OPPOSITION DIVISION
OPPOSITION No B 2 503 772
Avon Products, Inc., 777 Third Avenue, New York, New York 10017, United States
of America (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40,
70174 Stuttgart, Germany (professional representative)
a g a i n s t
Avon Arrow International B.V., Herengracht 198A, 1016 BS Amsterdam, the
Netherlands (applicant), represented by de Merkplaats B.V., Herengracht 227, 1016
BG Amsterdam, the Netherlands (professional representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 503 772 is upheld for all the contested services.
2. European Union trade mark application No 13 554 662 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade
mark application No 13 554 662 for the word mark ‘AVON ARROW’, namely against
all the services in Classes 35, 41 and 44. The opposition is based on European
Union trade mark registration No 139 188 for the word mark ‘AVON’. The opponent
invoked Article 8(1)(b) and Article 8(5) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
Decision on Opposition No B 2 503 772 page: 2 of 21
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely European Union trade mark No 139 188 for
the word mark ‘AVON’.
The contested application was published on 08/01/2015. The opponent was therefore
required to prove that the trade mark on which the opposition is based was put to
genuine use in the European Union from 08/01/2010 to 07/01/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade mark
was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods and
services on which the opposition is based, namely the following:
Class 3: Toilet soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 14: Precious metals and their alloys and goods in precious metals or coated
therewith as far as included in Cl. 14; jewellery, precious stones; horological and
chronometric instruments.
Class 16: Paper, cardboards and goods made from these materials, as far as
included in Cl. 16; printed matter; bookbinding material, photographs; stationery;
adhesives for stationery or household purposes; artists' materials, paint brushes;
typewriters and office requisites (except furniture), instructional and teaching material
(except apparatus), plastic materials for packaging, as far as included in int. Cl. 16;
playing cards; printers' type; printing blocks.
Class 18: Leather and imitations of leather, and goods made of these materials as far
as included in Cl. 18; animal skins, hides; trunks and travelling bags; umbrellas,
parasols and walking sticks; whips, harness and saddlery.
Class 21: Household or kitchen utensils and containers (not of precious metal or
coated therewith); combs and sponges; brushes (except paint brushes); brush-
making materials; articles for cleaning purposes; steelwool; unworked or semi-
worked glass (except glass used in building); glassware, porcelain and earthenware
as far as included in int. Cl. 21.
Class 24: Bed linen, table linen, towels, dish towels and handkerchiefs.
Class 25: Lingerie, stockings, ties, gloves and slippers.
Class 28: Games and playthings; gymnastic and sporting articles as far as included
in Cl. 28; decorations for Christmas trees.
Class 35: Advertising and business.
Class 42: Services of a beauty parlours, cosmetic institute, sanatorium; consulting on
personality identity, styling and personality performance.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
Decision on Opposition No B 2 503 772 page: 3 of 21
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 15/07/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
20/09/2016 to submit evidence of use of the earlier trade mark. This time limit was
subsequently extended until 20/11/2016 at the opponent’s request. On 16/11/2016,
within the time limit, the opponent submitted evidence of use. In its submission, the
opponent refers to a previous submission of evidence, submitted on 11/04/2016
(Attachments 1-13, submitted as proof of the reputation of the opponent’s trade
mark), and files new evidence as Attachments 14-20.
Taking into account that this previous submission was made before the expiry of the
time limit for submitting proof of use, the evidence submitted on 11/04/2016 will also
be taken into account in the assessment of genuine use. Therefore, the evidence to
be taken into account is the following:
Evidence of 11/04/2016
Attachment 1: corporate factsheets extracted from the website
www.avoncompany.com containing commercial data about the opponent’s company
from a global perspective. For instance, according to the data, 6 million active
independent Avon Sales Representatives distribute ‘AVON’ products in 70 countries
worldwide, including in Member States of the EU. Furthermore, the factsheets
provide general breakdowns of revenues for 2013-2015 referring, inter alia, to
Europe (and the Middle East and Africa) and also by product category, in particular
beauty, fashion, home and others. Reference is made to the role of the company as
‘a leading direct seller of beauty and related products’ and ‘the largest corporate
supporter focused solely on women’s issues across the globe’. The attachment also
contains extracts from the opponent’s official website for the United Kingdom,
www.avon.uk.com, providing relevant information about the opponent’s company’s
mission and values, as well as its history, in a timeline highlighting important facts
and events in its development, from its foundation in 1886 to the present day. The
Opposition Division notes that the opponent refers on several occasions in its
evidence to the company’s marketing strategy for distributing its products, namely
through independent representatives. As regards the company history, it may be
inferred from the timeline that the ‘AVON’ brand entered the European market, in
particular the UK and German markets, in 1957, followed by those of Italy, Spain and
France in 1966, as well as those of many other Member States in the following years,
including intense activity in central and eastern Europe in the last two decades. Since
2010, Avon has expanded, with a particular focus on central and eastern Europe.
Furthermore, the opponent demonstrates that the company name and logo ‘AVON’,
have been used since 1930 with different graphical depictions over the years, such
as , , and .
