OPPOSITION No B 2 441 973

Procter & Gamble Holding S.R.L., Viale Giorgio Ribotta 11, 00144 Roma, Italy (opponent), represented by Danièle Le Carval, Procter & Gamble France SAS, 163/165 quai Aulagnier, 92600 Asnières-sur-Seine, France (employee representative)

a g a i n s t

Henan Baistra Industries Corp., Floor. 17-18,Unit 3, Building 1, No. 1 Zhenghua, Rd., Jinshui District, Zhengzhou City, Henan Province, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 20/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 441 973 is upheld for all the contested goods.

2. Community trade mark application No 13 246 624 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 246 624. The opposition is based on Italian trade mark registration No 1 144 850. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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 of refusal of Article 8(5) CTMR 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: the 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) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 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.

1. The signs

AZ
Earlier trade mark	Contested sign

The relevant territory is Italy.

The earlier mark is a word mark, ‘AZ’. The contested sign is a figurative mark composed of the stylised word ‘AZDENT’ in black bold upper case letters.

Visually, the signs are similar to the extent that they coincide in the letters ‘AZ’, which form the entire earlier mark and the first two letters of the contested sign. However, they differ in the letters ‘DENT’ and the stylisation of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AZ’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛DENT’ of the contested sign, which have no counterpart in the earlier mark.

Conceptually, with regard to the contested sign, which is composed of a single word, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T‑256/04, ‘RESPICUR’, paragraph 57). It can be reasonably assumed that the element ‘DENT’ will be discerned in the contested sign and understood as conveying the concept of ‘dental’, as this element alludes to the Italian words ‘dentale’ (dental), ‘dente’ (tooth) and ‘dentifricio’ (dentifrice).

The earlier mark will be perceived as meaningless.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark ‘AZ’ has a reputation in Italy.

Reputation implies a knowledge threshold which 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 11/09/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy 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: Dentifrices.

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 26/05/2015, the opponent submitted, in particular, the following evidence:

• Report on oral care in Italy, dated June 2014, issued by Euromonitor International (Annex 6): this report indicates that Procter & Gamble Italia SpA remained the leading player in oral care in Italy in 2013 with a 20% value share through its brands AZ, Oral-B, Kukident and Braun.

• Brand history from the opponent’s website (Annex 7): the brand ‘AZ’ was first launched in 1967 and the goods have been marketed over the years in different variations of this mark, such as ‘AZ15 Gengidentifricio’, ‘AZ Verde’, ‘AZ Uno’, ‘AZ Protezione Gengive’, ‘AZ Denti Sesibili’, ‘AZDent’, etc.

• Report from Mintel Group Ltd showing ‘AZ’ products by Procter & Gamble from 1996 to 2015 (Annex 8).

• Market share: the opponent states that nowadays ‘AZ’ is the third most important actor in the toothpaste mass market in Italy and provides market share figures (source: AC Nielsen). ‘AZ’ market share in 2011–12 was 13.2%, in 2012–13 12.8% and in 2013–14 12.3%. Furthermore, the opponent states that for the period from October 2013 to September 2014 unaided brand awareness of ‘AZ’ was 41.2% (source: GFK BHT).

• Current product line-up (Annex 10): the current ‘AZ’ toothpaste line-up contains 23 products divided into 7 ranges (AZ Pro-Expert, AZ Complete, AZ 3D White, AZ Multi Protezione, AZ Idea Natura, AZ Protezione Gengive, AZ Kids).

• Advertising (Annexes 11, 12, 13, 14, 15 and 16): the opponent’s states that the total annual advertising budget to support the ‘AZ’ trade mark amounts to between EUR 4 000 000 and EUR 5 200 000. This is mainly for advertising on nationwide TV and digital media (evidence is submitted for the 1980s to 2010s), but also for advertising using many other means, such as print campaigns, outdoor advertising, presentations to journalists, presence at fairs, websites promoting ‘AZ’ products (az-oralb.it, site.azricerca.it, dentalcare.it, etc.), Facebook pages and sponsorship of the Italian fencing team at the 2012 Olympic Games in London.

