OPPOSITION No B 2 487 422

Jemella Group Limited, Bridgewater Place, Water Lane, Leeds LS11 5BZ, United Kingdom (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

a g a i n s t

GHD GesundHeits GmbH Deutschland, Fritz-Reuter-Str. 2, 22926 Ahrensburg, Germany (applicant), represented by SKW Schwarz Rechtsanwälte, Mörfelder Landstr. 117, 60598 Frankfurt am Main, Germany (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 487 422 is partially upheld, namely for the following contested services: 

Class 35:         Retailing of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care.

2.        European Union trade mark application No 13 087 499 is rejected for all the above services. It may proceed for the remaining goods in Class 5.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 087 499. The opposition is based on, inter alia, the following earlier rights:

1. international trade mark registration No 1 089 537 designating the European Union for the word mark ‘GHD GOLD’;
2. European Union trade mark registration No 11 421 955 for the word mark ‘GHD STYLE’;
3. European Union trade mark registration No 11 872 843 for the word mark ‘GHD AURA’;
4. European Union trade mark registration No 11 872 967 for the word mark ‘GHD HALO’;
5. European Union trade mark registration No 11 950 921 for the word mark ‘GHD CURVE’;
6. European Union trade mark registration No 12 416 145 for the word mark ‘GHD V’;
7. European Union trade mark registration No 12 512 257 for the word mark ‘GHD REHAB’;
8. European Union trade mark registration No 12 266 482 for the word mark ‘GHD CONTOUR’;
9. Irish trade mark registration No 248 347 for the word mark ‘GHD AIR’;
10. United Kingdom trade mark registration No 2 471 848 for the word mark ‘GHD’;
11. United Kingdom trade mark registration No 2 648 749 for the word mark ‘ghd’;
12. United Kingdom trade mark registration No 2 628 441 for the word mark ‘GHD’;
13. European Union trade mark registration No 2 860 518 for the word mark ‘GHD’;
14. European Union trade mark registration No 13 088 554 for the word mark ‘GHD PLATINUM’;
15. United Kingdom trade mark registration No 2 583 059 for the word mark ‘GHD AIR’;
16. United Kingdom trade mark registration No 3 052 539 for the word mark ‘GHD HAIR’.

In the case of the abovementioned earlier rights, the opponent invoked Article 8(1)(b) EUTMR. The opposition is also based on well-known earlier trade mark ‘GHD’ for goods in Classes 8 and 11 for the territory of the United Kingdom, for which Article 8(1)(b) EUTMR was invoked in conjunction with Article 8(2)(c) EUTMR. Furthermore, the opponent invoked Article 8(5) EUTMR in relation to earlier rights (10), (11), (12) and (13). In addition, the opponent based its opposition on non-registered earlier marks ‘GHD’ for the territory of the United Kingdom and Ireland in respect of goods and services in Classes 3, 8, 9, 11, 16, 21, 26, 38, 41 and 44, and invoked Article 8(4) EUTMR in relation to these non-registered earlier marks.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registrations No 2 648 749, No 2 628 441 and No 3 052 539.

1. The goods and services

The goods and services on which the opposition is based, which fall within the scope of protection of earlier rights (10), (11), (12) and (13), in relation to which the opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR are the following:

United Kingdom trade mark registration No 2 648 749

Class 3: Soaps; perfumery; essential oils; cosmetics; preparations for the skin, scalp, hair and body; hair lotions; shampoos; hair dyes; hair colourants; hair conditioners; hair styling products.

Class 8: Hair irons; electric hand-operated implements and appliances for styling hair; non-electric hand-operated implements and appliances for styling hair; scissors; hairbrushes; razors; electric razors and hair cutters; cases, parts, fittings and accessories all for the aforesaid goods.

Class 9: Teaching apparatus; computer software; downloadable electronic publications; pre-recorded data media; plugs; cases, parts, fittings and accessories all for the aforesaid goods.

Class 11: Hair dryers; apparatus for drying or heating hair; cases for the same; parts, fittings and accessories all for the aforesaid goods.

