OPPOSITION Nо B 3 049 613

 

Clinique Laboratories, Llc., 767 Fifth Avenue, New York 10153, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

 

a g a I n s t

 

Christian Joseph-Marie Pierre Marinetti, 164 Ter Rue du Commandant Rolland, 13008 Marseille, France (applicant), represented by Caroline Becard-Marinetti, 62 Rue de Maubeuge, 75009 Paris, France (professional representative).

 

On 26/01/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 049 613 is partially upheld, namely for the following contested services: Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

2.	European Union trade mark application No 17 574 311 is rejected for all the above services. It may proceed for the remaining services.

3.	Each party bears its own costs.

REASONS

 

The opponent filed an opposition against some of the services of European Union trade mark application No 17 574 311 'CLINIQUE PHENICIA' (word mark), namely against all the services in Class 44. The opposition is based on the following earlier rights:

- European Union trade mark registration No 54 411 , for goods in Class 3;

- European Union trade mark registration No 54 429 'CLINIQUE', for goods in Class 3;

- United Kingdom trade mark registration No 1 041 852 , for goods in Class 3;

- United Kingdom trade mark registration No 1 539 591 'CLINIQUE', for goods in Class 3;

- International trade mark registration designating the European Union No 1 147 439 'CLINIQUE', for goods in Class 5.

The opponent invoked Article 8(1)(b) as regards all earlier marks and Article 8(5) EUTMR in relation to the earlier EUTMs and national trade marks only.

PRELIMINARY REMARKS

On the validity of earlier UK trade mark registrations

On 01/02/2020, the United Kingdom withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations No 1 041 852 and No 1 539 591 'CLINIQUE', both for goods in Class 3, no longer constitute valid bases for the opposition.

On the ceasing of existence of earlier IR

In its letter of 08/10/2020, the opponent withdrew earlier International trade mark registration designating the European Union No 1 147 439 'CLINIQUE' filed on 18/01/2013 for medicated skin care preparations in Class 5 as a basis of the opposition.

In any case, this earlier mark was previously declared invalid by decision of the Cancellation Division No 36 502 of 22/04/2020, notified to the parties on 14/05/2020. The decision was appealed by the opponent in the present proceedings on 22/06/2020, but the appeal was subsequently withdrawn on 20/08/2020, rendering the invalidity decision final as stated by the Boards of Appeal in its decision R 1276/2020-2 of 21/09/2020.

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

As is apparent from the facts stated above, the earlier mark ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 46(1)(a) EUTMR and Article 8(2) EUTMR.

The opposition must, therefore, be rejected as unfounded as far as it is based on this earlier mark.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

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

In the present case, the applicant 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.

1. Reputation of the earlier trade marks

According to the opponent, the earlier EUTMs have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 07/12/2017. However, the contested trade mark has a priority date of 03/08/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Toiletries and body care preparations, soaps, perfumery, essential oils, cosmetics, anti-perspirants, talcum powder, hair care products including lotions; 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 16/11/2018, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents (identified by the opponent as Enclosure 2):

• Enclosure A1: extracts from the audited annual reports for 2004, 2007, and 2009 to 2017 of the Estée Lauder Companies, Inc., the group to which the opponent belongs. The evidence demonstrates significant net sales and net earnings in the group (all in US$) and shows ‘CLINIQUE’ among the group’s portfolio of trade marks, but there is no information about the sales connected to this specific brand and particularly of its revenue originating from the European Union.

• Enclosure A2: printouts from The Estée Lauder Companies’ website, www.elcompanies.com, dated 26/02/2010 and 16/10/2018 (the last ones containing captures made by the Internet Archive WayBackMachine between 15/12/2011 and 31/05/2017), containing references to the opponent’s trade marks, including ‘CLINIQUE’. In addition, the opponent submitted copies of Estée Lauder annual reports for 2004 to 2017 containing information about its trade mark portfolio, mentioning the trade mark ‘CLINIQUE’ and its range of products. Again, there are no specific sales figures regarding ‘CLINIQUE’ in Europe, although some reports highlight sales growth in the region for the entire group of companies. It is also stated that the prestige cosmetic brand Clinique is ‘one of the leading skin care authorities in the world’.

• Enclosure A3: printouts (captured on 23/10/2018) from the opponent’s subsidiaries’ websites for ‘CLINIQUE’ in the United Kingdom, Germany, France, Italy, Belgium, Hungary, Austria, Cyprus, Denmark, Spain, Greece, the Netherlands, Poland, Portugal, Czech Republic and Sweden (e.g. www.clinique.de, www.fr.clinique.com or www.cliniqueitaly.it). These documents show the trade mark ‘CLINIQUE’ in relation to toiletries, skin care and make-up products.

• Enclosure A4: extracts of rankings published by the magazine Fortune about America’s and World’s Most Admired Companies. According to these documents, Estée Lauder was ranked among the six most admired companies in the sector of ‘consumer products/household and personal products’ and ‘soaps and cosmetics’ in the years 2003-2004, 2006-2014 (the second one in 2004, 2006-2008). The document also contains extracts of rankings published by the magazine Forbes regarding the World’s Most Reputable Companies, all featuring The Estée Lauder Companies, for the years 2015 (41^st), 2016 (51^st), 2017 (37^th) and 2018 (63^rd).