• Photographs of presence in shops (Annex 19): ‘AZ’ is available in mass-market shops (mainly hypermarkets, supermarkets and drugstores) and chemists. Examples are Auchan, Carrefour, Conad, Coop, etc. ‘AZ’ is also widely available for purchase on the internet (Annex 20).

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in Italy.

It is clear from the evidence that the earlier trade mark, which was first commercialised in 1967, 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 independent sources, and more specifically by the report on oral care in Italy issued by Euromonitor International. The market share figures provided by the opponent (source: AC Nielsen) are considerable, taking into account that the relevant goods, namely dentifrices, are cheap goods for mass consumption. The marketing expenditure and market share shown by the evidence unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. 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) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 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 (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The conflicting marks coincide visually and aurally in their first two letters, ‘AZ’, which are fully distinctive for all the relevant goods; they differ aurally, visually and conceptually in the letters ‘DENT’ of the contested sign.

The earlier mark, ‘AZ’, has an inherent normal degree of distinctiveness and has obtained, as seen in section b) of this decision, a solid reputation through long-standing and intensive use. It has been on the market for many years and has a high degree of recognition among the relevant Italian public.

The contested goods are:

Class 10: Medical apparatus and instruments; Brushes for cleaning body cavities; Dental apparatus and instruments; Orthodontic appliances; X-ray apparatus for medical purposes; Gloves for medical purposes; Feeding bottles; Hair prostheses; Bandages for joints, anatomical; Suture materials; Clips, surgical; Artificial teeth; X-ray photographs for medical purposes; Saws for surgical purposes; Knee bandages, orthopedic.

While some of the contested goods target a professional public, the goods for which the earlier mark is reputed, namely dentifrices, target the public at large. Therefore, it is considered that the professional public targeted by the contested sign is also aware of the reputation of the earlier mark, as they are also targeted users of dentifrices.

Taking into account that the earlier mark, ‘AZ’, has a reputation for dentifrices, it is considered that the element ‘-DENT’, that will be associated with ‘dental’, in the contested sign might induce the relevant public to make a link with the reputed earlier mark. Indeed, the contested sign incorporates the entire earlier mark, ‘AZ’, followed by the element ‘-DENT’, which indicates the goods for which the earlier mark has a reputation. Consequently, when encountering the contested sign, the relevant public might associate it with the earlier mark on account of the letters ‘AZ’, which the signs have in common and which are reputed, and on account of the concept ‘DENT’, which alludes to the goods for which the earlier mark has obtained a reputation. In other words, the relevant public might think that the contested sign ‘AZDENT’ is somehow linked with the earlier mark, ‘AZ’, as this mark is widely known for dentifrices.

This link will even be stronger for those contested goods that are connected in some way with dentifrices. Dentifrices cross the line between cosmetics and medical preparations, they are used for oral health. These goods have relevant points in common with at least some of the contested goods, namely medical apparatus and instruments; brushes for cleaning body cavities; dental apparatus and instruments; orthodontic appliances; X-ray apparatus for medical purposes; gloves for medical purposes; suture materials; clips, surgical; artificial teeth; X-ray photographs for medical purposes; saws for surgical purposes, which can all be used by dentists or dental surgeons. These goods and the opponent’s goods may be connected, as they can all be used to maintain or improve oral health. Moreover, the element ‘-DENT’ in the contested sign will be perceived as referring to ‘dental’ and has, therefore, a weak degree of distinctiveness for the aforementioned contested goods, as it may be perceived as indicating that the goods are for dental use. When encountering these goods, the relevant public will not pay particular attention to the letters ‘DENT’ and will focus on the first two letters, ‘AZ’, which form the entire earlier mark.