Class 16: Paper, cardboard and goods made from these materials; printed matter; stationery; printed publications; packaging; all the aforesaid goods being in the field of hair care, hairstyling and beauty care.

Class 21: Brushes; combs; comb cases; hairdressing, hair care and hair styling products included in this class; parts, fittings and accessories for all the aforesaid goods.

Class 25: Caps; clothing; coats; footwear; gowns; hats; haircutting gowns; headbands; headgear; jackets; jerseys; jumpers; neckties; outer clothing; overalls; robes; sarongs; scarves; shirts; shoes; smocks; sweaters; T-shirts; uniforms.

Class 26: Articles for the hair; badges; barrettes; bows for the hair; braids; false hair; hair bands; hair clips; hair colouring caps; clips; non-electric hair curlers; hair curling papers; hair curling pins; hair fasteners; hair grips; hair slides; hair nets; hair ornaments; hair pins; plaited hair; tresses of hair; hair ribbons; ponytail holders; ribbons; wigs.

Class 38: Broadcasting; communications by computer terminals; communications by telephone; electronic bulletin board services; electronic mail; radio broadcasting; satellite transmission; television broadcasting.

Class 41: Education and training services; arranging and conducting conferences, congresses, seminars, symposia and workshops; publication of books; online styling tutorials; non-downloadable electronic publications; organisation of competitions; entertainment; vocational guidance; all the aforesaid in the field of hair care, hairstyling and beauty care.

Class 42: Technical research in the field of hair care, hairstyling and beauty care; scientific research relating to hair preparations; technical advice relating to hair care products and ceramic hair styling irons.

Class 44: Advice relating to hair care; beauty salons; spa services; beauty treatment; hair care services; hairdressing; hairdressing salon services; hairdressing salons; hair weaving; hair replacement; hair colouring services; hair cutting services; hair styling.

United Kingdom trade mark registration No 2 628 441

Class 18: Bags; pouches; cases; travel bags; wash bags; gym bags; luggage; leather bags.

Class 35: Retail services relating to the sale of hair irons, hair driers, hair styling products, hair brushes, hair clippers and hair accessories; advertising; business management; business administration; office functions.

United Kingdom trade mark registration No 3 052 539

Class 3: Hair lotions, shampoos, dyes and colourants, conditioners and styling products; hair wash preparations; preparations for use in hair styling; medicated and non-medicated preparations and products for use on and in connection with hair; preparations for the care and beauty of the hair; hair waving and hair setting preparations; hair spray; hair mousse; intensive conditioning treatment with the appearance of putty to be applied to the hair; hair styling and moulding product, having the texture of putty; hair gel; hair wax; hair balm; hair creams; hair care agents; hair care products; hair cleaning preparations; hair curling preparations; hair grooming preparations; hair moisturisers; hair oil; hair protection preparations; hair strengthening treatment lotions and sprays..

Class 8: Hair irons; electric hand-operated implements and appliances for styling hair; non-electric hand-operated implements and appliances for styling hair; scissors; razors; electric razors and hair cutters; cases, parts, fittings and accessories all for the aforesaid goods.

Class 9: Teaching apparatus; computer software; downloadable electronic publications; pre-recorded data media; plugs; cases, parts, fittings and accessories all for the aforesaid goods.

Class 11: Hair dryers; apparatus for drying or heating hair; cases for hair dryers and apparatus for drying or heating hair; parts, fittings and accessories all for the aforesaid goods

Class 16: Paper, cardboard and goods made from these materials namely advertising materials including posters, labels, leaflets and brochures, invoices, paper labels, boxes, stationery, calendars, paper, compliment slips, envelopes, paper carrier bags; printed matter; stationery; printed publications; packaging; all the aforesaid goods being in the field of hair care, hairstyling and beauty care.

Class 21: Brushes; combs; comb cases; hairdressing, hair care and hair styling products included in this class; parts, fittings and accessories for all the aforesaid goods.