Attachments 2a-e: annual reports for 2010-2014. The opponent refers in particular
to the breakdowns by fiscal year for the commercial business units in Europe
(presented as central and eastern Europe and western Europe (together with the
Middle East and Africa)), for which, inter alia, figures are provided in the reports. The
annual reports have been verified by independent accounting houses, in particular by
the accounting firm PricewaterhouseCoopers LLP. Although the reports comprise
Decision on Opposition No B 2 503 772 page: 4 of 21
financial statements regarding the opponent’s company from a global perspective
and the relevant data are mostly given in US dollars due to the opponent’s
operational status as a US company, the revenues and operating profits are also
available for 2010-2014 (with each year always compared with the previous years)
broken down by the company’s main market segments, in particular central and
eastern Europe and western Europe, as mentioned above; for instance, financial
statements are made about the increase in the company’s revenues for the United
Kingdom. Consequently, even though the specific figures for each particular Member
States of the European Union cannot be inferred, the breakdowns still allow
conclusions to be drawn regarding the opponent’s commercial activity in the relevant
territory of the European Union as a whole. However, no breakdowns are shown in
the reports with respect to the different product categories offered on the European
Union market, in particular the beauty, fashion and home products in question.
Attachment 3: extracts from the opponent’s official website www.avoncompany.com
illustrating the markets in which the opponent operates, namely, inter alia, Member
States of the EU (in particular, the territories illustrated are Bulgaria, the Czech
Republic, Germany, Estonia, Greece, Spain, Croatia, Italy, Cyprus, Hungary, Malta,
Poland, Portugal, Romania, Slovenia, Slovakia, Finland and the United Kingdom).
Attachment 4: screenshots (dated 07/04/2016) from the opponent’s official websites
for some Member States, such as Croatia, Finland, Latvia, Slovenia, Cyprus, Italy,
Portugal, the Czech Republic, Germany, Hungary, Lithuania, the UK, Bulgaria,
Estonia, Greece, Spain, Romania and Slovakia.
Attachment 5: a press release published on 14/03/2016 on the opponent’s official
website, entitled ‘AVON announces additional details in execution of 3-year
transformation plan’, containing news about the company headquarters being
transferred to the UK, as well as a press cutting dated 15/03/2016 and showing an
article published on www.theguardian.com entitled ‘Avon calling the UK as it moves
its head office from the States’, which contains a brief reference to the company,
namely stating that after 130 years it has moved from New York to the United
Kingdom.
Attachment 6: an excerpt from the commercial database Creditreform (extracted on
06/04/2016) containing financial information about a German subsidiary of the
opponent, founded in 1958, which achieved a total revenue of more than EUR 121
million per year in the period 2007-2013.
Attachments 7a-e: examples of ‘AVON’ flyers and brochures (containing references
to the opponent’s UK website, www.avon.uk.com), issued on a regular basis in the
period between 2012 and 2016 and distributed by the opponent’s representatives to
local clients; they were also available online. According to the opponent, the
brochures reach 6 million women in the UK: ‘in the UK, AVON now reaches one in
three women, with six million women seeing an AVON brochure every three weeks’.
Attachment 7f: a copy of a judgment of the German Federal Court of Justice of
21/03/1991, I ZR 111/89, extracted from the database at www.beck-online.beck.de (in
German), in which the responsible organisation confirms that the trade mark ‘AVON’
enjoyed a reputation in Germany in 1991. The opponent provides some translations
of relevant parts of the judgment, in particular a reference by the Court to the well-
known character of the mark by the general public: ‘more than 81% awareness of the
public, and especially by the female population, over 90% awareness’.
Decision on Opposition No B 2 503 772 page: 5 of 21
Attachments 8a-j: extracts from Euromonitor International (www.euromonitor.com),
dated January 2016, reporting on direct sales of the opponent’s products in various
Member States, such as Bulgaria, Greece, Hungary, Italy, Poland, Portugal,
Romania, Slovakia, the Czech Republic and the United Kingdom. Although the
reports were extracted in 2016, they provide figures and results for the financial year
2015 for all the relevant countries mentioned above. It can be inferred from the
information provided and from the relevant trends emphasised by the opponent that
the brand ‘AVON’ has been proven to be a leader or to have a leading role in direct
selling in these countries, especially in relation to beauty products.
Attachments 9a-c: press cuttings from various online sources regarding beauty and
cosmetics products (mascara, nail polish, lipstick, creams, etc.) under the mark
‘AVON’, in particular:
– Germany: articles on www.vogue.de, www.beangels-blog.de and
www.petra.de, dated between 2011 and 2013;
– Spain: articles on www.enfeminino.com, www.elle.es and www.vogue.es,
dated between 2006 and 2010;
– United Kingdom: articles on www.allure.com and www.vogue.co.uk, dated
between 2007 and 2010. The opponent makes particular reference to the article
published on www.vogue.co.uk on 09/10/2009 entitled ‘Happy Birthday Avon!’, in
which the editor refers to the brand ‘AVON’ as ‘celebrating 50 fabulous years in the
UK’. The opponent further emphasises that, in the article entitled ‘Rule Britannia’,
dated 29/03/2010, the opponent’s trade mark ‘AVON’ is referred to as ‘a megabrand’.
Attachment 10: an extract from the independent ranking of brands BrandZ: Top 100
most valuable global brands 2010, issued by MillwardBrown Optimor, with particular
reference to the personal care sector, where the opponent’s brand ‘AVON’ is ranked
fourth.
Attachment 11: extracts from global rankings evaluating, inter alia, the opponent’s
brand, in particular:
– Best Global Brands 2013 by Interbrand, extracted from
www.bestglobalbrands.com, where ‘AVON’ is ranked 87th;
– Global 500 2011 by BrandFinance
®
Brandirectory, extracted from
www.brandirectory.com, where ‘AVON’ was ranked 71st;
– Best Global Brands 2010 by Interbrand, extracted from
www.bestglobalbrands.com, where the opponent in ranked 64th. Account must be
taken of the brand’s profile, in which it is stated that ‘Avon’s ability to empower
women all over the world through entrepreneurship and philanthropy, beyond the
traditional cosmetic sales of lipstick, fragrance and skincare products, is its biggest
strength. Consumers continue to be its most effective and efficient brand advocates
through word of mouth and referrals. In the current economic climate, its ability to
harness this power through its unique direct selling business model that employs
over six million women as Avon representatives to manage their own business and
earn their own income has been even more appealing.’