• Enclosure A5: rankings of the trade mark ‘CLINIQUE’:

• Extracts showing the rankings given by Total Beauty Media to the trade mark ‘CLINIQUE’ regarding share of audience (web traffic from readers) on the basis of brand response figures compiled from the ranking company network at www.totalbeautymedia.com. ‘CLINIQUE’ was ranked at number one in November-December 2008 and number two in November 2009. There is no indication of the market of reference.

• Extracts of the ‘Brand Keys Customer Loyalty Leaders’ rankings from 2015 to 2018 featuring ‘CLINIQUE’ among the top 100 brands in a cross-category analysis of different industry categories (76^th place in 2015, 97^th in 2016, 96^th in 2017 and 92^th in 2018). There is no indication of the market of reference.

• Extracts of the ‘Digital IQ Index’ for the years 2009 and 2010, ranking the digital competence of luxury brands, that is their online presence. ‘CLINIQUE’ was ranked as the 9^th most digitally competent luxury brand and as the first one of the beauty and skincare sector. There is no indication of the market of reference although the opponent indicates that the rankings are world-wide.

• Extracts of the ‘Brand Relevance Index’ for the years 2017 and 2018, ranking the most relevant brands in the United Kingdom. ‘CLINIQUE’ was ranked at number 27 in 2017 and 41 in 2018 (number 3 in the beauty sector).

• Enclosure A6: an affidavit by the Associate Counsel at the Estée Lauder Companies, Inc., dated 14/11/2018. The affidavit states that the trade mark ‘CLINIQUE’ has been used in Europe since 1969-1970 (in the United Kingdom, Sweden, France and Denmark) and that by 1994, the mark had been used in every single Member State of the European Union. The product range includes, in particular, colour cosmetics, skin care products, deodorants, women’s and men’s fragrances, sun care products, hair care products and men’s grooming products. The affidavit also states that ‘CLINIQUE’ products are sold in perfumeries and up-scale department stores, as well as in in-flight and duty-free shops in airports and cities.

The affidavit indicates that ‘CLINIQUE’ has strong, loyal consumer base and significant sales in Europe, and contains sales figures (in US$) for the sales and marketing region Western Europe (including Austria, Benelux, France, Germany, Italy, Portugal and Spain) for the financial years 2004-2009 and for EMEA region for the financial years 2012-2018 (according to the affidavit, the EU makes up a ‘significant portion of this region in terms of sales’ but no dissection by territory is presented). The turnover figures presented show significant sales in Western Europe/EMEA as a whole and in some individual EU countries, including through online stores (through ‘CLINIQUE’ country specific websites or retailers’ websites).

The tables presented also give figures on advertising expenditure for ‘CLINIQUE’ goods for the financial years 2004-2009 for Western Europe (including Austria, Benelux, France, Germany, Italy, Portugal and Spain), for 2012-2015 for a wider portion of Western Europe (including Austria, Benelux, Bulgaria, Denmark, France, Germany, Greece, Italy, Portugal, Romania, Spain and Sweden), and for 2016-2018 for EMEA as a whole, as well as for 2004-2009 and 2012-2018 for some individual countries, namely Germany, France, Italy and Portugal/Spain. This expenditure is also put in relation to total net sales in the above-mentioned individual European countries between 2012 and 2018, from which it can be deduced that the abovementioned goods have been extensively promoted during these years. The affidavit includes Exhibit A, showing tables containing lists of articles relating to ‘CLINIQUE’ appearing in French and Polish publications from 2004 to early 2010, and Exhibit B, showing tables containing awards granted to ‘CLINIQUE’ products by fashion and beauty magazines worldwide from 2003 to 2018, including in some European countries such as Germany, France, Italy and Spain.

• Enclosure A7: printouts from the commercial Corsearch database showing lists of the opponent’s word and figurative trade marks in the EU containing or consisting of the element ‘CLINIQUE’.

• Enclosure A8: printouts from the opponent’s website in the UK and Germany (captured on 16-25/10/2018), as well as Italian catalogues for the years 2013 to 2018, showing the opponent’s range of goods, that is, colour cosmetics (facial make-up, eye make-up, lip products and nail products), skin care (facial care, body care and hand care products), deodorants, women’s and men’s fragrances, sun care products (sun protection, after sun and self-tanning products), hair care products (shampoo, conditioner and styling products), and men’s skin care and men’s grooming products (men’s pre-shave products, men’s post-shave products, men’s bath and shower products, men’s deodorants, men’s hair care products).

• Enclosure A9: printouts captured on 16-25/10/2018, as well as others dated 2005 and 2010, from the opponent’s subsidiaries’ websites in the United Kingdom and Germany (www.clinique.co.uk; www.clinique.de) regarding the opponent’s additional activities in the beauty sector, which, according to the opponent, refer to consultancy services regarding perfumery, make-up and skin treatment products to its customers, as well as advisory services to licensed dealers regarding promotion, presentation and sale of ‘CLINIQUE’ products and advising of customers. The opponent’s websites include questionnaires to help its customers find out what their skin type is or the peculiarities of their skin and choose, accordingly, the facial products that suit them best.

• Enclosure A10: excerpts from publications targeting the travel retail industry, namely from Travel Retail Executive News Digest (TREND), dated 12/02/2007; The Business, dated March/April 2007 and August/September 2008; The Moodie Report, dated April 2007 and 29/01/2007; Duty-Free News International (DFNI), dated December 2009; The Travel Retail Business, dated January 2010; and Perfume Bar Bahamas, dated September 2008. The extracts refer to a ‘CLINIQUE’ global survey carried in twelve countries world-wide in 2007 (including Germany, Italy, and Spain), the scientific development of the brand and the opening of a new ‘Clinique Skin Wellness Center’ in New York in 2007 aiming to undertake research projects and educate the public about skin care issues, the qualifications of Clinique’s in-store beauty consultants and the importance of their continuing education, the launch of new products and an award for ‘best new skincare launch’ to a ‘CLINIQUE’ product in 2009. While some of the publications refer to the USA or the UK, others were published in the relevant territory, namely Germany and France.