 

Class 26: Articles for the hair; badges; barrettes; bows for the hair; braids; false hair; hair bands; hair clips; hair colouring caps; clips; non-electric hair curlers; hair curling papers; hair curling pins; hair fasteners; hair grips; hair slides; hair nets; hair ornaments; hair pins; plaited hair; tresses of hair; hair ribbons; ponytail holders; ribbons; wigs.

Class 38: Broadcasting; communications by computer terminals; communications by telephone; electronic bulletin board services; electronic mail; radio broadcasting; satellite transmission; television broadcasting.

Class 41: Education and training services; arranging and conducting conferences, congresses, seminars, symposia and workshops; publication of books; online styling tutorials; non-downloadable electronic publications; organisation of competitions; entertainment; vocational guidance; all the aforesaid in the field of hair care, hairstyling and beauty care.

Class 44: Advice relating to hair care; beauty salons; spa services; beauty treatment; hair care services; hairdressing; hairdressing salon services; hairdressing salons; hair weaving; hair replacement; hair colouring services; hair cutting services; hair styling.

The contested goods and services, after a partial refusal of the contested sign, are the following:

Class 5: Dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia.

Class 35: Retailing of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound 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 5

As a preliminary remark it must be pointed out that whether a specific pharmaceutical is sold under prescription is not of particular relevance for the comparison of the goods. Therefore, a prescription medicine is generally to be considered similar to an over-the-counter drug.

The contested dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia are dietary preparations used for treatment of the above referred diseases required by diets for diagnosed patients. These goods genuinely differ from the opponent’s goods in Class 3 being personal care and beautification products as they have completely methods of use, they target different publics and will be distributed in different commercial environments. They will not be complementary or in competition with each other. For these purposes, the contested goods and the opponent’s goods in Class 3 are considered dissimilar.

Likewise, the contested goods are dissimilar also to the remaining earlier goods and services as they do not have any relevant points in common, that is to say, they do not coincide in any of the Canon criteria (29/09/1998, C-39/97, Canon, EU:C:1998:442).  The opponent’s list of goods also comprises electric or non-electric apparatus, instruments and tools, printed matter and paper, hairdressing accessories and articles clothing, headgear, etc. These goods are all different in nature, methods of use and intended purposes from the opponent’s goods. They will not coincide in their distribution channels or target public.

Furthermore, in principle, goods and services are different in their natures. The opponent’s list of services comprises various services such as business management and administration, telecommunications, education and training, advice, none of which has any relevant point in common with the contested specialised goods.

As to the opponent’s retail services of hairdressing-related products in Class 35 and the contested goods, they are not similar either. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are clearly dissimilar.

In addition, the opponent’s advertising consists of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising is fundamentally different in nature and purpose from the manufacture of goods such as the contested. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the contested goods in Class 5.

Contested services in Class 35

In principle retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered similar.

Therefore, for all the reasons listed above, the contested retailing of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care are considered similar to the opponent’s retail services relating to the sale of hair irons, hair driers, hair styling products, hair brushes, hair clippers and hair accessories in Class 35.  

2. Relevant public — degree of attention

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

In the present case, the services found to be similar are directed at the public at large, as well as at professional public. The degree of attention will be average.  

3. The signs

(1) GHD (2) ghd (3) GHD HAIR	GHD European Homecare Company
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom. 

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

The earlier marks are word marks containing the three letters ‘GHD’, written in lower or upper case letters, which constitute earlier marks (1) and (2) in their entirety; the additional word ‘HAIR’ is included in earlier mark (3). However, in the case of word marks, it is the word as such that is protected, and not its written form; therefore, it is immaterial whether the earlier marks are depicted in upper or lower case letters.

The contested sign is a word mark consisting of the three letters ‘GHD’ and the verbal expression ‘European Homecare Company’ written in title letters afterwards.

Earlier marks (1) and (2) have no elements that could be considered clearly more distinctive than other elements. However, the word ‘HAIR’ in earlier mark (3) is considered weak for the relevant services that are related to various hair products.

