’s perfumes but the number of views are not that significant bearing in mind the size of the relevant territory. Document 6.2 refers to a book published in 2013 and to ‘Azur de Puig’ (1969) having become one of the best- selling fragrances in the history of the opponent’s company and Spain. Nevertheless, it is not clear from that item of evidence whether this status is still recognized and known by the relevant public and to what extent. Document 7 is simply a Google search hit/images results with the words ‘azur de piug’ but does not allow the Opposition Division to extract any information about the market share held by the marks. In relation to Document 8, it shows that the sales figures are fairly important and these have been corroborated to a certain extent by the accompanying invoices. However, in the lack of any additional documents showing information about competitors and the opponent’s market share and/or position, or evidence showing direct knowledge data (e.g. market surveys, opinion polls, audits and inspections, etc.), the Opposition Division is unable to draw any conclusion as to the possible degree of recognition or popularity/position of the opponent’s trade marks on the Spanish market.

Consequently, the market share enjoyed by the opponent’s goods and their position on the market cannot be inferred from the documents submitted and the Opposition Division is unable to ascertain any degree of recognition of the trade marks among the relevant public.

It must be noted that the finding of a reputation of a mark, just as genuine use, cannot be based on probabilities or suppositions but must be demonstrated by solid and objective evidence (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22, 12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47).

In the present case, the evidence does not provide any indication of the degree of recognition of the trade marks by the relevant public and in the relevant territory as per the relevant date; it does not indicate the sales volumes in the context of the respective market and competitors, it does not indicate the market share of the trade marks or the extent to which the trade marks have been promoted.

As a result, the evidence, assessed as a whole, does not show the degree of recognition of the trade marks or that the trade marks are known by a significant part of the relevant public prior to the relevant date. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as based on Article 8(5) EUTMR.

Therefore, it is not necessary to deal with the applicant’s claim that it has due cause for using the contested mark. 

 

COSTS

 

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

 

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

 

 

 

The Opposition Division

 

 

Gueorgui IVANOV

Liliya YORDANOVA

Anna PĘKAŁA

 

 

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.