• Enclosure A11: a copious sample of invoices issued by the Estée Lauder Companies in countries of the EU (Finland, Germany, Greece, Hungary, Italy and Poland) from 2009 to 2016. While the trade mark ‘CLINIQUE’ barely appears in the invoices in relation to some products (e.g., -Clinique Happy Perfume Spray-), some contain the abbreviation ‘CL’ for ‘CLINIQUE’ (e.g., ‘CL High impact mascara’, ‘CL Facial soap’, ‘CL Blushing nude’ or ‘CL Deo natural spray’). In other cases, the product designations reveal that the sales relate to ‘CLINIQUE’ products mentioned in other parts of the evidence as annual reports, advertising material or printouts from the internet (e.g., ‘Happy for men perfume’, ‘All about eyes serum’, ‘Even better’ or ‘Youth surge’).

• Enclosure A12: a copy of a 2009 survey report about premium foundations issued by Euromonitor International, an independent company providing, inter alia, market reports and other business information. According to the results of the survey, ‘CLINIQUE’ foundations were ranked, inter alia, second for volume sales in Germany and Spain, at number three in France and at number four in Italy.

• Enclosure A13: an excerpt (printed in 12/03/2010) of the Euromonitor website, www.euromonitor.com, with information about this company.

• Enclosure A14: an undated advertising material showing ‘CLINIQUE’ foundations (liquid make-up and powder make-up).

• Enclosures A15-A18: copies of printed advertisements published, between 1996 and 2003 (A15) and from 2004 to 2007 (A17) in German women’s magazines (e.g. Cosmopolitan, Marie Claire, Amica and Glamour). The trade mark ‘CLINIQUE’ and the goods to which it is applied, such as soaps, shampoos, perfumes, make-up and skin care products, are shown in the advertisements. Enclosure A15 also includes a list of what the opponent defines as a broadcasting schedule for television promotional material (dated September 2003); it refers to ‘CLINIQUE’ 3-step-system and also contains the trade mark ‘Douglas’. Enclosure A16 contains the TV spot form Douglas promoting ‘CLINIQUE’ products referred to in the previous schedule. In Enclosure A17 the opponent further attaches a report on distributor’s point of sale advertising measures carried out between 2013 and 2016 in Germany (e.g., Douglas, Müller, Kaufhof), printouts regarding beauty blog collaborations (all the captures from 2016), a list of promotional events organised by and with the participation of the opponent (e.g. presentations of new cosmetics, an overview of ‘CLINIQUE’ products, customer promotions, etc.) in Germany between 2004 and early 2010, as well as a list of awards won by ‘CLINIQUE’ products in that country between 2004-2010 and 2013-2016, such as the Cosmopolitan Prix de Beauté (in 2004, 2007-2010, 2013-2015), the Glamour magazine Glammy Award (each year from 2005 to 2010, and also in 2013 and 2016), the Joy Trend Award (in 2009, 2014 and 2016), the GQ Style Award (in 2009), the Gala Spa Award (in 2013 and 2015) or the Elle Beauty Award (in 2016). Finally, Enclosure A18 contains printouts from the German advertising-slogan database www.slogans.de featuring various slogans from ‘CLINIQUE’ advertisements in, inter alia, Germany (2000 and 2003). Furthermore, the opponent submitted an extract from the German website www.werbesongs.tv mentioning a TV commercial for a ‘CLINIQUE’ skin care product shown in 2008.

• Enclosures A19-A27: a copious collection of advertisings from magazines and other publications in relation to France (A19), Italy (A20), Spain (A21), the United Kingdom (A23-A25), Poland (A26), Denmark, Sweden, Finland, Austria and the Benelux (all in A27), from 1998 to 2011, as well as four promotional spots shown on Spanish TV in 2005 (A22). For France, the opponent submitted pictures of outdoor advertising by the advertising company JCDecaux dated from 2012 to 2018. For Italy, the opponent also submitted a communication plan for 2011, some more recent press advertisements form 2015 to 2017, some of them accompanied by their respective invoices, as well as undated pictures of ‘CLINIQUE’ counters and in-store advertising, which the opponent presents as points of sales 2015, 2016, 2017 and 2018 (accompanied by some invoices of the advertising actions). Enclosure A27 also contains information on some awards won by Clinique products in Sweden (from 2006 to 2009), the Benelux (from 2001 to 2009) and in Ireland (in 2011). All these items of evidence show the mark ‘CLINIQUE’ used on various goods such as soaps, moisturising creams, face lotions, shampoos, perfumes, lipsticks and other cosmetics.

• Enclosure A28: undated printouts from the social media profiles for the ‘CLINIQUE’ brand, namely Facebook, Twitter, Instagram and YouTube, showing the followers, likes or views to said profiles or their content.

• Enclosure A29: printouts regarding the prizes awarded to ‘CLINIQUE’ products by beauty magazines (e.g., Cosmopolitan, Allure, Elle, Glamour, Weekend, Telva, Instyle, Styl.pl, Vogue, Marie Claire, Mujer Hoy, etc.) form 2011 to 2018, all featuring at least one product from ‘CLINIQUE’.