The expression ‘European Homecare Company’ of the contested sign is a meaningful expression for the relevant English-speaking public as a whole and will be perceived as a denomination describing the character of the company, namely as a company originating from or in Europe and providing services in the homecare field. Therefore, this verbal reference to the business origin is considered less distinctive than the other verbal element, namely ‘GHD’.  

Visually, the signs coincide in the three letters ‘GHD’, which are the sole elements in earlier marks (1) and (2). They differ in the additional verbal elements, namely in earlier mark (3), ‘HAIR’, considered weak for the relevant services, and in the entire verbal expression ‘European Homecare Company’ also considered less distinctive in relation to the relevant services.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In addition, although the length of the signs may influence the effect of the differences between them and consequently, the shorter a sign, the more easily the public is able to perceive all of its single elements, it must be highlighted in the following case that earlier marks (1) and (2), as well as the first more distinctive element of earlier mark (3) are entirely incorporated in the contested sign. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GHD’ which are likely to be uttered as [dʒi:/eitʃ/di:], present identically in both signs. The pronunciation differs in the sound of the additional verbal elements ‘HAIR’ in earlier mark (3), considered weak as referred to above, and the entire verbal expression ‘European Homecare Company’ in the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, while the public in the relevant territory will perceive earlier marks (1) and (2) as meaningless as a whole, the contested sign will be associated with the meaning of the entire expression ‘European Homecare Company’ as indicative to the nature of the applicant’s business. However, since one of the signs will not be associated with any meaning, the signs are conceptually not similar.

As to earlier mark (3), the public in the relevant territory will perceive the earlier sign’s word ‘HAIR’, and the contested mark as commented above. As the signs will be associated with dissimilar meanings, regardless of their less distinctive character and less impact conceptually, the signs are conceptually not similar either.

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

4. Distinctiveness of the earlier marks

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

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

5. Global assessment, other arguments and conclusion

The goods and services are partly similar and partly dissimilar; the degree of attention will be average.

The signs are visually and aurally similar to an average degree to the extent that the string of letters ‘GHD’ representing the earlier marks (1) and (2) and the first part of earlier mark (3) is incorporated in the beginning of the contested sign. Furthermore, as illustrated in section c), the additional verbal expression in the contested sign, ‘European Homecare Company’, is weak as it may be perceived as a general designation of the relevant company and hence, it is considered that the public will instead focus on the more distinctive element, namely the three letters ‘GHD’. Account has been taken of the fact that the signs have identical beginnings and consumers usually tend to pay more attention to the first parts of signs, as well as of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In addition, it must be pointed out that the signs’ coinciding verbal elements, namely the letter sequence ‘GHD’, consist of three letters with the same order. Consequently, these distinctive parts of the signs are relatively short and the fact that they do not differ in any of those letters is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

As far as earlier mark (3) is concerned, it has been noted that the additional word ‘HAIR’ does not add to the distinctiveness of the mark itself as long as it concerns services related to haircare and consequently, the public will focus instead on the more distinctive element ‘GHD’ common in the conflicting signs.    

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.  

In its observations, the applicant argues that the distinctiveness of the earlier trade marks is low given that the abbreviation ‘GHD’ stands for ‘good hair day’, as indicated by the opponent itself, and that some other trade mark registrations include that specific element. However, the applicant did not substantiate its claim that the relevant abbreviation as a whole had become descriptive or indicative to the nature of the relevant services and consequently, the applicant’s claims must be set aside, Furthermore, even if the applicant’s intention was to use the sign ‘GHD’ as an abbreviation for its full company name, ‘GesundHeits Deutschland’, it cannot be expected that the public will be able to differentiate clearly between signs containing the identical acronym ‘GHD’, even if it stands for different things in each case. It remains the case that the relevant consumer, on perceiving the acronym ‘GHD’ in the conflicting signs, may link the signs, since neither sign evokes any clear meaning on its own.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registrations.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, in this section there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to similar services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

