OPPOSITION No B 2 253 709

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

a g a i n s t

Barbara Ciepielewska, Ul. Srebrnych Świerków 53, 05-500 Julianów, Poland (applicant), represented by Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195 Warszawa, Poland (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 253 709 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 842 622. The opposition is based on European Union trade mark registrations No 54 429 and No 54 411. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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.

1. The goods and services

The goods and services on which the opposition is based are the following (same wording for both earlier marks):

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

Class 42: Beauty consultation services in the selection and use of cosmetics, toiletries, perfumery and beauty treatment; advisory services relating to provision of beauty, perfumery, make-up and skin treatment services; design and interior decoration services relating to retail stores, perfumeries, beauty salons, beauty counters; research, development, laboratory and technical support services relating to perfumes, cosmetics and beauty and skin treatment products.

After a limitation requested by the applicant deleting all the goods in Class 21 and some services in Class 44, the contested services are the following:

Class 44: A full range of services relating to dentistry, prosthodontics and cosmetic dentistry; Dental surgery, dental implantation.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The Opposition Division cannot see any material nexus between the contested a full range of services relating to dentistry, prosthodontics and cosmetic dentistry; dental surgery, dental implantation in Class 44 and any of the opponent’s goods and services in Classes 3 and 42. The contested services mainly include dentistry-related services provided by dental clinics, whereas the opponent’s goods and services chiefly refer to cosmetics and toiletries, and to beauty consultation and advisory services provided by beauty salons or cosmetics shops. These goods and services belong to different areas of activity, and have a different nature, purpose and method of use, even if the result may be sometimes of enhancing, somehow, the appearance. The usual commercial origin, distribution channels and end users are different. Furthermore, they are neither complementary nor in competition with each other. For the sake of completeness, it should be pointed out, in particular, that these arguments also apply to the dentifrices of the earlier marks that, contrary to the opponent’s assertions, cannot be found similar to the contested dental services even if they are preparations used in cleaning the teeth and may be prescribed by dentists and, therefore, it is far-fetched to consider them complementary to the contested services in the sense that the goods are indispensable for rendering the services. Therefore, they are dissimilar.

2. Conclusion

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

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

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 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.

The Opposition Division deems it more appropriate to examine first the second requirement.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union as regards all the goods and services on which the opposition is based, namely the following:

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

Class 42: Beauty consultation services in the selection and use of cosmetics, toiletries, perfumery and beauty treatment; advisory services relating to provision of beauty, perfumery, make-up and skin treatment services; design and interior decoration services relating to retail stores, perfumeries, beauty salons, beauty counters; research, development, laboratory and technical support services relating to perfumes, cosmetics and beauty and skin treatment products.

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 24/05/2013. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation (previously mentioned).

In order to determine the marks’ 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 marks, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting them.

The opponent submitted evidence to support this claim on 22/12/2015. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Enclosure A1: extracts from the annual reports for 2004, 2007, 2009 and 2010 of the Estée Lauder Companies, Inc., the group to which the opponent belongs. The evidence demonstrates significant net sales and net earnings in the group and mentions ‘CLINIQUE’ among the group’s portfolio of trade marks. These figures have been audited and confirmed by an independent accounting firm, namely KPMG.

• Enclosure A2: printouts from Estée Lauder’s website, www.elcompanies.com, dated 26/02/2010, containing a list of the opponent’s trade marks, including ‘CLINIQUE’. In addition, the opponent submitted copies of Estée Lauder annual reports for 2004 to 2014 containing information about its trade marks portfolio, mentioning the trade mark ‘CLINIQUE’ and its range of products. There are not specific sales figures regarding ‘CLINIQUE’ in Europe, although some reports highlight sales growth in the region as well as in some key countries as the UK, Germany or France. It is also indicated that ‘in the United Kingdom and Continental Europe, Clinique is the number one prestige brand in both the foundation and face categories’.

• Enclosure A3: printouts from the opponent’s subsidiaries’ websites in the United Kingdom, Germany, Italy and France (e.g. www.cliniqueitaly.it and www.clinique.co.uk), also dated 26/02/2010. These documents show the trade mark ‘CLINIQUE’ in relation to skin care and make-up products.

• Enclosure A4: a copy of an article from Fortune magazine published on 07/03/2005. The article states that Estée Lauder is America’s second most admired company in the sector of ‘consumer products/household, personal products’.