• Enclosure A30: a copy of a market survey on consumer awareness of the brand ‘CLINIQUE’ in France in March 2004 (it includes a translation into English of relevant parts). The survey was carried out by TNS Sofres, an independent market research company, and it demonstrates that in France a significant percentage (43%) of those interviewed (1043 women of 15 years old and more) were familiar with the ‘CLINIQUE’ brand and in the core target of ‘CLINIQUE’, namely women of 25-29 years old, from high social and professional categories, city inhabitants, with high purchase power and highly educated, the knowledge of the brand reached a 75%. In addition, the trade mark ‘CLINIQUE’ was spontaneously recalled (‘top-of-mind’ reputation) by a 20% of the core target women interviewed (6% in all the interviews) when asked about the relevant product category, and a 8% of this core target mentioned it first (2% in all the interviews).

• Enclosure A31: a copy of a market survey conducted by Dinamiche, an independent research company, in Italy in November 2007 (it includes a translation into English of relevant parts). Of a total of more than 500 people questioned, a significant percentage (53% and 43%) associated the word ‘CLINIQUE’ and the logo ‘CLINIQUE’ with cosmetics.

• Enclosure A32: a copy of a market survey conducted by the independent opinion poll company Millward Brown SMG/KRC in Poland in October 2008 (it includes a translation into English of relevant parts). Of 500 women asked to name luxury cosmetic brands, a significant percentage, in terms of both spontaneous (13%) and aided awareness (77%) specified ‘CLINIQUE’. In addition, a considerable proportion (41%) of the respondents thought that the ‘CLINIQUE’ mark had a reputation and associated it with high quality and luxury. A significant proportion (20%) of the interviewed also associated ‘CLINIQUE’ with purity.

• Enclosures A33 to A37: several decisions from, inter alia EU national and European courts (dated, inter alia, 1994, 2006, 2015 and 2018), as well as from the EUIPO (dated 2009, 2010, 2012, 2013, 2014 and 2016) ruling, inter alia, on the distinctiveness and reputation of some of the opponent’s marks.

On 28/11/2019, after expiry of the time limit, the opponent submitted additional evidence, namely in the context of the proof of use request and in particular only in relation to hair care products including lotions.

In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 28/11/2019 can remain open, as the evidence submitted within the time limit is sufficient to prove the reputation of the earlier trade marks.

Analysis of the evidence

The opponent has submitted, inter alia, evidence relating to the United Kingdom with a view to demonstrating the reputation of the earlier EUTMs. However, it follows from Article 8(5) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot be taken into account to prove reputation ‘in the EU’.

However, it is still clear from the remaining evidence that the earlier trade marks have been subject to longstanding and intensive use and that they are generally known in the relevant market, where they enjoy a consolidated position among the leading cosmetic brands, as has been attested by independent and diverse sources. In particular, the various market surveys conducted in different countries by different independent market research companies show that the earlier trade marks are immediately recognised by a significant part of the relevant public. The sales figures, marketing expenditure, rankings shown by the evidence, as well as the number of advertisements in a wide range of fashion and lifestyle magazines, showing a significant media coverage, together with the press articles about and awards won by the opponent’s products, leave little doubt that the relevant public knows the trade marks in question and that these marks enjoy a certain degree of recognition in relation to cosmetics and skin care products. Although some of the information provided originates from the opponent itself (or related companies such as the parent company Estée Lauder Inc.), there is a significant amount of information provided by third parties and independent sources such as Euromonitor International, which is the world’s leading provider of global consumer intelligence (Enclosure A12), the TNS Sofres survey (Enclosure A30), an independent market research company in France, the Dinamiche survey in Italy (Enclosure A31) and the Millward Brown survey in Poland (Enclosure A32). The percentages resulted from these surveys in the context of the diverse and competitive cosmetic market suggest that the earlier trade marks have prominent position on this market for beauty and personal care products, which stand out as high-quality and prestigious goods associated with purity and wellness.

It should be also pointed out that even if some of the documents are dated in a period that is significantly distant form the relevant date (priority date of the contested EUTM: 03/08/2017), the possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the relevant date (see, by analogy, order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; judgments of 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 82). In this regard, the relevance of the evidence should be carefully assessed by reference to the kind of goods concerned because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved. In the present case, the independent market surveys conducted during several successive years, the last one being dated at the end of 2008, together with other substantial evidence, unequivocally demonstrate that the marks enjoyed at that date a high degree of recognition among the relevant public and had acquired a strong reputation linked to cosmetic products. The Opposition Division is of the opinion that this degree of recognition acquired through such a longstanding and intensive use, as shown by the evidence, in this particular market sector where consumers are usually loyal in their choices, is not likely to be diluted fast since it would presuppose a dramatic change of market conditions over a relatively short period of time. Although additional, up-to-date evidence on trade mark awareness would have strengthened the conclusion on reputation, the Opposition Division is of the opinion that the reputation of the earlier marks at the relevant date cannot be denied.

On the basis of the above the Opposition Division concludes that the earlier trade marks enjoy a certain degree of recognition among the relevant public and have some reputation in the European Union.

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods on which the opposition is based and for which reputation has been claimed. As stated above, the evidence mainly relates to toiletries and body care preparations, soaps, perfumery, cosmetics, anti-perspirants, hair care products including lotions, whereas there is no reference to the remaining goods in Class 3, namely essential oils, talcum powder; dentifrices. Not only is there no sign of reputation for these goods but the Opposition Division cannot find any indication that the earlier trade marks have been put to genuine use in relation to these goods.