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

• international trade mark registration No 1 089 537 designating the European Union for the word mark ‘GHD GOLD’;
• European Union trade mark registration No 11 421 955 for the word mark ‘GHD STYLE’;
• European Union trade mark registration No 11 872 843 for the word mark ‘GHD AURA’;
• European Union trade mark registration No 11 872 967 for the word mark ‘GHD HALO’;
• European Union trade mark registration No 11 950 921 for the word mark ‘GHD CURVE’;
• European Union trade mark registration No 12 416 145 for the word mark ‘GHD V’;
• European Union trade mark registration No 12 512 257 for the word mark ‘GHD REHAB’;
• European Union trade mark registration No 12 266 482 for the word mark ‘GHD CONTOUR’;
• Irish trade mark registration No 248 347 for the word mark ‘GHD AIR’;
• United Kingdom trade mark registration No 2 471 848 for the word mark ‘GHD’;
• European Union trade mark registration No 2 860 518 for the word mark ‘GHD’;
• European Union trade mark registration No 13 088 554 for the word mark ‘GHD PLATINUM’;
• United Kingdom trade mark registration No 2 583 059 for the word mark ‘GHD AIR’;
• United Kingdom trade mark registration No 3 052 539 for the word mark ‘GHD HAIR’.

Since the Opposition Division identified that these marks cover essentially the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected, even bearing in mind that an enhanced distinctive character was claimed for one of these rights, as mentioned above. No likelihood of confusion exists with respect to these goods. Consequently, the Opposition Division will not undertake any additional examination of proof of use, where applicable, or acquired distinctiveness, where applicable, of those rights.

For the sake of completeness, the Opposition Division notes that on 04/08/2016 the Office received observations from the opponent in relation to the current proceedings. The Office informed the parties that these will not be taken into account since they were not received within the time limit, in accordance with Rule 20(2), (3) and (4) EUTMIR.

The opposition has already been successful for a part of the contested goods and services. The examination must proceed with respect to the remaining contested goods found to be dissimilar in comparison carried out in section a) of this decision.

PRELIMINARY REMARK ON EARLIER WELL-KNOWN MARK ‘GHD’ – ARTICLE 8(2)(c) IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

According to the Office’s practice (Guidelines for Examination in the Office, Part C, Opposition, Trade marks with reputation Article 8(4) EUTMR, 2.1.2), where the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will in general be taken as a claim that its registered mark has acquired a high degree of distinctiveness by use.

In the present case, the opposition is based on, inter alia, United Kingdom trade mark registration No 2 471 848 for the word mark ‘GHD’. In addition, the opponent has also claimed the same mark in the same country as a well-known mark for goods which are entirely included in the specification of the aforementioned UK registration. Therefore, the Opposition Division considers that the opposition is not based on any well-known mark different from the registered trade mark No 2 471 848 and what is actually claimed is, in fact, that the registered mark in question has acquired a high degree of distinctiveness by use and it is reputed.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed reputation in relation to the following earlier marks:

• United Kingdom trade mark registration No 2 471 848 for the word mark ‘GHD’;
• United Kingdom trade mark registration No 2 648 749 for the word mark ‘ghd’;
• United Kingdom trade mark registration No 2 628 441 for the ‘GHD’;
• European Union trade mark registration No 2 860 518 for the territory of the United Kingdom for the word mark ‘GHD’.

For reasons of procedural economy, the Opposition Division will examine the opposition only in relation to earlier UK No 2 648 749 and UK No 2 628 441, for which the opponent claimed repute in the UK, as the remaining earlier rights have no broader protection than that.

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 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

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the United Kingdom.

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

In the present case the contested trade mark was filed on 11/07/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services for which the marks have been registered and on which the opposition was based, as referred to in the previous section.

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 14/09/2016 the opponent submitted a set of 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, in particular, of the following documents:

1) An affidavit signed on 07/09/2015 by the Manager of the ‘Fellowship of British Hairdressing’ (the ‘Fellowship’), introduced as a leading organisation in the hairdressing sector in the territory of the United Kingdom, in which he confirms that the opponent’s brand ‘GHD’ has participated in different events and exhibitions in the relevant factor, including those organised by the Fellowship.