Taking into account the relevant factors described above and especially the fact that the element ‘-DENT’ in the contested sign will be associated with dental goods for which the earlier mark has a reputation with the public at large, the relevant public might be led to believe that the applicant is somehow associated with the opponent, this despite the fact that for some of the conflicting goods no direct connection can be established between them, since they are dissimilar. This is because, in addition to the fact that the opponent’s dentifrices and the contested goods overlap to some extent in that they all relate in some way to health, they also overlap in their relevant public, since the public targeted by the contested sign also uses the opponent’s dentifrices, for which the earlier mark has a reputation.

Therefore, taking into account and weighing up all the relevant factors in the present case, the Opposition Division concludes 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) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) CTMR 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) CTMR 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’ (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 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 the following:

• The applicant will benefit from the attractiveness of the earlier mark, ‘AZ’, misappropriating its attractive powers and advertising value.

• The applicant’s commercial use of ‘AZDENT’ will obviously and seriously lessen the capacity of the opponent’s mark ‘AZ’ to identify and distinguish goods or services, as the consumers will be exposed to this name being exploited by an additional undertaking. As a consequence, the marketing value of the earlier mark will be considerably reduced.

• The applicant’s mark might be perceived by oral health professionals and consumers as reflecting the opponent’s diversifying its activities and thus becoming less specialised in the field of dentifrices; this association between the marks in the mind of the consumers could, however, positively affect the image of the applicant’s goods and services, particularly in view of the opponent’s high reputation for putting reliable products on the market.

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

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

Class 10: Medical apparatus and instruments; Brushes for cleaning body cavities; Dental apparatus and instruments; Orthodontic appliances; X-ray apparatus for medical purposes; Gloves for medical purposes; Feeding bottles; Hair prostheses; Bandages for joints, anatomical; Suture materials; Clips, surgical; Artificial teeth; X-ray photographs for medical purposes; Saws for surgical purposes; Knee bandages, orthopedic.

As seen above, the earlier trade mark was found to have a reputation for:

Class 3: Dentifrices.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) CTMR 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 (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 48; and judgment of 22/03/2007, T‑215/03, ‘VIPS’, paragraph 40).

The opponent bases its claim on the following:

By using a sign which is highly similar to a brand name already widely known on the market, the relevant public (dentists and other oral care professionals, as well as their patients) is very likely to make a link between the parties’ signs and the proprietor of the mark applied for will be capable to exploiting that link for the marketing of the goods covered by the mark. The applicant will benefit from the attractiveness of the earlier trade mark ‘AZ’, misappropriating thus its attractive powers and advertising value. This would constitute a clear exploitation and trade upon the reputation of the opponent’s reputed mark and an attempt to transfer the attractiveness to the applicant’s sign. This will lead to unacceptable situations of commercial parasitism where the applicant is allowed to free-ride on the investment of the opponent in promoting and building a goodwill for his mark, as it will stimulate the sales of the applicant’s products to an extent which is disproportionately high in comparison with the size of his promotional investment. This benefit would not be based on the applicant’s merits but solely on the reputation and high distinctive character of the earlier sign in the related territory. Thus, by permitting its registration and subsequent use of the Office would be allowing the applicant to benefit from the goodwill enjoyed by the opponent as a result of its use and promotion of the mark.

Taking into account all circumstances, it is considered that there is a high probability that the use of the contested sign might lead to free-riding, namely that it would take unfair advantage of the reputation of the earlier mark, ‘AZ’, and the considerable investments undertaken by the applicant to achieve that reputation. Due to its long-standing use, the earlier mark has built up a certain image, corresponding with certain values, such as reliability and innovation, which can be easily transposed to the contested goods. The contested sign would therefore benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own goods, which would attract the consumer’s attention thanks to the association with ‘AZ’, thereby gaining a commercial advantage over its competitor’s goods. The use of the elements ‘AZ’ and ‘DENT’ in the contested sign might also lead to the perception that the applicant was associated with or belonged to the opponent and, therefore, could facilitate the marketing of the goods for which registration is sought.

On the basis of the above, 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.

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) CTMR 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.

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

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

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Dorothée SCHLIEPHAKE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.