For the sake of completeness, it should be noted that in its letter of 10/07/2019, the applicant requested that the opponent submit proof of use of, inter alia, the two European Union trade marks No 54 411 and No 54 429 'CLINIQUE' on which the opposition is validly based and which were registered more than five years prior to the relevant date mentioned above.

However, the request made by the applicant was restricted to part of the goods in Class 3, namely essential oils, talcum powder, hair care products including lotions; dentifrices.

Therefore, the applicant did not contest the use of the earlier marks in relation to the remaining goods in Class 3, namely toiletries and body care preparations, soaps, perfumery, cosmetics, anti-perspirants.

In its observations submitting proof of use dated 28/11/2019, the opponent clearly restricted its arguments and evidence to the use of the earlier marks in relation to hair care products including lotions (see page 2 to 5 of the said observations), implicitly recognizing that no use had been made for essential oils, talcum powder; dentifrices, as claimed by the applicant.

Consequently, taking into account that lack of submissions regarding essential oils, talcum powder; dentifrices, as well as the fact that the opponent’s hair care products including lotions have been considered even reputed on the basis of the initial evidence submitted by the opponent, the Opposition Division considers that the proof of use does not need to be assessed, as the outcome of the decision would be the same.

Therefore, the Opposition Division will continue the examination of Article 8(5) EUTMR only in relation to the goods for which reputation has been proven, namely toiletries and body care preparations, soaps, perfumery, cosmetics, anti-perspirants, hair care products including lotions in Class 3.

b) The signs

1) 2) CLINIQUE	CLINIQUE PHENICIA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The element ‘CLINIQUE’ of the earlier marks will be perceived by the French-speaking public in the relevant territory as ‘clinic’, referring to ‘a place in which outpatients are given medical treatment or advice, often connected to a hospital’ (information extracted from Collins English Dictionary on 21/01/2021 at www.collinsdictionary.com/dictionary/english/clinic). This is also true as regards consumers throughout the relevant territory as the word ‘CLINIQUE’ is very similar to the equivalent words in the official languages of other European countries, such as ‘clinic’ in English, ‘clínica’ in Spanish, Italian and Portuguese and ‘Klinik’ in German, Danish and Swedish; even languages with no Germanic or Latin origins, such as Hungarian (‘klinika’), have similar equivalent words (as confirmed in, inter alia, judgment of 13/05/2015, T-363/13, ‘CLEANIC intimate’, § 73). Although this element may somehow allude to the idea that the goods have semi-medical qualities, it has no clear meaning for any of the goods in question from the perspective of the public in the relevant territory and, therefore, its inherent distinctiveness is normal. The stylized letter ‘C’ contained in the sign will be perceived by the relevant public as the initial of the verbal element ‘CLINIQUE’ to which it reinforces.

The element ‘CLINIQUE’ contained in the contested sign will be associated with the same meaning indicated above. Bearing in mind that most part of the services concerned are medical/surgical-related, the element ‘CLINIQUE’ is weak for these services and even non-distinctive at least for the French-speaking part of the public, since it merely designates a place where these services are often and commonly provided, that is to say, a medical centre. This is the case of the following services:

Class 44: Medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; use of medical and cutaneous lasers; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals.

On the contrary, the element is normally distinctive as regards the remaining services that are not necessarily medical-related or that may be provided by beauty salons, spas or other beauty centers by duly trained non-medical professionals, namely the following:

Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

The second element contained in the contested sign, namely ‘PHENICIA’, will be perceived by at least part of the public as ‘an ancient maritime country extending from the Mediterranean Sea to the Lebanon Mountains, now occupied by the coastal regions of Lebanon and parts of Syria and Israel: consisted of a group of city-states, at their height between about 1200 and 1000 BC, that were leading traders of the ancient world’ (same dictionary and date at https://www.collinsdictionary.com/dictionary/english/phoenicia). This is because, despite not existing as such in any of the official languages in the relevant territory, it is very close to the equivalent words in some of them, such as ‘Phoenicia’ in English, ‘Phénicie’ in French, ‘Fenicia’ in Italian, Spanish and Romanian, ‘Fenícia’ in Portuguese and Slovak or ‘Fenicja’ in Polish. For another part of the public the term will be considered as a fanciful meaningless term. Whether it conveys a meaning or not, ‘PHENICIA’ will be perceived as the name of the establishment. In any case, it is distinctive since it is not related to the services concerned.

In this regard, the opponent makes a series of claims in the direction of stating that the term ‘PHENICIA’ is non-distinctive, namely that it will be understood as merely descriptive and lacking distinctiveness by the majority of the EU consumers, who will perceive it as a place name, as an ingredient used in cosmetics and medical sector (Phoenicean juniper – as per Enclosure 5 of the opponent’s submissions) or as a reference to the ancient beauty rituals of the Phoenicians. According to the opponent, Internet searches reveal numerous hotels, spas, beauty salons and theatres all containing ‘Phenicia’ or ‘Phoenicia’ and submits evidence in this regard (identified as Enclosure 3). It also claims that the knowledge of this civilisation is widespread as attested by the search results and information submitted (identified as Enclosure 4). The opponent further states that the relevant public will perceive the ‘CLINIQUE’ element as the dominant and only distinctive component of the contested mark and will disregard the element ‘PHENICIA’ as non-distinctive.