2) An affidavit signed on 07/09/2015 by the Executive Director of the ‘Hairdressers Journal International’, ‘Salon International exhibition’ and the ‘British Hairdressing Awards’, considered the UK’s largest professional hairdressing exhibition. The Executive Director confirms the strong recognition of the opponent’s brand ‘GHD’ on the UK market in relation to hair care products, in particular in the electrical category, for hair straighteners and irons, hair curlers and hair dryers.

3) An affidavit signed on 09/09/2015 by the Assistant Counsel of ‘Jemella Group Limited’ (Jemella; the opponent), including Exhibit DW1 accompanied by explanation notes about the content thereof:

• An extract from Wikipedia containing information about the opponent’s brand ‘GHD’ (according to the extract, ‘GHD’ is short for ‘Good Hair Day’) as a leading manufacturer of hair care products on the UK market. The extract also contains a section on the opponent’s charity work, in which the opponent’s company is indicated as a fundraiser for the Breakthrough Breast Cancer charity. Furthermore, the extract itself contains additional references from different independent sources, in particular some popular United Kingdom media, such as www.telegraph.co.uk, www.dailymail.co.uk and www.yorkshireevningpost.co.uk, which have published articles about the opponent’s products, as well as articles about various advertising campaigns and publicity activities of the opponent. Apart from the names of the articles and their authors, the references are accompanied by accessible links, as well as dates of publication (between 2006 and 2013).

• Various extracts from the opponent’s official home page (www.ghdhair.com), as well as excerpts from different social network accounts of the opponent, such as Twitter, Facebook, YouTube and Instagram. According to the Assistant Counsel, the opponent’s brand has a strong social media presence based on its targeted groups, with approximately 1.5 million followers on Facebook, 47 700 on Twitter and 85 800 on Instagram, 14 000 subscribers on YouTube and 1 million subscribers on Google+. The extracts further contain articles published in various sources giving information about some of the opponent’s marketing campaigns, for example ‘Cinderella Midnight Collection’, ‘Twisted Fairy Tales’ and ‘Ghd IV Thy’, and different events and activities in the hair sector in which the opponent’s brand ‘GHD’ has participated, for example ‘London Fashion Week’, ‘Cosmoprof 2014’, ‘Vogue Fashion Night Out’ and ‘Victoria’s Secret Fashion Show 2014’. Most of the articles are dated between 2008 and 2015 and target the territory of the United Kingdom.

• National press clippings and advertisements: copies of some of the articles published by the various online sources referred to in the Wikipedia extract. In particular, the sources include online fashion and beauty magazines such as www.graziadaily.co.uk, www.cosmopolitan.co.uk, www.vogue.co.uk, www.elleuk.com and www.glamourmagazine.co.uk, as well as online daily news magazines and newspapers such as www.hellomagazine.com, www.dailymail.co.uk, www.independent.co.uk, www.telegraph.co.uk and www.manufacturingtoday-europe.com. Most of the articles were published recently, in the period between 2012 and 2015, but some date back to 2007 and 2008. Among the articles, titles include ‘Ghd launches revolutionary new styling’, ‘10 best hair straighteners’, ‘Is the new ghd hairdryer actually ground-breaking?’, ‘How ghd is getting ahead’, ‘ghd’s straight to the top’ and ‘Katy Perry is the new face of GHD’, in which the opponent is recognised as one of the leading companies in the UK in the hair care industry.

• International press clippings and advertisements: extracts from advertising materials from different foreign magazines, in various European languages including Italian, French, Spanish, German, Danish and Swedish. Among the extracts are some from international issues of different publications such as Vanity Fair, Cosmopolitan, Elle, Marie Claire, Glamour, Grazia, Go Beauty, Woman, etc. They are dated variously between 2008 and 2015, and show advertisements for the opponent’s range of hairdressing products.