• Enclosure A5: copies of documents showing the rankings given by Total Beauty Media, Inc., an independent ranking company in the United States of America, to the trade mark ‘CLINIQUE’. On the basis of brand response figures compiled by the ranking company network at www.totalbeautymedia.com, ‘CLINIQUE’ was ranked at number one in November-December 2008 and number two in November 2009. There is no indication of the market of reference.

• Enclosure A6: an affidavit by Lesley A. Moradian, Vice President and Senior Trade Mark Counsel at Clinique Laboratories LLC. dated 17/03/2010. The affidavit states that the trade mark ‘CLINIQUE’ has been used in Europe since 1969-1970 (in the United Kingdom, Sweden, France and Denmark). However, by 1994 the mark had been used in every single Member State of the European Union. The product range includes, in particular, colour cosmetics, skin care products, deodorants, women’s and men’s fragrances, sun care products, hair care products and men’s grooming products. The affidavit also states that ‘CLINIQUE’ products are sold in perfumeries and upmarket department stores, as well as in in-flight and duty-free shops in airports and cities. The affidavit contains sales figures for Europe for the financial years 2004-2009. The turnover figures presented show increasing sales in Western Europe as a whole (including Austria, the Benelux, France, Germany, Italy, Portugal, Spain and the UK) and in some individual countries (the United Kingdom, Germany, France, Italy and Spain), including through online stores (CLINIQUE brand sites or retailers’ websites). The tables presented also give figures on advertising expenditure for ‘CLINIQUE’ goods and put these expenses in relation to total net sales in Western Europe and in individual European countries (the United Kingdom, Germany, France, Italy and Spain), from which it can be deduced that the abovementioned goods have been extensively promoted during these years. According to the affidavit, and as per the attached Exhibit A (tables containing lists of articles relating to ‘CLINIQUE’ appearing in French and Polish publications from 2004 to early 2010) and Exhibit B (tables containing awards granted to ‘CLINIQUE’ products by fashion and beauty magazines worldwide from 2005 to 2009, including in some European countries such as the United Kingdom, Germany, France, Italy and Spain), the trade mark is especially promoted in print magazines.

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

• Enclosure A8: catalogues, advertising material and photographs of points of sale showing the opponent’s range of goods, that is, colour cosmetics (facial make-up, eye make-up, lip products and nail products), skin care (facial care, body care and hand care products), deodorants, women’s and men’s fragrances, sun care products (sun protection, after sun and self-tanning products), hair care products (shampoo, conditioner and styling products), and men’s skin care and men’s grooming products (men’s pre-shave products, men’s post-shave products, men’s bath and shower products, men’s deodorants, men’s hair care products). Most of the evidence is undated or dated some distance away from the relevant period of time, for example in 2004. It is possible to infer that at least some of the documents were issued in the relevant territory, for example in Germany (documents written in German) or the UK (prices in UK£).

• Enclosure A9: printouts dated 2005 and early 2010, from the opponent’s subsidiaries’ websites in the United Kingdom, France and Germany (www.clinique.co.uk; www.clinique.de; www.fr.clinique.com) regarding the opponent’s additional activities in the beauty sector. The opponent’s websites include questionnaires to help its customers find out what their skin type is or the peculiarities of their skin and choose, accordingly, the facial products that suit them best.

• Enclosure A10: excerpts from publications targeting the travel retail industry, namely from Travel Retail Executive News Digest, dated 12/02/2007; The Business, dated March/April 2007 and August/September 2008; The Moodie Report, dated April 2007 and 29/01/2007; DFNI, dated December 2009; The Travel Retail Business, dated January 2010; and Perfume Bar Bahamas, dated September 2008. The extracts refer to ‘CLINIQUE’ goods and travel retail sales thereof, the opening of a new ‘Clinique Skin Wellness Center’ in New York aiming to undertake research projects and educate the public about skin care issues, the qualifications of Clinique’s in-store beauty consultants and the importance of their continuing education, and an award for ‘best new skincare launch’ to a ‘CLINIQUE’ product. While some of the publications refer to the USA, others were published in the relevant territory, namely the United Kingdom, Germany and France.

• Enclosure A11: a 2009 survey report issued by Euromonitor International, an independent company providing, inter alia, market reports and other business information. According to the results of the survey, ‘CLINIQUE’ foundations were ranked, inter alia, first for volume sales in the United Kingdom and second in Germany and Spain, at number three in France and at number four in Italy.

• Enclosure A12: Excerpt (printed in 12/03/2010) of the Euromonitor website, www.euromonitor.com, with information about the company.

• Enclosure A13: undated advertising material showing ‘CLINIQUE’ foundations (liquid make-up, powder make-up, etc.).