Attachment 12: a judgment of the German Patent Court of 07/10/2003,
24 W (pat) 184/02, AVON/AVOIR (in German), of which the opponent provides a
partial translation referring to the conclusion of the Court as regards the increased
degree of distinctiveness and reputation of the trade mark ‘AVON’. According to the
judgment, the opponent submitted a survey from 2001, the results of which illustrate
that the opponent was known to nearly two thirds of the female population of
Germany. Furthermore, the Court states that the opponent had a network of 100.000
Decision on Opposition No B 2 503 772 page: 6 of 21
representatives countrywide and distributed more than 11 million brochures a year,
and thus was among the five best-known marks in Germany in the field of skincare
products and among the 10 best-known marks in the field of make-up products. The
opponent also refers to the decision of 21/03/2012, R 740/2011-1, Retanew/Anew, in
which, according to the opponent, although the analysis was based on one of Avon’s
leading brands in its beauty category (‘Anew’), an indirect reference was also made
to the enhanced degree of distinctiveness of the house brand ‘AVON’, which was
featured separately on each of Avon’s products. The Opposition Division notes that
the examination of the relevant trade mark in the case referred to nonetheless differs
from the present proceedings and, to that extent, the findings regarding the trade
mark ‘ANEW’ cannot be applied to the trade mark ‘AVON’.
Attachment 13: printouts from the opponent’s official website in the UK,
www.avon.uk.com, in particular of material under the heading ‘Become a
Representative’, containing information about career opportunities offered by the
opponent to independent consumers, as well as marketing and business aspects of
the company. In this respect, the opponent claims that the brand enjoys an increased
degree of distinctiveness not only for the sale of cosmetics and beauty products but
also for the offering of services in Class 35.
Evidence of 16 /11/2016
Attachments 14-15: excerpts from the website www.directsellingeurope.eu, in which
the essence of the business sales model, namely direct selling, is explained:
‘marketing and selling products, directly to consumers away from a fixed retail
location. Sales are typically made through party plan, one to one demonstrations,
and other personal contact arrangements. Direct selling should not be mistaken with
direct marketing or distance selling, because direct selling is about individual
salespeople reaching out to consumers directly.’ Furthermore, in a second excerpt,
which lists members of the federation Direct Selling Europe, including Avon, the
company Avon is referred to as ‘a leading global beauty company, with nearly
$11 billion in annual revenue. As one of the world’s largest direct sellers, Avon is sold
through more than 6 million active independent Avon Sales Representatives.’
Attachment 16: an extract from the standard contract ‘Avon Representative Delivery
Terms of Sale’, in which it is laid down that the contract for sale is between the
customer and the Representative, who is an independent, self-employed individual.
Attachment 17: excerpts from the opponent’s UK website, www.avon.uk.com,
demonstrating a wide variety of business-related services provided by the opponent
as a contractor of its Representatives, in particular consultations by industry experts,
business consultation regarding setting up an online store, and the provision of online
consulting and training tools.
Attachment 18: screenshots from the opponent’s UK website extracted using the
internet archive Wayback Machine for the period between 2011 and 2014.
Attachments 19-20: excerpts from various websites of the opponent, submitted to
illustrate that the opponent also offers various consulting services related to
personality identity, styling and personality performance, in particular from the UK
website www.avonbeautyconnects.co.uk, showing the heading ‘Beauty Talk’, with a
forum having over 180.000 members; the German website www.avon.de showing the
heading ‘Beauty-Ratgeber’ (‘Beauty Counsel’); and the Spanish website
www.avon.es showing the heading ‘Consejos de belleza’ (‘Beauty tips’). The
Decision on Opposition No B 2 503 772 page: 7 of 21
opponent also submitted screenshots from the relevant websites for the period 2010-
2014, again extracted using the internet archive Wayback Machine (Attachment 20).
Preliminary remark
The applicant argues that not all the items of evidence indicate genuine use in terms
of time, place, extent, nature and use of the goods for which the earlier mark is
registered.
The applicant’s arguments are based on an individual assessment of each item of
evidence regarding all the relevant factors. However, when assessing genuine use,
the Opposition Division must consider the evidence in its entirety. Even if some
relevant factors are lacking in some items of evidence, the combination of all the
relevant factors in all the items of evidence may still indicate genuine use.
Place of use
As a preliminary remark, if the earlier mark is a European Union mark, it must be
used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following the decision of
19/12/2012, C-149/11, Onel / Omel, EU:C:2012:816, § 44, Article 18(1) EUTMR must
be interpreted as meaning that the territorial borders of the Member States should be
disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the
Union.
The various documents listed above, namely, inter alia, the reports of direct sales, the
annual revenues and the screenshots from websites of all the relevant Member
States, taken as a whole show that the place of use is the territory of the European
Union. This can be inferred from the language of the documents (different languages
depending on the Member State concerned), the currency mentioned (e.g. euros or
pounds sterling) and some addresses in the particular countries referred to in
catalogues, extracts referring to Member States, etc. Therefore, the evidence as a
whole relates to the relevant territory of the European Union.
Time of use
Most of the evidence is dated within the relevant period.
