OPPOSITION No B 2 487 638

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

a g a i n s t

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

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 487 638 is partially upheld, namely for the following contested goods and services:

Class 5:         Pharmaceutical preparations for treatment of cancer.

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

2.        European Union trade mark application No 13 090 659 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 090 659 for the word mark ‘GHD EuroHealthcare Company’. The opposition is based on the following earlier rights:

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

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

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

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

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

1. The goods and services

The goods and services, on which the opposition is based, comprising the scope of protection of the three abovementioned earlier rights, are the following:

United Kingdom trade mark registration No 2 648 749

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

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

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

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

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

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

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

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

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

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

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

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

United Kingdom trade mark registration No 2 628 441

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

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

United Kingdom trade mark registration No 3 052 539

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

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

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

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

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

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

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

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

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

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

The contested goods and services, after a partial refusal in a parallel opposition, are the following:

Class 5: Pharmaceutical preparations for treatment of cancer and artificial nourishment; dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia.

Class 10: Medical goods (apparatus and instruments) for ostomies, tracheostomies, enteral and parenteral nutrition.

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

Class 39: Transport, in particular transport of medical goods, medication and medical appliances to patients, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; Packaging and storage of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; Logistics in the transport sector in relation to medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care.

Class 44: Health care consultation services, namely in relation to utilisation of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods and services, namely in Class 39, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the terms ‘namely’ and ‘exclusively’, used in the applicant’s and in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 5

Whether or not a specific pharmaceutical is sold under prescription is not of particular relevance for the comparison of the goods. Therefore, a prescription medicine is generally considered similar to an over-the-counter drug.

The contested pharmaceutical preparations for treatment of cancer and artificial nourishment; dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia refer to any kind of medicine that is related to the treatment of cancer or is a form of artificial nourishment, as well as dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia. Cosmetics products listed in Class 3 usually include preparations used to enhance or protect the appearance or odour of the human body, in particular such goods as the opponent’s soaps; preparations for the skin, scalp, hair and body; medicated shampoos and conditioners; medicated preparations and products for use on and in connection with hair. Pharmaceuticals, however, may comprise products, such as skin-, hair- and body-care preparations, with medical properties; this cannot be ruled out in relation to the very specific category of the contested goods that are used for the treatment of particular diseases and for medical nutrition.

Although the contested pharmaceutical preparations for treatment of cancer are considered highly specialised products, they may generally have the same method of use (e.g. creams, lotions) and purpose, such as improving the patient’s health, as the opponent’s preparations for the skin, scalp, hair and body or medicated shampoos and conditioners in Class 3. Furthermore, they may have the same distribution channels, since they can all be found in pharmacies or other specialised medical or drug stores. It cannot be excluded that the goods may target the same customers as the abovementioned patients who use medical cosmetics for a specific purpose. Nevertheless, taking into account the specifications of the relevant categories of goods, they are considered similar to only a low degree.

However, the contested pharmaceutical preparations for artificial nourishment; dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia are substances that are prepared for special dietary requirements with the purpose of treating or preventing disease and are completely different from the opponent’s cosmetics in Class 3. The goods have different methods of use and relevant purposes, they are found in different sections in stores and they do not have the same relevant public; the relevant publics are interested in genuinely different areas of human wellbeing – the physical appearance of health versus inner health. They are considered dissimilar. Furthermore, the contested goods also differ from the opponent’s remaining goods and services, as they do not have anything in common, namely they do not coincide in any of the Canon criteria (29/09/1998, C-39/97, Canon, EU:C:1998:442).

Contested goods in Class 10

The contested medical goods (apparatus and instruments) for ostomies, tracheostomies, enteral and parenteral nutrition are highly specialised apparatus and instruments used for complex procedures. These goods differ in their nature, purpose and method of use from those of the opponent’s goods and services. Apart from the fact that the natures of goods and services are different in principle, these goods are different from the opponent’s goods, since they are highly specialised goods that are usually used by medical professionals, and the opponent’s goods target average consumers. Therefore, the goods will have different distribution channels. Therefore, they are considered dissimilar to the opponent’s goods and services.

Contested services in Class 35

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

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

Contested services in Class 39

The contested transport, in particular transport of medical goods, medication and medical appliances to patients, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; packaging and storage of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; logistics in the transport sector in relation to medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care are dissimilar to the opponent’s goods and services. The contested services are mainly services rendered in transporting goods from one place to another and the services that are necessarily connected with such transport, services relating to the storing of goods in a warehouse or other building for their preservation or safekeeping, and services relating to the distribution of a specific type of goods. These specific services relate to different sectors and have different purposes from those of the opponent’s goods and services. The services at issue are not in competition or complementary and are usually provided by different undertakings.