• Enclosures A14-A15: copies of advertisements published, according to the opponent (as most are undated or the date is not clearly visible) between 1996 and 2003 (A14) and from 2004 to 2008 (A15) in German women’s magazines (e.g. Cosmopolitan, Marie Claire, Amica and Glamour). The trade mark ‘CLINIQUE’ and the goods to which it is applied, such as make-up and skin care products, are shown in the advertisements. Enclosure A15 also includes lists of promotional events organised by and with the participation of the opponent (e.g. presentations of new cosmetics, an overview of ‘CLINIQUE’ products, customer promotions, etc.) in Germany between 2004 and early 2010 and of the awards won by ‘CLINIQUE’ products in that country, such as the Cosmopolitan Prix de Beauté (in 2004, 2007, 2008, 2009 and 2010), the Glamour magazine Glammy Award (each year from 2005 to 2010), the Joy Trend Award and the GQ Style Award (both in 2009).

• Enclosure A16: printouts from the German advertising-slogan database www.slogans.de featuring various slogans from ‘CLINIQUE’ advertisements in Germany (between 2000 and 2005) and the United Kingdom (2000 and 2008). Furthermore, the opponent submitted an extract from the German website www.werbesongs.tv mentioning a TV commercial for a ‘CLINIQUE’ skin care product shown in 2008.

• Enclosures A17 to A24: a copious collection of advertising material and extracts from magazines and other publications, including material promoting in-store events organised by the opponent, in relation to France (A17), Italy (A18), Spain (A19), the United Kingdom (A21 and A22), Poland (A23), Denmark, Sweden, Finland, Austria and the Benelux (all in A24), from 1998 to early 2010, as well as a CD-ROM containing a promotional advert shown on Spanish TV in 2005 (A20). Enclosure A21 also includes an article from a UK newspaper dated 2013 with a mention of Clinique skin care products and a CD-ROM with outdoor, television and internet advertising carried out in the UK from 2013 to 2015 for these products, as well as printouts with information on events and incentives in the UK from 2001 to early 2010. Enclosure A24 also contains information on some awards won by Clinique products in Sweden (from 2006 to 2009), the Benelux (from 2001 to 2009) and in Ireland (in 2011). All these items of evidence show the mark ‘CLINIQUE’ used for various goods such as soaps, moisturising creams, face lotions, shampoos, perfumes, lipsticks and other cosmetics.

• Enclosures A25-A26: printouts from German websites and chatrooms/forums about Clinique products. The date of the printouts is 2010 although they refer to information from previous years.

• Enclosure A27: a market survey on consumer awareness of the brand ‘CLINIQUE’ in France in early 2004 (it includes a translation into English of relevant parts). The survey was carried out by TNS Sofres, an independent market research company, and it demonstrates that in France a significant percentage of those interviewed (women from households with a good quality of life, and city dwellers including Parisians) were familiar with the ‘CLINIQUE’ brand. Furthermore, a similar percentage of respondents in the core target market (25-29 years old farmers, craftsmen, businessmen, managers etc. women) were aware of the trade mark ‘CLINIQUE’. In addition, the trade mark ‘CLINIQUE’ was spontaneously recalled by a proportion of the women interviewed when asked about the relevant product category, and some mentioned it first (demonstrating that the brand has a ‘top-of-mind’ reputation).

• Enclosure A28: the results of a survey conducted by Dinamiche, an independent research company, in Italy in November 2007 (it includes a translation into English of relevant parts). Of a total of more than 500 people questioned, a significant percentage associated the word ‘CLINIQUE’ and the logo ‘CLINIQUE’ with cosmetics.

• Enclosure A29: a copy of a survey conducted by the independent opinion poll company Millward Brown SMG/KRC in Poland in October 2008 (it includes a translation into English of relevant parts). Of 500 women asked to name luxury cosmetics brands, a significant percentage (in terms of both spontaneous and aided awareness) specified ‘CLINIQUE’. In addition, a considerable proportion of the respondents thought that the ‘CLINIQUE’ mark had a reputation and associated it with high quality and luxury. A significant proportion of those interviewed associated ‘CLINIQUE’ with purity.

• Enclosures A30 to A33: Decisions from national and European courts (dated, inter alia, 1994 and 2006), as well as from the EUIPO (dated 2009, 2011, 2012 and 2014) ruling, inter alia, on the distinctiveness and reputation of some of the opponent’s marks.