Evidence referring to use made outside the relevant time frame is in general
immaterial, unless it constitutes conclusive indirect proof that the mark must have
also been put to genuine use during the relevant period. The Court held in this
context that circumstances subsequent to the relevant point of time may make it
possible to confirm or better assess the extent to which the trade mark was used
during the relevant period and the real intentions of the proprietor during that time
(27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31). In the present
case, some of the evidence is obviously dated outside the relevant period, in
particular the judgments of the German courts of 1991 and 2003 and the references
to financial information regarding periods before January 2010 (e.g. in Attachment 6)
or after January 2015 (in Attachment 8). Bearing in mind the remaining financial and
commercial information contained in the evidence that is dated within the relevant
period, the evidence from outside this period simply corroborates the conclusion that
there has been long-standing use of the relevant trade mark (as established from all
the evidence taken as a whole).
Extent of use
Decision on Opposition No B 2 503 772 page: 8 of 21
The documents filed – in particular the turnover figures broken down by geographical
market segments, the detailed financial information about the opponent’s direct
sales, the information on the opponent’s profile, the press cuttings, the rankings
evaluating the brand ‘AVON’ on a yearly basis, and the catalogues and brochures
issued by the opponent and addressed to clients in the territory of the European
Union – provide the Opposition Division with sufficient information concerning the
commercial volume, the territorial scope, the duration, and the frequency of use.
In this regard, it is obvious that the opponent has seriously tried to acquire a
commercial position in the relevant beauty and personal care sector and in the
European Union market, which has become a very important segment of the
opponent’s commercial activity, as established by the evidence in Attachment 5
referring to the transfer of the opponent’s headquarters to London. In addition, the
opponent seems to have achieved a solid network of official representatives in each
Member State. The evidence taken as a whole illustrates the opponent’s core
business, namely as a manufacturer and, to some extent, a seller of its own products
under the house brand ‘AVON’.
Nature of use
The opponent’s brand ‘AVON’, albeit with different stylisations, has been used affixed
to its cosmetics and related products for more than a century, as can be seen from
the evidence listed above. In particular, some of the product representations
contained in the press cuttings, catalogues and brochures, and extracts from
websites, demonstrate the way in which the trade mark ‘AVON’ has been affixed, for
instance: , , .
In this regard, the Opposition Division notes that it is quite common in some market
areas for goods and services to bear not only their individual mar, but also the mark
of the business or product group (‘house mark’). In these cases, the registered mark
is not used in a different form; rather, the two independent marks are validly used at
the same time. Therefore, the trade mark ‘AVON’ has been used in the form as
registered, mainly as a house brand for all the company’s products.
Conclusion
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C–40/01, Minimax,
EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
In addition, the mark must be used for the goods or services for which it is registered
in order to be enforceable. In accordance with the first sentence of Article 47(2)
EUTMR, the earlier registered mark must have been put to genuine use in
Decision on Opposition No B 2 503 772 page: 9 of 21
connection with the goods or services in respect of which it is registered and which
the opponent cites as justification for its opposition. According to Article 47(2)
EUTMR, if the earlier trade mark has been used in relation to only some of the goods
or services for which it is registered it will, for the purposes of the examination of the
opposition, be deemed to be registered in respect only of those goods or services.
In the present case, the opponent has provided mostly evidence of use of its mark in
the territory of the European Union with regard to beauty products, cosmetics,
perfumery and make-up, in particular classified in Class 3 covered by the opponent’s
mark. Some pieces of evidence further indicate use of goods in other classes, as
claimed by the opponent. However, for reasons of procedural economy, the
Opposition Division will not proceed with an analysis of the remaining classes for
which genuine use has been claimed but focus the examination on goods, for which
genuine use has been obviously demonstrated and which will be taken into account
in the next section of this decision.
Therefore, taking into account the evidence in its entirety, the evidence submitted by
the opponent is sufficient to prove genuine use of the earlier trade mark during the
relevant period in the relevant territory, inter alia, for the following goods in Class 3:
Class 3: perfumery and cosmetics.
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.
Decision on Opposition No B 2 503 772 page: 10 of 21
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.
a) Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in the European
Union, Austria, Benelux, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark,
Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Lithuania, Latvia,
Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United
Kingdom.
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 11/12/2014. Therefore, the
opponent was required to prove that the trade mark on which the opposition is based
had acquired a reputation in the European Union and all the Member States (as
indicated in the notice of opposition) 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: Toilet soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
As set up above, the Opposition Division will proceed the assessment in respect to
the opponent’s perfumery and cosmetics in Class 3, for which use has been
demonstrated.
The opposition is directed against the following services:
Class 35: Searching for and placement of management personnel by means of
conducting searching and recruitment procedures in relation to finding
personnel; personnel recruitment and selection; consultancy regarding
personnel and personnel affairs; career counseling; outsourcing and
replacement of personnel, whether or not on a temporary basis;
consultancy for personnel managers and employees regarding the
functions of managers and employees within an organisation; personnel
and career planning; personnel policy by means of consultancy and
mediation in the development of organisation and personnel policy for the
deployment of labour within organisations; advertising and sales
promotion; office functions; business consultancy for businesses;
business organisation and management consultancy; outsourcing of
personnel by means of supervision of employees during voluntary or
involuntary searches for a new post; temporary employment agencies,
namely providing interim management; all the aforesaid services within
the context of providing services in the field of personnel policy.
Class 41: Education, teaching and instruction; providing of training, courses,
seminars, lectures and other such educational meetings; providing of
training for personnel managers and employees in the field of
management functions, personnel and career planning; providing of
Decision on Opposition No B 2 503 772 page: 11 of 21
training in the field of searching and recruitment procedures in relation to
finding personnel at all levels; publishing of books and magazines in the
field of human resources and personal development.