It should be pointed out at the outset that even if the term ‘PHENICIA’ is understood by at least part of the relevant public as an outdated geographical name, it does not designate a place associated with the services concerned, in the sense that it is already famous, or is known for this category of services. Therefore, it does not describe any of their objective characteristics, such as the place where the services are rendered.

As regards the printouts from the Internet, apart from the fact that several results refer to business outside the relevant territory (e.g., a hotel in Lebanon, beauty salons in Kuwait and Argelia or a theatre in New York), the existence of a few hotels in the relevant territory has no connection with the services at hand, and only one beauty salon in Germany does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘PHENICIA’ for the services concerned.

Furthermore, while the Opposition Division does not put into question a certain knowledge in the relevant territory about the Phoenician civilisation, it is not clear which are the ancient beauty rituals for which the Phoenicians were eventually famous for and which may impair the distinctiveness of the element ‘PHENICIA’ as regards the services in question.

Finally, in relation to the Phoenician juniper as a plant ingredient for cosmetic products or used in the medical sector, the extracts from the Internet filed by the opponent do not demonstrate that the general public is aware of this ingredient, since it is not a generally known cosmetic ingredient like, for example, aloe vera, and neither does the scientific thesis from a researcher of an Iraqi university.

Therefore, the opponent’s claims regarding the distinctive character of the term ‘PHENICIA’ should be set aside.

In addition, apart from the verbal element, earlier mark 1) contains two parallel horizontal lines, which merely frame the verbal element ‘CLINIQUE’. Therefore, these lines are of a purely decorative nature.

In earlier mark 1), all the elements have a more or less comparable visual impact and none of them can be considered clearly more dominant than the other, even taking into account the slightly bigger size of the stylised letter ‘C’ appearing on top of the element ‘CLINIQUE’.

Furthermore, contrary to the opponent’s assertions, the contested sign has no element that could be considered more dominant (visually eye-catching) than other elements, since word marks have no dominant elements by definition.

The opponent also refers to the importance of the fact that the coinciding element appears at the beginning of the contested mark. However, even if consumers generally pay more attention to the beginning of a sign, this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (15/07/2011, T-220/09, ERGO, EU:T:2011:392, § 31). In particular, it cannot be given much weight to this first element of the contested mark in relation to medical/surgical-related services for the reasons stated above.

Visually, the signs are similar to the extent that they coincide in the word ‘CLINIQUE’, which forms the earlier mark 2), also constituting the single verbal element of the earlier mark 1), and is included in the contested mark as its first element. However, the signs differ in the remaining element ‘PHENICIA’ of the contested sign, as well as in the stylised letter ‘C’ and the purely decorative lines contained in earlier mark 1).

Therefore, and also taking into account the distinctiveness of the elements composing the signs and particularly of the coinciding element, they are visually similar from a low to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the element ‘CLINIQUE’ present at the beginning of the contested mark. The pronunciation differs in the sound of the additional element ‘PHENICIA’ of the contested sign and in the sound of the stylised letter ‘C’ of earlier mark 1), in the unlikely case it is pronounced.

Therefore, and also taking into account the distinctiveness of the elements composing the signs and particularly of the coinciding element, they are aurally similar from a low to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs have in common the concept of ‘clinic’, understood throughout the European Union, and the contested sign will also convey, at least for part of the public, the meaning related to the Phoenician ancient civilization. Therefore, and also taking into account the distinctiveness of the elements composing the signs and particularly of the coinciding element, they are conceptually similar from a low to an average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

2. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

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

• the degree of similarity between the signs;

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

• the strength of the earlier mark’s reputation;

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

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

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.

First, the signs are visually, aurally and conceptually similar from a low to an average degree owing to the presence in the signs of the word ‘CLINIQUE’, which does not convey any meaning in connection with the opponent’s goods, and is placed at the beginning of the contested mark.

It has also been concluded that the earlier marks enjoy a certain degree of recognition among the relevant public and have some reputation as a consequence of a longstanding and intensive use in the market for toiletries and body care preparations, soaps, perfumery, cosmetics, anti-perspirants, hair care products including lotions in Class 3, while the applicant seeks protection for, inter alia, the following contested services:

Class 44: Medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; exfoliater; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; skin treatments; photorejuvenation; use of medical and cutaneous lasers; laser depilation; cryolipolysis; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals.

The contested services are mostly in the nature of medical care services. However, part of the contested services can be considered of an hygienic and beauty care nature in a broad sense.

The Opposition Division considers that a link between the opponent’s reputed cosmetic goods in Class 3 and the contested services in the sector of hygienic and beauty care is more than evident. It is not uncommon in the marketplace that enterprises producing cosmetics extend their business to the provision of non-medical beauty services under the same trade marks. Consumers may opt, for example, to buy the cosmetics or to use the services of a beauty centre or spa, where such products are applied, in order to receive a more complete or relaxing beauty experience. The relevant sections of the public for the trade marks in dispute coincide, as both goods and services may target the same type of public.

Therefore, the contested sign, ‘CLINIQUE PHENICIA’, is sufficient to trigger a link with the reputed earlier marks, ‘CLINIQUE’, in the mind of the relevant public for some of the applicant’s services in Class 44, namely the following services in relation to which the element ‘CLINIQUE’ of the contested sign has been considered normally distinctive:

Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

Therefore, as far as these goods and services are concerned, 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 marks, 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).