It is clear from the evidence that the earlier trade marks have been subject to longstanding and intensive use and that they are generally known in the relevant market, where they enjoy a consolidated position among the leading cosmetic brands, as has been attested by independent and diverse sources. In particular, the various market surveys conducted in different countries by different independent market research companies show that the earlier trade marks are immediately recognised by a significant part of the relevant public. The sales figures, marketing expenditure and market share shown by the evidence, as well as the number of advertisements in a wide range of fashion and lifestyle magazines, showing a significant media coverage, and the press articles about and awards won by the opponent’s products demonstrate that the relevant public knows the trade marks in question and that these marks enjoy a high degree of recognition in relation to the above-mentioned goods. Although some of the information provided originates from the opponent itself (or related companies such as the parent company Estée Lauder Inc.), there is a significant amount of information provided by third parties and independent sources such as Euromonitor International, which is the world’s leading provider of global consumer intelligence (Enclosure A11), the TNS Sofres survey (Enclosure A27), an independent market research company in France, the ‘Dinamiche’ survey  in Italy (Enclosure 28) and the Millward Brown survey in Poland (Enclosure 29).

It should be also pointed out that even if some of the documents are dated in a period that is significantly distant from the relevant date (filing date of the contested EUTM: 24/05/2013), the possibility cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on how close the period covered is to the filing date (see, by analogy, order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; judgments of 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 82). In this regard, the relevance of the evidence should be carefully assessed by reference to the kind of goods concerned because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved. In the present case, the independent market surveys conducted during several successive years (the last being dated in 2009), together with other substantial evidence, unequivocally demonstrate that the marks enjoy a high degree of recognition among the relevant public and have acquired a strong reputation linked to cosmetic products. The Opposition Division is of the opinion that this degree of recognition acquired through such a longstanding and intensive use, as shown by the evidence, in this particular market sector where consumers are usually loyal in their choices, is not likely to be diluted fast since it would presuppose a dramatic change of market conditions over a period of four years.

On the basis of the above, the Opposition Division concludes that the earlier trade marks have a reputation in the European Union.

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

As regards beauty consultation services in the selection and use of cosmetics, toiletries, perfumery and beauty treatment; advisory services relating to provision of beauty, perfumery, make-up and skin treatment services in Class 42, even if from some of the evidence submitted it appears that the opponent carries out some activities in order to better assess the skin needs of the cosmetic and make-up purchasers through its websites or at the shops counters by means of, for example, a diagnostic app or online consultations, they are not sufficient to prove reputation. As previously indicated, the evidence is mainly focused on toiletries and cosmetics, including the market surveys, the advertising material or even the affidavit, and from the few references to these activities there is no clear indication that these services are recognised by the public and have a reputation. They might even be offered as additional or ancillary services to buyers of the ‘CLINIQUE’ goods and not be provided independently to external clients.

Last but not least, none of the evidence shows any reference to the remaining services in Class 42, namely design and interior decoration services relating to retail stores, perfumeries, beauty salons, beauty counters; research, development, laboratory and technical support services relating to perfumes, cosmetics and beauty and skin treatment products. In any case, these activities would, at most, be provided internally within the group enterprises and not to external clients and, therefore, the public would not be aware of these services and cannot consider them as having reputation.

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

2. The signs

CLINIQUE	Charme Clinique
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Regarding earlier mark 1) and the contested sign, since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether the word marks are written in upper or lower case or in a combination thereof.

The element ‘CLINIQUE’ of the earlier marks will be perceived by the French-speaking public in the relevant territory as ‘clinic’, referring to a private hospital or nursing home (www.collinsdictionary.com/dictionary/english/clinic). This is also true as regards consumers throughout the relevant territory as the word ‘CLINIQUE’ is very similar to the equivalent words in the official languages of the other European countries, such as ‘clinic’ in English, ‘clínica’ in Spanish and Portuguese, ‘clinica’ in Italian, and ‘klinik’ in German, Danish and Swedish; even languages with no Germanic or Latin origins, such as Hungarian (‘klinika’), have similar equivalent words (as confirmed by, inter alia, 13/05/2015, T-363/13, ‘CLEANIC intimate’). This element has no meaning for any of the goods in question from the perspective of the public in the relevant territory and, therefore, its distinctiveness is normal. Hence, the earlier marks have no elements that could be considered clearly more distinctive than other elements.

The element ‘Charme’ of the contested sign will be perceived by part of the public in the relevant territory such as the French, Portuguese, German or Danish-speaking public in the relevant territory as ‘charm’, meaning ‘the quality of being pleasant or attractive’ (www.collinsdictionary.com/dictionary/english/charm). This meaning may also be grasped by, for example, the English-speaking public on account of its similar term ‘charm’. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive. The element ‘Clinique’ will be understood with the same meaning mentioned above. Bearing in mind that the relevant services are medical-related in the field of dentistry, the element ‘Clinique’ is weak for all the contested services.