Class 44: Services provided by medical and paramedical, psychiatric, psychological
and related specialists in the field of personal research and personal
development, including for social functioning; career counseling; all the
aforesaid services within the context of personnel policy; conducting
psychological assessments and exams.
The evidence has been listed above, in the section ‘Proof of use’. References are
made to the documents in Attachments 1-13, which are considered to constitute the
evidence submitted within the time period set for the opponent to substantiate the
reputation of its earlier mark and which will be taken into account in the present
assessment.
On the substance of the evidence
In order to determine the mark’s level of reputation, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by
the trade mark, the intensity, geographical extent and duration of its use, and the size
of the investment made by the undertaking in promoting it.
The opponent is a company involved in the personal care sector that has been
present on the European Union market since 1959, when the brand ‘AVON’ entered
the territories of Germany and the UK. To date, the brand has reached most of the
countries of the European Union and has focused on central and eastern Europe in
the last two decades. The opponent has established steady sales and has reached a
wide public in these countries, namely both customers and representatives
(distributors) of ‘AVON’ cosmetics, fragrances and skincare products. In addition, in
2011, the opponent celebrated 125 years since its establishment (as a US company),
as can be seen in the documents submitted by the opponent.
To demonstrate its reputation quantitatively, the opponent has provided sufficient
financial information concerning the commercial use of the trade mark, in particular
consolidated financial reports for consecutive years (Attachments 2a-e), reports of
direct sales in European Union countries (Attachment 6) and extracts containing
financial results for a particular European Union country, namely Germany
(Attachments 8a-j).
The annual reports include all kinds of internal documents giving varied information
about the history, activities and perspectives of the opponent’s company, as well as
detailed figures of the turnovers, sales, advertising expenditure, etc. To the extent
that such evidence derives from the opponent and is mainly intended to promote its
image to its stakeholders, its probative value will mostly depend on its contents and
the relevant information should be treated with caution. However, as stated above,
the annual reports contain objectively verifiable information and data, which have
been compiled or revised by independent auditors; thus, the probative value of the
annual reports is substantially enhanced. Furthermore, the reports help the
Opposition Division to establish an overall picture of the opponent’s leading position
in the global market, while also providing particular information concerning the
relevant European Union market.
Furthermore, the opponent illustrates, through extracts from various websites and
references to the extent of its commercial activity in various Member States, its
Decision on Opposition No B 2 503 772 page: 12 of 21
geographical presence in the European Union (Attachments 3 and 4). The general
rule is that the more widespread the use, the easier it will be to conclude that the
mark has passed the required threshold for reputation, and any indication showing
use in a substantial part of the relevant territory will be a positive sign in the direction
of reputation. The various extracts from websites are strong indicators of the
opponent’s intention to address its products to a broad spectrum of the public in the
European Union (e.g. to countries in central and eastern Europe such as Bulgaria,
Croatia, Cyprus, Greece, Hungary, Romania, etc.).
A direct indication of the expansion of the brand in the EU is also the fact that the
mark enjoys frequent and consistent public presence in various external sources of a
recognised character in the relevant beauty sector (in particular, beauty and fashion
magazines as indicated in Attachments 9a-c and international news media in
Attachment 5). In principle, the probative value of press articles and other
publications concerning the opponent’s mark will depend on whether such
publications are covert promotional matter or, on the contrary, are the result of
independent and objective research. In the present case, conclusions on the
widespread public exposure of the brand ‘AVON’ may be drawn from the rankings
that the opponent has provided as Attachments 10 and 11.
As a rule, the higher the percentage of trade mark awareness, the easier it will be to
accept that the mark has a reputation. Therefore, a very substantial market share or
a leading position in the market will usually be a strong indication of reputation,
especially if combined with a reasonably high degree of trade mark awareness. In the
present case, the opponent refers to global rankings emanating from independent
sources specialised in the field of marketing and evaluation. Not only is the brand
‘AVON’ ranked among the major players in the personal care sector from a global
perspective, but various evaluation companies also list the brand as one of the top
100 or 500 most valuable brands in general.
It may be inferred from the evidence (as a whole and in particular Attachment 13) that
the opponent’s company has a very specific marketing strategy involving sales door-
to-door and the promotion of ‘AVON’ products over the years has been performed on
a frequent basis by its official distributors, namely the so-called ‘AVON
Representatives’.
In addition, the opponent also refers to German case-law, in which the reputation of
its earlier mark has been assessed, with the relevant authority concluding that it does
have a reputation (Attachments 7f and 12). The Opposition Division notes that, even
though national decisions are admissible evidence and may have evidentiary value,
especially if they originate from a Member State (with the territory of such decisions
also being relevant for the opposition decision in question), they are not binding for
the Office, in the sense that it is not mandatory to follow their conclusion. Relevance
should be given to the type of proceedings involved, to whether the issue was in fact
reputation within the sense of Article 8(5) EUTMR, to the level of the court and to the
number of such decisions. In the present case, the Opposition Division notes that the
case-law referred to by the opponent is slightly outdated (1991 and 2003) and, since
significant time has elapsed between the relevant cases and the present case, their
probative value is diminished accordingly. However, this case-law may still be taken
into account as supportive evidence of the tremendous recognition of the opponent’s
brand among the relevant public even before the relevant period of time assessed in
the present case.
Conclusion
Decision on Opposition No B 2 503 772 page: 13 of 21
It is clear from the evidence that the earlier trade mark ‘AVON’ has been subject to
long-standing and intensive use and is generally known in the relevant market, where
it enjoys a consolidated position among the leading brands, as has been attested by
diverse independent sources. The turnovers, marketing expenditure and leading
position of the opponent in the relevant sector of personal care products shown by
the evidence and the various references in the press to its success all unequivocally
show that the mark enjoys a high degree of recognition among the relevant public.