• An extract showing a list of awards for the brand for 2012, among which are categories such as ‘Cosmopolitan beauty awards ultimate hairstyling gadget’, ‘InStyle best beauty buys 2012’, ‘Now beauty awards 2012’, ‘Fabulous beauty awards 2012’ and ‘Sunday Times Style beauty awards 2012’. Furthermore, a reference is made to additional awards for the brand for the period between 2005 and 2010 and granted by leading style and fashion magazines such as Cosmopolitan, In Style and Eve, which, according to the opponent’s employee statement and a link given to the official website of the Audit Bureau of Circulations (www.abc.org.uk), an industry body for media measurement, have an approximate circulation of between 130 000 and 250 000 issues.

• An extract from the CoolBrands evaluation (The Centre for Brand Analysis) with the official results for 2009/2010, in which the opponent’s brand is listed as a winner in the category ‘Toiletries – Haircare’, as well as being listed as one of the CoolBrands for 2011/2012, 2012/2013 and 2013/2014. It  is stated that the entire selection process for the listed CoolBrands is independently administered by The Centre for Brand Analysis. A nationally representative group of just under 3 000 British adults is further accessed via an SSI online panel.

• An extract containing information about a charity campaign in which the opponent’s brand was involved, namely a Breakthrough Breast Cancer campaign, between 2004 and 2015, supported by the release of a new product, a pink styler, sales of which resulted in the opponent making a donation to the charity.

• An extract from the opponent’s portfolio containing the trade mark registrations for the ‘GHD’ marks.

• An independent report published by Mintel International Group Ltd in January 2011 with the title ‘Hairdryers and Other Hair Styling Products’, according to which the opponent in considered one of the major players in the hairdressing market, as well as the leading figure with regard to advertising share. According to the statement of the employee, the opponent’s brand ‘commands approximately 30% of the total United Kingdom market of some three million or more hair stylers sold every year’. The report shows that the brand is strongly associated with hair stylers, especially straighteners and irons. It also illustrates the opponent’s position/market share (9%) on the UK market among other competitors in the relevant field. Furthermore, the opponent’s brand is described as the leading advertiser in its product category.

• Extracts from articles containing information about the television ban related to the release of the advertising campaign ‘thy will be done’ in which the ‘GHD’ brand was involved; news about this ban was published on different UK media pages such as www.uk.reuters.com and www.bbc.co.uk, and was publicly commented on.

It is clear from the evidence that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The internet presence, marketing expenditures and market share shown by the evidence and the various references in the press to its success all unequivocally show that the marks enjoy a high degree of recognition among the relevant public in the United Kingdom.

As far as the probative value of the affidavits is concerned, an issue raised by the applicant, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

In the present case, the first two affidavits were signed by third parties with no evident economic connection to the opponent. Furthermore, the statements made by the opponent’s employee in the third affidavit were mostly accompanied by additional supportive evidence, most of which was published by autonomous parties or obtained from independent sources, such as national media, or consisted of independent evaluations and reports conducted by business and marketing analysis agencies.

As claimed by the opponent, the relevant territory in which the earlier marks are reputed is the United Kingdom. This can be inferred from the evidence submitted in English, the press references made by United Kingdom media, the currency (pounds sterling) in which the statistics about expenditures appear, etc.

As regards the relevant period, the opponent successfully illustrated its commercial activity in relation to the brand ‘GHD’ over a fairly long period of time, in particular between 2008 and 2015. This is especially apparent in the evidence concerning the advertising costs of the brand, in the press clips dated during the entire relevant period, as well as in the awards and recognitions throughout these years, etc.  

The opponent’s brand ‘GHD’ has been the subject of significant marketing activities and advertising investments in the hair styling industry since its establishment, and the opponent has provided a variety of evidence in support of this claim. In particular, direct evidence of this fact is the demonstration of the frequent and consistent public presence of the brand in different magazines and newspapers, as well as on the internet, and the report evaluating the opponent’s success in commercialising the brand by means of serious investments and achieving a leading position among its competitors.

