OPPOSITION No B 2 630 781

Kelemata S.r.l., Corso Re Umberto, 20, 10128 Turin, Italy (opponent), represented by Odra Papaleo, Via Pietro Palmieri, 14, 10138 Turin, Italy (professional representative)

a g a i n s t

Salipouss, 76 biq route du port, 29170 Fouesnant, France (applicant).

On 16/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 630 781 is upheld for all the contested goods and services, namely

Class 3: Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations.

Class 5: Dietary supplements and dietetic preparations; Hygienic preparations and articles.

Class 44: Human hygiene and beauty care.

2. European Union trade mark application No 14 304 307 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 304 307, namely against some of the goods and services in Classes 3, 5 and 44. The opposition is based on, inter alia, European Union trade mark registration No 13 615 381. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to Article 8(5) EUTMR and the earlier European Union trade mark registration No 13 615 381, for which the opponent claimed repute in Italy.

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 shall 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 of 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: 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) 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.

1. The signs

	Les tours de Vénus & Milo
Earlier trade mark	Contested sign

The relevant territory in which reputation was claimed is Italy.

The earlier trade mark is depicted in white, blue and grey.

Visually, the signs are similar to the extent that they coincide in ‘Venus’. However, they differ in the accent above the letter ‘e’ in the contested sign, and in all the elements of the signs that have no counterpart in the other sign, namely the stylisation of the script, the oval background and the colours of the earlier trade mark and the word elements ‘Les tours de’ and ‘& Milo’ of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛VENUS’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters/signs ‘Les tours de’ and ‘& Milo’ of the contested mark which have no counterparts in the earlier sign.

Conceptually, the Italian public will perceive the earlier sign as a name of the Roman goddess ‘Venus’. Since the contested mark contains the same concept, ‘Vénus’, the marks are conceptually similar to that extent. In addition, the Italian public will grasp the meaning of the connector ‘&’. The word ‘Milo’ in the contested sign can be perceived either as a reference to ‘Venus de Milo’, an ancient Greek statue that is one of the most famous works of ancient sculpture, or as a name. To that extent, the signs are not conceptually similar.

To conclude, the signs under comparison are visually, aurally and conceptually similar to the extent that they have in common the element ‘Venus’/’Vénus. This element has no clear meaning in relation to the relevant goods and services and, therefore, has a normal degree of distinctiveness. ‘Venus’ is the only word element of the earlier trade mark and, in the case of the contested sign, the element ‘Vénus’ appears as a separate distinctive element. Consequently, the marks are similar to an average degree for the purposes of Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark 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 27/06/2015. 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: Soaps; Bath foam; Perfumed toilet waters; Deodorants and antiperspirants; Body butter; Non-medicated creams; Skin cleansers; Skin emollients; Exfoliants; Essences for skin care; Age retardant gel; Cleansing gels; Moisturising gels [cosmetic]; Eye gels; Moisturizers; Age retardant lotion; Bath lotion; Cleansing lotions; Moisturising skin lotions [cosmetic]; Eye lotions; Facial lotions [cosmetic]; Skin care lotions [cosmetic]; Skin care oils [cosmetic]; Tonics [cosmetic]; Wrinkle removing skin care preparations; Skin fresheners; Antiperspirants [toiletries]; Tissues impregnated with cosmetics; Cloths impregnated with a detergent for cleaning; Make-up removing preparations; Anti-aging creams; Day creams; Milky lotions for skin care; Cosmetics for use in the treatment of wrinkled skin; Nutritional creams (Non-medicated -); Lotions for cellulite reduction; Creams for cellulite reduction; Cosmetic preparations for slimming purposes; Creams for firming the skin; Shower creams; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Soaps in liquid form; Bath preparations, not for medical purposes; Cosmetics; Perfumed soaps; Scented body spray.

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.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Enclosure 1: documents concerning the use of the mark ‘VENUS’ for beauty-care products in Italy in the early 1900s,

• Enclosures 2-4: documents concerning the acquisition of the trade mark ‘VENUS’ by the opponent,

• Enclosure 5: excerpt of a report by Nielsen showing that ‘VENUS’ was among the leading cosmetics brands in Italy in 2008,

• Enclosures 6-7: excerpts of a report by IRI for the years 2013 and 2014 showing a strong position of ‘VENUS’ face and body creams,

• Enclosure 8: statement of Ms Elisa Giraudi, legal representative of the opponent’s company, commenting on the good results of the ‘VENUS’ brand according to the IRI reports 2014-2015, accompanied by a letter from IRI to the opponent dated 2012,

• Enclosures 9 and 10: articles from Wikipedia on the market research companies IRI and Nielsen,

• Enclosure 11: presentation of Kelemata Group and its brands,

• Enclosure 12: presentation of the new ‘VENUS’ products 2015,

• Enclosure 13: marketing book concerning ‘VENUS’ products dated 2010,

• Enclosure 14: marketing book concerning ‘VENUS’ products dated 2011,

• Enclosure 15: marketing book concerning ‘VENUS’ products dated 2012,

• Enclosure 16: another marketing book for the year 2011 with information about the ‘VENUS’ cosmetic products, the history of the brand and an overview of the market shares held by ‘VENUS’ in Italy in 2009/2010 (the market shares being quite significant),

• Enclosure 17: excerpt of the ‘VENUS’ catalogue of toiletries,

• Enclosure 18: affidavit of Mr Corrado Vesino, accountant and external advisor of Keletama Group, dated 30/06/2016, attesting high advertising expenditure for the ‘VENUS’ products between 2009 and 2015,