Although the evidence submitted does not refer to all the countries of the European
Union individually, the Opposition Division acknowledges, on the basis of the
overview of the evidence, that reputation has been proven at least in the United
Kingdom and Germany, which is sufficient to conclude that the earlier trade mark has
a reputation in the European Union.
In support of this finding, it must be pointed out that the Court has indicated that an
EU trade mark must be known in a substantial part of the EU by a significant part of
the public concerned by the goods or services covered by that trade mark. In view of
the facts of the particular case, the territory of the Member State in question (Austria)
was considered to constitute a substantial part of the territory of the EU (06/10/2009,
C-301/07, Pago, EU:C:2009:611, § 29-30).
Therefore, on the basis of the above, the Opposition Division concludes that the
earlier trade mark has a reputation in the European Union for cosmetics and
perfumery in Class 3.
b) The signs
AVON AVON ARROW
Earlier trade mark Contested sign
The relevant territory is the European Union.
Nevertheless, for reasons of procedural economy, the Opposition Division will focus
its examination only on the territory of Germany, to which some of the evidence of
reputation expressly referred.
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).
Neither the coinciding element ‘AVON’ nor the element ‘ARROW’ in the contested
sign has a meaning for the relevant public and both are therefore distinctive.
For the sake of completeness, it must be pointed out that the applicant argues that
the word ‘AVON’ may refer to one of the many well-known rivers in the United
Kingdom. The Opposition Division notes that the relevant public cannot be deemed to
be generally familiar with the rivers in the UK. Therefore, in the present examination,
the word ‘AVON’ will be seen as meaningless for the relevant public and,
consequently, distinctive in relation to the goods in question.
Decision on Opposition No B 2 503 772 page: 14 of 21
Visually and aurally, the signs are at least similar to an average degree to the
extent that the earlier mark is included in its entirety at the beginning of the contested
sign. As established in case-law, consumers tend to focus on the beginnings of
marks and pay less attention to their later parts. This is because consumers read
from left to right. Therefore, the first verbal element, ‘AVON’, of the contested sign will
be the element that will first grab consumers’ attention. As stated above, this is also
the sole element of the reputed earlier mark and this will be the element used for
aural reference as well.
Conceptually, neither of the signs has a meaning as a whole. Since a conceptual
comparison is not possible, the conceptual aspect does not influence the assessment
of the similarity of the signs.
The signs under comparison are similar to the extent that they have in common the
distinctive element ‘AVON’. Therefore, the examination will proceed on this basis.
c) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are similar. In order to
establish the existence of a risk of injury, it is necessary to demonstrate that, given all
the relevant factors, the relevant public will establish a link (or association) between
the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’
minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the
judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of
27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement
but merely reflects the need to determine whether the association that the public
might establish between the signs is such that either detriment or unfair advantage is
likely to occur after all of the factors that are relevant to the particular case have been
assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C–252/07,
Intel, EU:C:2008:655, § 42):
the degree of similarity between the signs;
the nature of the goods and services, including the degree of similarity or
dissimilarity between those goods or services, and the relevant public;
the strength of the earlier mark’s reputation;
the degree of the earlier mark’s distinctive character, whether inherent or
acquired through use;
the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the
particular circumstances. Moreover, the existence of a ‘link’ may be established on
the basis of only some of these criteria.
In the present case, it has been already established that the earlier mark enjoys a
very strong reputation in the sector of cosmetics and perfumery. Further to that, the
signs are similar to the extent that the earlier mark is entirely reproduced in the
contested sign, moreover, in its beginning. The earlier mark has a strong inherent
Decision on Opposition No B 2 503 772 page: 15 of 21
distinctiveness in relation to the goods in question, as it does not allude to or suggest
anything in respect to their nature. Furthermore, the contested sign’s additional and
differing element ‘ARROW’ will be meaningless to the relevant public and will not
contribute to distinguishing between the signs from a conceptual point of view.
Consequently, an intrinsic association between the signs when compared next to
each other already exists regardless of the nature of the goods or services for which
protection is sought by the challenged mark. It is, then, left to the Opposition Division
to decide if a similar connection between the signs will be established taking into
account the sectors in which the parties operate and bearing in mind the case
scenario where consumers familiar with the earlier mark and its range of products
encounter the contested sign on the services already listed in the previous section.
As can be noted, the earlier mark is reputed for a wide range of cosmetics and
perfumery products in Class 3, whereas registration is sought by the applicant for
services in Classes 35, 41 and 44, most of which relate to personnel recruitment. As
the applicant states, these services are very far removed from the personal care
sector in which the earlier trade mark is registered and therefore the public will, in
principle, not believe that the opponent’s goods and the contested services originate
from the same undertakings.
In the present case, the target public for the goods designated by the earlier mark, for
which the mark has been found to have a reputation, is the general female public.
The contested services target the general and professional public with an interest in
personal development, recruitment and training. Bearing in mind the broader scope
of the target public of the reputed mark (the general female public), a certain ‘overlap’
between the publics of the conflicting marks cannot be completely ruled out.
Furthermore, it is not indicated anywhere in the case-law that, in order to show that
the relevant public may make an association between the conflicting signs by
establishing a link between them, it is necessary to demonstrate that the earlier mark
has acquired a reputation in the sector in which the contested services are found.
The Court has confirmed in case-law that a ‘link’ between marks may be established
also as result the particularities of the earlier mark’s reputation. By way of example, in
the case of TDK, the earlier mark’s reputation for data-storage media products
extended to the association of the mark with sponsorships and music and sport
events, used by the opponent to promote ‘TDK’ (06/02/2007, T-477/04, TDK, in
particular § 61-62).