Moreover, some conclusions about the degree of exposure of the public to advertising messages related to the mark may be drawn from the reach of the publications concerned (national and international magazines and newspapers, and social media) and from the audience rates or circulation figures of the relevant publications, where this kind of information is available. As a result, the opponent’s long, intensive and widespread promotional campaigns are considered a strong factor that has led to public awareness and recognition of the brand ‘GHD’ in the area in question.

In addition, although awards on their own are not sufficient to establish a reputation, they can be considered an indication of the mark’s history and certain qualities of the opponent’s products, valued by experts. The opponent’s brand has been consistently recognised as a trusted and preferable brand in the field of hair styling tools, especially hair irons and straighteners. This may be inferred not only from the awards granted in recent years by leading style magazines, such as Cosmopolitan, Eve and In Style, but also from the autonomous ranking by CoolBrands, an independent agency that analyses and evaluates brands on the market in different relevant categories.

Furthermore, the opponent also provided solid evidence in support of its total sales and market share, as presented in the independent marketing agency report by ‘Nielsen/Mintel’. Contrary to the applicant’s opinion, the figures were presented in the context of the relevant market and, consequently, the substantial market share suggesting that the opponent’s brand is one of the major players in the hair care market is another strong indication of reputation. This is especially relevant when assessed in conjunction with the remaining evidence concerning the public’s perception, particularly the articles giving information about the reasonably high degree of trade mark awareness, including those entitled ‘10 best hair straighteners’, ‘How ghd is getting ahead’ and ‘ghd’s straight to the top’, published by national media.

Therefore, on the basis of the above, the Opposition Division concludes that the earlier trade marks have a reputation in the United Kingdom. However, the evidence does not succeed in establishing that the trade marks have reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to hair style tools, in particular hair irons, hair straighteners, hair dryers, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the market share report, press clippings, advertisements and awards, which mention only the former goods.

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

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, the goods for which reputation was proven, as demonstrated in above, are hair style tools, in particular hair irons, hair straighteners, hair dryers. The contested goods found to be dissimilar to the opponent’s goods and services in the previous section are the following: dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia.

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. While the contested goods are aimed at patients diagnosed with any of the above referred diseases, the earlier trade mark was found to have a reputation among the part of the public interested in personal hair, fashion and beautification procedures, in particular hairdressing. Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

Therefore, taking into account and weighing up all the relevant factors of the present case, 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.

NON-REGISTERED MARKS OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The rights under the applicable law

The opposition is based on a non-registered trade mark used in the United Kingdom and Ireland. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods and services claimed under its mark.

The evidence examined above indicates that by the filing date of the contested trade mark the opponent’s goods, namely hair style tools, in particular hair irons, hair straighteners, hair dryers, had been effectively present in the UK market for some time, generating transactions and sales. The Opposition Division finds that the evidence is sufficient to prove that the opponent enjoys goodwill for these goods in the mind of the purchasing United Kingdom public for the sign on which the opposition is based.

2. The opponent’s right vis-à-vis the contested trade mark

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required.

Furthermore, the public is unlikely to be misled where the contested goods and services are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods and services must be compared to the goods and services for which the opponent has shown that it has acquired goodwill through use.

1.        The goods and services

The goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

As seen above, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services in question are clearly dissimilar, one of the necessary conditions is not fulfilled, and the opposition must be rejected.

It follows from the above that the remaining contested goods in Class 5 are dissimilar to the goods for which the opponent has shown that it has acquired goodwill through use. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods and services for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

For the sake of completeness, it must be noted that little or no references at all have been made with respect to the acquired goodwill for the remaining goods and services of the UK non-registered trade mark, as well as for Irish non-registered trade mark at all. However, even if such goodwill would be assumed, the Opposition Division considers that the goods and services in Classes 3, 8, 9, 11, 16, 21, 26, 38, 41 and 44, are different in all respects from the remaining contested goods and services. In this respect reference is made to the findings in the comparison of the goods and services in the previous section of this decision.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Steve HAUSER

Patricia LOPEZ FERNANDEZ DE CORRES

Benoit VLEMINCQ

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.