The Opposition Division has to come to a different conclusion as regards the remaining contested medical care services, namely the following:

Class 44: Medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; use of medical and cutaneous lasers; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals.

The Opposition Division deems that it is not a common trend for enterprises in the cosmetic field to also act in the medical sector, including cosmetic or plastic surgery. This is a highly specialised field that cannot be said to be a neighbouring or related market in relation to the reputed goods in Class 3. Furthermore, the word ‘CLINIQUE’, included in the signs (and understood throughout the European Union as meaning ‘a place in which outpatients are given medical treatment or advice, often connected to a hospital’), is descriptive for the contested medical care services in Class 44, since, as stated above, it merely designates a place where these services are often and commonly provided, that is to say, a medical centre. Therefore, it is likely that consumers would not pay as much attention to this element as to the other, more distinctive, element ‘PHENICIA’ of the contested sign, thus preventing them from establishing a link between the signs. While some of the above-mentioned services are non-invasive skin treatments, they still should be applied by medical professionals or under strict medical control in authorized sanitary establishments or clinics. In addition, the public’s level of attention is deemed to be higher than average in relation to these medical services because they are related to their health and are normally expensive services.

The opponent claims that the goods in Class 3 for which ‘CLINIQUE’ is well-known are luxury goods as are the services encompassing cosmetic and similar elective surgeries in Class 44 of the contested mark. However, this fact in itself does not contribute to establishing a link between the signs for the above-mentioned reasons.

Therefore, in relation to these services, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as regards these contested services.

d) Risk of injury

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

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

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

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

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

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

The opponent claims that the contested sign would take unfair advantage of the distinctive character and the reputation of the earlier marks, because the contested sign identically incorporates the element ‘CLINIQUE’ and the contested services are highly similar or closely related to the reputed goods. In addition, the opponent claims that the applicant’s trade mark will benefit from all the positive connotations of the opponent’s brand, such as high quality and luxury image, and the association with beauty and youth. Furthermore, the opponent claims that the use of the mark applied for will lead to the distinctive character of ‘CLINIQUE’ suffering detriment; in particular, it alleges that its capacity to create an immediate association with the opponent’s goods will be diminished. Finally, the opponent argues that the use of the contested sign for, inter alia, the contested medical services, which encompass surgery and, in particular, cosmetic surgery, will damage the reputation of the opponent’s earlier marks because these services conflict with the non-invasive goods of the earlier marks, which are destined to bring out the natural beauty of its customers.

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 claims, it is appropriate to recall that the opposition is directed against the following services for which the link has been established:

Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

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

Class 3: Toiletries and body care preparations, soaps, perfumery, cosmetics, anti-perspirants, hair care products including lotions.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The trade mark applied for would take unfair advantage of the distinctive character and reputation of the earlier ‘CLINIQUE’ marks because the mark applied for covers services that are highly similar or closely related to the goods for which the earlier marks are used, protected and reputed.

 The mark ‘CLINIQUE’ is one of the most renowned skin care and cosmetic brands in the EU and the mark applied for covers, inter alia, skin treatments related to beauty. Therefore, it is highly likely that the applicant did indeed intend to profit from the efforts made by the opponent in building up goodwill in its brand by adopting a mark that consumers would immediately link to ‘CLINIQUE’ and the opponent.

 Moreover, the ‘CLINIQUE’ brand enjoys a high quality and luxurious image, and is associated with beauty and youth. It would undoubtedly benefit the applicant’s mark to be associated with all the positive connotations of the ‘CLINIQUE’ brand, free-riding on its reputation as prestigious luxury brand, which the opponent has built over the course of over forty years by means of investing a huge amount of resources and effort promoting it in the EU.

The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign which is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism where the applicant is allowed to take a ‘freeride’ on the investment of the opponent in promoting and building-up goodwill for its mark, as it may stimulate the sales of the applicant’s products to an extent which is disproportionately high in comparison with the size of its promotional investment.

According to the Court of Justice of the European Union

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

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

In the present case and in view of the reputation of the earlier ‘CLINIQUE’ marks, there is a high risk that the contested sign, intentionally or unintentionally, will benefit from the image of the earlier reputed marks and that the connotations that they have will be transferred to the applicant’s services, considered of an hygienic and beauty care nature, if they are marketed under the similar sign ‘CLINIQUE PHENICIA’. As the opponent has demonstrated, its marks are associated by consumers with the concepts of quality, luxury, beauty and youth. The average consumer is familiar with the earlier marks and buys the goods under the ‘CLINIQUE’ marks aiming to gain a healthy beautiful skin and improve its appearance. The contested services are closely related to the goods of the earlier trade marks in respect of which they have reputation. Under these circumstances, the applicant is certain to accrue an unearned commercial advantage from the inevitable connection consumers will make between the applicant’s sign and the earlier reputed marks.

It is precisely because of the efforts of the opponent in promoting its mark, and not those of the applicant, that the contested sign would make a debut in the market with an unfair and immediate degree of recognition. In other words, the reputation of the earlier marks ‘CLINIQUE’ make it highly likely that consumers would promptly recognise it when faced with services bearing the similar contested sign, thus linking them with the opponent’s goods. This is reinforced by the fact that the contested services and the opponent’s goods can be provided by the same companies.