• Enclosures 19-20: advertisements for various ‘VENUS’ products in Italian magazines from the years 2009-2014,

• Enclosures 21-22: information from Wikipedia and other websites about the magazines where the advertisements appeared and their circulation figures (being quite high),

• Enclosures 23-27: documents relating to the advertising of ‘VENUS’ products on various Italian television channels,

• Enclosures 28-31: invoices for the purchase of advertising space on television for ‘VENUS’ advertisements,

• Enclosures 32: overview of sales and advertising costs concerning ‘VENUS’ between 2000 and 2007,

• Enclosure 33: affidavit of Mr Corrado Vesino, accountant and external advisor of Keletama Group, dated 30/06/2016, attesting high sales figures for the ‘VENUS’ products between 2009 and 2015,

• Enclosures 34-43bis: hundreds of invoices for the sale of high quantities of ‘VENUS’ products in Italy between 2009 and 2015,

• Enclosure 44: affidavit of Mr Alberto Aimi, legal representative and CEO of the opponent’s company, dated 13/07/2016, attesting that the abbreviation ‘VEN.’ appearing in the invoices refers to ‘VENUS’,

• Enclosure 45: website print-outs concerning on-line sales of ‘VENUS’ products,

• Enclosure 46: documents concerning ‘VENUS’ prize competitions organized in 2014 and 2015,

• Enclosure 47: list of clients distributing ‘VENUS’ products in Italy,

• Enclosure 48: affidavit of Mr Alberto Aimi dated 03/06/2015 relating to the list of clients,

• Enclosures 49-50: judgments of Italian courts confirming reputation of ‘VENUS’,

• Enclosure 51: list of ‘VENUS’ trade mark registrations in Italy and abroad.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Italy for cosmetics in Class 3.

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

Since reputation has been proven for cosmetics in Class 3, the Opposition Division finds it unnecessary, for the purposes of the present decision, to examine whether reputation has been proven also for the remaining goods for which reputation was claimed.

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) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

The goods and services at stake are the following:

Opponent’s reputed goods:

Class 3: Cosmetics.

Contested goods and services:

Class 3: Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations.

Class 5: Dietary supplements and dietetic preparations; Hygienic preparations and articles.

Class 44: Human hygiene and beauty care.

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 essential oils and aromatic extracts are similar to the opponent’s cosmetics as they have the same purpose. They can coincide in the relevant consumer and distribution channels.

The contested toiletries and the opponent’s cosmetics overlap to a large extent and are, therefore, identical.

The contested cleaning preparations include, among other things, body cleaning preparations (such as soaps). Cleaning preparations are similar to the opponent’s cosmetics as they can coincide in producer, relevant consumer and distribution channels.

The contested fragrancing preparations have a high degree of similarity when compared to the opponent’s cosmetics as they have the same purpose. They can coincide in producer, relevant consumer and distribution channels.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations are substances prepared for special dietary requirements that have a positive effect on the consumer’s health. Although these contested goods are dissimilar to the opponent’s cosmetics in Class 3 according to the criteria of similarity mentioned above, there is nevertheless a link between them for the purposes of Article 8(5) EUTMR in that they are all related to the well-being of a person and the appearance/condition of the human body. The goods compared can be considered to fall within neighbouring markets.

The contested hygienic preparations and articles are similar to the opponent’s cosmetics as they have a similar purpose of use. They can also coincide in producer, relevant consumer and distribution channels.

Contested goods in Class 44

The contested human hygiene and beauty care is similar to the opponent’s cosmetics in Class 3 as they have the same purpose. They can coincide in relevant consumer and distribution channels. Furthermore they are complementary.

To conclude, the goods and services in dispute are partially identical, partially similar to a high degree, partially similar and partially show a certain link. The marks have been found to be similar to an average degree. The earlier mark is inherently distinctive and enjoys a solid reputation for cosmetics in Italy.

Therefore, taking into account and weighing up all the relevant factors of 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) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. 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’ (06/06/2012, 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 contested sign would unfairly benefit from the attractiveness of the earlier trade mark built up by the opponent through massive use and advertising. Furthermore, the use of the contested sign would detrimentally affect the distinctiveness of the earlier trade mark since it would diminish the capacity of the earlier trade mark for stimulating the desire of the public to buy ‘Venus’ cosmetics.

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 of the earlier trade mark.

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

Class 3: Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations.

Class 5: Dietary supplements and dietetic preparations; Hygienic preparations and articles.

Class 44: Human hygiene and beauty care.

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

Class 3: Cosmetics.

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 (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the assertion that the contested sign would unfairly benefit from the attractiveness of the earlier trade mark built up by the opponent through massive use and advertising.

The Opposition Division considers that the contested sign would indeed unduly benefit from the marketing efforts of the opponent and would free-ride on the attractiveness of the earlier mark. This is because the contested goods and services are mostly identical, highly similar or similar to the opponent’s cosmetics and, in addition, the contested dietary supplements and dietetic preparations fall in a neighbouring market. In relation to such goods and services, free-riding is quite likely because the contested sign would exploit the reputation of the earlier trade mark directly within its original market segment or in a neighbouring market.

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 of the earlier trade mark.

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

5. 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 and services.

The Opposition Division notes that the applicant did not submit any observations to defend its application.

Given that the opposition is entirely successful under Article 8(5) EUTMR and on the basis of the earlier EUTM No 13 615 381, it is not necessary to examine the remaining ground and earlier right on which the opposition was based.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.