In addition, 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, 52.)
Therefore, the Opposition Division is not per se required to establish that the earlier
mark had a reputation in the recruitment, training or personal development sector. It
must instead take into consideration the strength of the earlier mark’s reputation to
Decision on Opposition No B 2 503 772 page: 16 of 21
determine whether that reputation extends beyond the target public of that mark in
the relevant personal care sector.
The evidence submitted by the opponent demonstrates that the opponent (by means
of its brand AVON) is perceived by a substantial part of the public not only as a
manufacturer of a certain category of goods but also as a provider of ‘job
opportunities’ in the distribution of these manufactured goods (see Attachment 13,
under ‘Become a representative’). Although the principal purpose of the opponent’s
goods is beautification and personal care, the opponent constantly emphasises in its
observations and evidence the importance of its representatives as a pillar of the
brand’s success. For instance, references are made to the increasing number of
representatives worldwide: ‘6 million in 2009’ (Attachment 1); in addition, part of the
opponent’s profile states that ‘Founded in 1886, Avon offered women the rare
opportunity to earn their own money 34 years before women in the U.S. won the right
to vote’ (Attachment 1) and the ranking ‘Best Global Brands 2010’ in Attachment 11
also reveals information about the opponent’s profile, in particular: ‘In the current
economic climate, its ability to harness this power through its unique direct selling
business model that employs over six million women as Avon representatives to
manage their own business and earn their own income has been even more
appealing.’
Therefore, it is obvious that the opponent’s reputation in relation to its own
manufactured goods is a subject of a ‘side-effect’ with some consequences on the
overall perception of the sign. Firstly, the opponent’s business strategy of direct
selling is one of the main factors that influences the general perception of its
consumers and leads to a mental connection being established between the products
offered and the specific way in which they are offered, namely through an official
network of qualified distributors. In a strategy that parts from the present digital
environment and the possibilities it provides of indirect electronic purchase, the
opponent made it clear in its submission that it has never maintained physical
premises on which its products may be purchased. The opponent has instead relied
on its chosen business approach of selling its products door-to-door, creating in this
way a specific purchasing environment for its customers: the so-called ‘AVON
Representatives hunt’ for potential purchasers. It has been demonstrated in the
evidence submitted by the opponent that the purchase of ‘AVON’ products and the
distribution of these products by Avon sales representatives (distributors) have
become two inseparable concepts in consumers’ minds and, more importantly, both
are perceived as being under the brand ‘AVON’.
It is clear to the Opposition Division that the opponent managed to demonstrate a
very specific qualitative aspect of its brand’s reputation, which has, or may have, an
impact on consumers’ attitudes and perception. It is probative that the part of the
relevant public, particularly women, that has had previous experience with the
opponent’s products (cosmetics and perfumery) and/or has had any experience with
the opponent’s mark (e.g. has been supplied products by an Avon sales
representative, has been contacted by an Avon representative, is aware of published
information on the opponent’s websites about the job opportunities it offers) may
recollect this experience and associate it with the opponent when encountering any
‘AVON’ sign in any business environment, such as in relation to ‘recruitment activity’
of Class 35 under the brand ‘AVON ARROW’.
In the present case, the Opposition Division acknowledges that the abovementioned
‘side-effect’ created by the opponent’s brand reputation is sufficiently strong to trigger
a mental connection between the opponent’s goods and all of the applicant’s services
in Class 35.
Decision on Opposition No B 2 503 772 page: 17 of 21
Furthermore, the applicant has clearly limited its services in Classes 35, 41 and 44;
for instance: ‘all the aforesaid services within the context of providing services in the
field of personnel policy’ (in Class 35), ‘in the fiend of personnel and career planning,
human resources and personal development’ (in Class 41) and ‘all the aforesaid
services within the context of personnel policy’ (in Class 44). These restrictions of the
scope of protection of the applicant’s services indicate that the key business sector in
which the contested sign will be applied is again recruitment and the remaining
services will have only an auxiliary character in relation to recruitment. Consequently,
a ‘link’ between the signs may be justified also in relation to the applicant’s remaining
services in Classes 41 and 44, which relate to education and training, career
orientation and personal development. As the opponent illustrated, the sales
representatives recruited by the opponent are also offered support for starting-up
their businesses, including training, instructions and career development
consultation, which is provided by the opponent as well.
Therefore, taking into account and weighing up all the relevant factors of the present
case, the Opposition Division concludes that, when encountering the contested mark,
the relevant consumers will be likely to associate it with the earlier sign, that is to say,
establish a mental ‘link’ between the signs.
However, although a ‘link’ between the signs is a necessary condition for further
assessing whether detriment or unfair advantage are likely, the existence of such a
link is not sufficient, in itself, for a finding that there may be one of the forms of
damage referred to in Article 8(5) EUTMR. (26/09/2012, T-301/09, Citigate,
EU:T:2012:473, § 96).
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.
In general, the opponent claims the following:
Decision on Opposition No B 2 503 772 page: 18 of 21
1) By incorporating the world famous opposition mark ‘AVON’ identically in the
contested mark ‘AVON ARROW’, the applicant profits from the reputation of the
opponent’s mark to facilitate the sale of his own services. The applicant achieves
attention for his mark based on the opponent’s fame and saves own marketing
efforts and expenditures for advertising its brand.
2) The existence and use of a trademark ‘AVON ARROW’ for the claimed services
would lead to an erosion of the distinctive character of the mark ‘AVON’. Use of this
mark which identically incorporated the famous mark ‘AVON’ would weaken the
opposition mark’s distinctive character by way of negatively affecting its capacity to
function as certain indication of origin. The existence and use of the challenged
application would have the detrimental effect that ‘AVON’ would no longer be
capable of arousing immediate association with the products it stands for.