The opponent claims that the element ‘Clinique’ is the dominant and distinctive element in the contested sign for the significant part of the public that does not speak French, whereas the element ‘Charme’ is a highly laudatory term, particularly when used in the area of beauty and body care. However, in the present case, the contested services are in the field of medical-dental services and, furthermore, it has been stablished that the element ‘Clinique’ will be understood throughout the European Union and not only by the French-speaking part of the public.

The opponent refers to previous decisions of the Office to support its argument that the element ‘Charme’ is not able to differentiate the two signs. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. This is because in the cited case B 385 270 the term ‘Charme’ formed part of a less visually dominant and laudatory slogan in relation to the relevant footwear goods (‘Franco Fortini’ v. ‘Franco Martini, Schuhe mit Charme’, i.e, footwear with charm) and in opposition B 1 931 768 (‘Capri’ v. ‘Charme di Capri’) the term was not considered weak for goods in Classes 3, 24 and 25, but was found just as reinforcing the conceptual similarities between the signs.

Neither of the marks have any element that could be considered clearly more dominant (visually eye-catching) than other elements.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

On the other hand, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs are similar to the extent that they coincide in the word ‘CLINIQUE’, which forms the earlier mark 1), also constituting the single verbal element of the earlier mark 2), and is included in the contested mark as its second and weak element. However, the signs differ in the first and most distinctive verbal element of the contested sign, ‘Charme’, as well as in the figurative elements contained in earlier mark 2).

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘CLINIQUE’, present at the end of the contested mark as a weak element. The pronunciation differs in the sound of the letters ‘Charme’ of the contested sign, which have no counterparts in the earlier marks, and in the sound of the highly stylised letter ‘C’ of earlier mark 2), should it be pronounced.

Therefore, the signs are aurally similar to a low degree.

Conceptually, since the signs have in common the weak concept of ‘clinic’ understood throughout the European Union, they are conceptually similar to a low degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a certain degree. 

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.

In the present case, the signs are visually, aurally and conceptually similar to some extent owing to the presence in the signs of the word ‘CLINIQUE’, which does not convey any meaning in connection with the opponent’s goods, whereas it is weak in relation to the contested services and is placed at the end of the contested sign.

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

Class 44: A full range of services relating to dentistry, prosthodontics and cosmetic dentistry; Dental surgery, dental implantation.

The contested services are, therefore, in the nature of medical care services, namely dentistry-related services.

The Opposition Division deems that the contested sign is not sufficient to trigger a link with the reputed earlier marks, ‘CLINIQUE’, in the mind of the relevant public for the contested services.

First, it is not a common trend for enterprises in the cosmetic products field to also act in the dental medical sector, including cosmetic dentistry. This is a highly specialised field that cannot be said to be a neighbouring or related market in relation to the reputed goods but is commercially set apart from them. In this regard, there is no relevant connection between the specific know-how necessary to manufacture the opponent’s reputed cosmetic goods and the highly technical (medical) skills necessary to provide the contested dental services, what means that a transfer of knowledge is impossible in the present case, a fact the relevant public will be aware of. Therefore, the goods and services in conflict are so different that the latter contested mark is unlikely to bring the earlier marks to the mind of the relevant public. The significant differences in nature, origin or distribution channels between the opponent’s goods for which reputation has been proven and the applicant’s services make it improbable that the relevant public will make a mental connection between the marks in dispute.

Moreover, it is true that both goods and services in conflict may improve appearance but, whilst in the case of the opponent’s goods it is merely a superficial and, possibly, temporal improvement, the contested services include surgery and invasive dental procedures and treatments with mostly permanent and radical effects. In addition, contrary to the earlier reputed goods, the applicant’s services involve high costs and completely differing considerations regarding health and, therefore, the level of attention in this case will be particularly high.    

Furthermore, the word ‘CLINIQUE’, included in the signs (and understood throughout the European Union as meaning ‘a private hospital’), is descriptive for the contested dental care services in Class 44, as it merely designates a place where these services are often and commonly provided, that is to say, a clinic or private hospital. Therefore, it is likely that consumers would not pay as much attention to this element as to the other, more distinctive, element ‘Charme’ of the contested sign. In view of the feeble distinctive character of the element in question, the similarity between the contested trade mark and the earlier trade marks is unlikely to bring the earlier trade marks to the mind of the average consumer, thus preventing them from establishing a link 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.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.