Therefore, in the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. The opponent has put forward a coherent line of argument, showing how unfair advantage would occur, and that it is indeed likely in the ordinary course of events. The long-established use and recognition of the earlier marks makes it probable that consumers’ economical behaviour would be swayed in favour of the applicant’s services solely because they are commercialised under a sign containing the element ‘CLINIQUE’ of the reputed earlier marks. The signs have been found similar and, therefore, it is likely that the image of the earlier marks and the messages that they convey would be unfairly transferred to the abovementioned contested services in Class 44.

On the basis of the above, it is concluded that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks in relation to the following contested services:

Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

Other types of injury

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

 

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

e) Due Cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

According to the applicant, it has a due cause to use the term ‘CLINIQUE’ since it is a generic term in the medical sector. It further argues that the juxtaposition of the term ‘CLINIQUE’ with the proper name ‘PHENICIA’ makes the mark a unitary set understood as designating a private care establishment whose name is ‘PHENICIA’. Therefore, it informs the public about the type of establishment in which the services (medical and surgical) are dispensed.

In other words, according to the applicant, the term on the basis of which the signs were found to be similar is descriptive of the services covered by the contested trade mark.

In reply, the opponent argues that the fact that the term ‘CLINIQUE’ indicates the type of establishment in which the contested services are dispensed does not constitute due cause for using and registering a trade mark.

The applicant’s claim is not well founded.

As was concluded in section c) of this decision, the use of the element ‘CLINIQUE’ merely designates a place where the applicant’s medical care services are often and commonly provided. For this reason, a link with the goods for which the earlier mark has a reputation cannot be found insofar as these services are concerned.

In relation to the applicant’s other services, it should be pointed out that due cause may be found where the applicant establishes that it cannot reasonably be required to abstain from use of the mark (e.g. because its use of the sign is a generic use to indicate the type of goods and services in question, whether using generic words or generic figurative devices), or where it has some specific right to use the mark for the goods and services (e.g. it shows that a relevant coexistence agreement permits its use of the sign). However, the applicant has not provided any argument as to why it has a due cause to use the mark applied for in connection with beauty care and related services in relation to which the term is normally distinctive.

On the basis of the above, the Opposition Division considers that the applicant does not have due cause for using the contested trade mark, because ‘CLINIQUE’ cannot be considered a generic term indicating the type of services for which a link has been found.

f) Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following services:

Class 44: Exfoliater; skin treatments; photorejuvenation; laser depilation; cryolipolysis.

The opposition is not successful insofar as the remaining services are concerned, namely:

Class 44: Medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; use of medical and cutaneous lasers; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals.

The Opposition Division will now examine the remaining ground, namely Article 8(1)(b) EUTMR, in relation to these services.

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.

a) The goods and services

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

Class 3: Toiletries and body care preparations, soaps, perfumery, essential oils, cosmetics, anti-perspirants, talcum powder, hair care products including lotions; dentifrices.

The contested services are the following:

Class 44: Medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; use of medical and cutaneous lasers; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

The Opposition Division cannot see any material nexus between the contested medical surgical services; ophthalmology; gynaecology; laser vaginoplasty; dentistry; dental care; operative dentistry; dental implants; chiropractics; osteopathy; kinesiology; implantation of gastric balloons; plastic surgery for the face, body and hair; intimate surgery; cosmetic medicine; injections for cosmetic purposes (hyaluronic acid, botulinum toxin); mesotherapy; implantation of tension threads and other rejuvenation devices; aesthetic dermatology; use of medical and cutaneous lasers; pre-operative and post-operative care; scientific research relating to plastic surgery, aesthetic medicine and dentistry; hospitals in Class 44 and any of the opponent’s goods in Class 3. The contested services consist of medical/health care services, including alternative medicine services such as chiropractics, osteopathy or kinesiology, whereas the opponent’s goods chiefly refer to cosmetics, toiletries and body care preparations.

The opponent claims that the contested services are highly similar to its goods in Class 3 because both are oriented towards the enhancement of one’s physical and mental conditions and, therefore, are complementary and in competition. It further argues that consumers may opt for invasive or more permanent enhancement methods such as those designated by the contested mark, as opposed to purchasing cosmetics and skin care products.

However, these goods and services belong to different areas of activity, and have a different nature, purpose and method of use, even if the result may be sometimes of enhancing, somehow, the appearance. It is not likely that the professionals providing the relevant services will also manufacture any of the opponent’s goods. Furthermore, the distribution channels and end users are also different and they are neither complementary nor in competition with each other. Indeed, it is far-fetched to consider that cosmetics and toiletries may replace the contested medical services, such as ophthalmology, gynaecology, laser vaginoplasty, dentistry, etc. Even contested services related to plastic surgery or cosmetic/aesthetic medicine, cannot be seriously considered to complement or compete with the cosmetics and toiletries in Class 3.

For the sake of completeness, it should be pointed out, in particular, that these arguments also apply to the dentifrices of the earlier marks that cannot be found similar to the contested dental services, even if they are preparations used in cleaning the teeth at home, since they have no medical properties and, therefore, it is far-fetched to consider them complementary to the contested services in the sense that the goods are indispensable for rendering the services.

All in all, although services in the hygienic and beauty care sector in Class 44 are generally considered similar to cosmetics and toiletries in Class 3, the conclusion is different when it comes to the comparison of these goods in Class 3 and medical-related services including plastic surgery services (inter alia, 17/02/2012, R 1223/2009-4, Spa Valley/SPA et al.). Therefore, the goods and services are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness as a result of their reputation. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Furthermore, given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Michal KRUK

Eva Inés PÉREZ SANTONJA

Lucinda CARNEY

 

 

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.