In other words, the opponent claims that use of the contested trade mark would take
unfair advantage of the distinctive character or the repute of the earlier trade mark
and be detrimental to the distinctive character of the earlier trade mark.
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,
and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).
The opponent bases its claim on the following.
The brand ‘AVON’ is ‘a result of the tremendous efforts and extraordinary
successful work [and] stands for innovativeness, trustworthiness, reliability,
highest quality and outstanding value for money’. With over 130 years’ global
history, the opponent’s company has been present on the European Union
market over recent decades, where the brand has been associated not only
with marketing its own products but also with recruiting its own representatives,
who, according to the opponent, are ‘the keystone of its direct marketing
concept’.
The services for which the contested sign seeks registration are in the field of
personnel policy and human resources and there is a certain degree of
proximity between this field and the opponent’s direct marketing concept; in
particular, there is a certain degree of overlap between rendering services such
as training, education and instruction (Class 41) and the career consultancy
and personal development provided by the opponent to its independent sales
representatives.
It is obvious that the public facing the contested sign ‘AVON ARROW’ will be
immediately reminded of the opponent’s reputed brand ‘AVON’; this will
subsequently result in a transfer of goodwill, solely based on the opponent’s
efforts and the success of its brand rather than on the applicant’s own efforts to
develop the qualities of its services under the contested mark.
Decision on Opposition No B 2 503 772 page: 19 of 21
The applicant has deliberately chosen to provide its human resources and
personnel policy services under a mark that incorporates in an identical
manner the opponent’s reputed mark ‘AVON’, the products of which are related
per se to direct distribution through a network of independent sales
representatives. By doing so, the use of the applicant’s mark will not only
remind consumers of the opponent’s brand but also ensure an unjustified
transfer of the earlier mark’s values and qualities to the applicant’s own
services, for which registration is sought in the European Union.
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.)
The Opposition Division refers again to the findings so far: (1) the brand ‘AVON’
enjoys a strong reputation on the EU market, in particular in Germany, (2) the
similarity between the conflicting signs, both of which incorporate the inherently
distinctive element (in relation to the relevant goods and services) ‘AVON’ is obvious
and (3) given the strong reputation of the earlier mark, which extends beyond the
personal care sector, a mental link (based on the relevant public’s previous
experience with the brand ‘AVON’) may be established between the conflicting
marks, even in relation to the recruitment sector and auxiliary services.
The opponent has illustrated that its brand ‘AVON’ has a long-standing history and
has been the subject of considerable marketing expenditure over the years. The
brand has been present in the European Union for more than 50 years. In addition,
the opponent is a company that has focused on universal values for women around
the world and is committed to women’s causes such as breast cancer, domestic
violence, economic empowerment (references to this are made in Attachments 1 and
11, and it is also demonstrated in the opponent’s slogans ‘the company for women’,
‘empowering women’, etc.). It is evident that the opponent has acquired a strong
network of supporters not only in the European Union but also worldwide (attested by
its presence in the rankings of the 100 most valuable brands in Attachments 10-11).
It cannot be completely ruled out, in the Opposition Division’s opinion, that, by
bringing to mind the opponent’s brand when offering its own services, the applicant
may intentionally or not be transferring the positive values and expectations
associated with the opponent to its own trade mark. As the opponent argues, in doing
so, the applicant will facilitate the marketing of its services without making efforts to
establish its own positive image on the relevant recruitment market.
Furthermore, it has to be noted that, in principle, in the absence of any indications in
the evidence providing an apparent justification for the applicant’s use of the
contested mark, the lack of due cause must be generally presumed (29/03/2012,
T-369/10, Beatle, EU:T:2012:177, § 76, and the case-law cited therein; 14/05/2013,
C-294/12 P, Beatle, EU:C:2013:300, dismissing the appeal). The Opposition Division
also notes that the applicant in the present case did not use the plea of ‘due use’ as
Decision on Opposition No B 2 503 772 page: 20 of 21
its defence right. Therefore, a lack of due case has also been presumed in the
present assessment.
Therefore, taking into account the opponent’s arguments, it can be concluded that
the applicant may indeed freely benefit from the positive associations that the
opponent has built up in consumers’ minds in relation to its goods and this may affect
consumers’ behaviour or even choice of purchase.
On the basis of the above, the Opposition Division concludes that the contested
trade mark is likely to take unfair advantage of the distinctive character or the repute
of the earlier trade mark.
Other types of injury
The opponent also argues that use of the contested trade mark would be detrimental
to the distinctive character of the earlier trade mark.
As seen above, the existence of a risk of injury is an essential condition for
Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an
opposition to be well founded in this respect it is sufficient if only one of these types is
found to exist. In the present case, as seen above, the Opposition Division has
already concluded that the contested trade mark would take unfair advantage of the
distinctive character or repute of the earlier trade mark. It follows that there is no
need to examine whether other types also apply.
e) Conclusion
Considering all the above, the opposition is well founded under Article 8(5) EUTMR.
Therefore, the contested trade mark must be rejected for all the contested services.
For the sake of completeness, it has to be added that since the opposition is entirely
successful on the basis of Article 8(5) EUTMR, there is no need for the Opposition
Division to examine the other ground invoked by the opponent, namely Article 8(1)(b)
EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
Decision on Opposition No B 2 503 772 page: 21 of 21
The Opposition Division
Volker MENSING Manuela RUSEVA Adriana VAN ROODEN
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.