Contested services in Class 44

The contested health care consultation services, namely in relation to utilisation of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care are activities that provide actual medical care by qualified healthcare professionals, namely in relation to the use of medical goods, medication and medical appliances, and are intended for use exclusively in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care (in medical clinics, hospitals, etc.). They are dissimilar to the opponent’s services in Class 44, which are intended for various beautifying procedures and beauty treatments. These services have different purposes, natures and methods of use. The opponent’s services are not complementary to the contested services in Class 44 and they are not in competition. Furthermore, the contested services differ from the remaining goods and services of the earlier marks, since they do not coincide in any of the Canon criteria.

It cannot be excluded that some of the opponent’s goods in Class 3 may be used to provide the applicant’s services for healthcare purposes. However, it is not common for the providers of the contested services (doctors and healthcare professionals) to actually manufacture and sell their own brand of hygienic products, perfumery, cosmetics or related goods. They usually use or sell goods that have been manufactured by a third party and that do not bear their own mark. The sale of any such goods would, if anything, be merely ancillary. From the consumer’s standpoint, the goods and services do not stem from the same company or economically linked companies. Even though a certain link cannot be ruled out because of the common goal of enhancing and improving the physical condition of patients, the differences in their natures and, particularly, in the usual origins of these goods and services clearly outweigh any similarities.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be similar to different degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise, such as healthcare professionals and companies.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. Furthermore, it is apparent from the case-law that, insofar as pharmaceutical preparations are concerned (in Class 5), the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

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

The relevant territory is the United Kingdom.

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

The earlier marks are word marks consisting of the three letters ‘GHD’ in lower or upper case for earlier marks (1) and (2) and with the additional word ‘HAIR’ in earlier mark (3). However, in the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial whether the earlier marks are in upper or lower case letters.

The contested sign is a word mark consisting of verbal elements ‘GHD EuroHealthcare Company’.

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

The expression ‘EuroHealthcare Company’ forming the contested sign will be dissected and perceived in its meaningful parts by the relevant English-speaking public; in particular, it will be most likely associated with a reference to the company originating from Europe (illustrated by the shortened element ‘Euro’) and providing goods and services in the healthcare field (‘Healthcare’). Therefore, the verbal elements ‘EuroHealthcare Company’ are an indication of the origin and the essence of the business and are considered less distinctive than the verbal element that precedes them, namely ‘GHD’.

For the sake of completeness, it has to be mentioned that neither of the signs has any elements which could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their initial parts, namely the first three letters ‘GHD’, which are the sole elements of earlier marks (1) and (2). They differ in the additional verbal element in earlier mark (3), ‘HAIR’, considered weak for some of the goods and services, and in the expression ‘EuroHealthcare Company’ in the contested sign, which is also considered less distinctive than the verbal element ‘GHD’. With regard to the identical first parts of the conflicting marks, it has to be noted that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In principle, the lengths of the signs may influence the effect of the differences between them and, consequently, the shorter a sign, the more easily the public is able to perceive all of its single elements. However, in the present case, although earlier marks (1) and (2) are short signs, they are still entirely incorporated in the contested sign.

Therefore, for all the relevant reasons commented above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛GHD’, which are likely to be pronounced as [dʒi:/eitʃ/di:] and are present identically in both signs. The pronunciation differs in the sound of the additional verbal element ‘HAIR’ in earlier mark (3), which is considered weak for some of the goods and services, and in the entire verbal expression ‘EuroHealthcare Company’ in the contested sign.

Therefore, the signs are considered aurally similar to an average degree.

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

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

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

4. Distinctiveness of the earlier marks

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

The opponent did not claim any enhanced distinctiveness of its earlier trade mark (3). Consequently, the assessment of the distinctiveness of this earlier mark will rest on its distinctiveness per se and the distinctiveness of the trade mark must be seen as normal, despite the presence of a weak element, as stated above in section c) of this decision.

However, according to the opponent, earlier trade marks (1) and (2) have reputation in the United Kingdom in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive an earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

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 14/07/2014. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for all the above listed goods and services.

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 their use, and the size of the investment made by the undertaking in promoting them.

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

On 09/09/2015, within the time limit set for substantiation, the opponent filed evidence. This evidence consists, in particular, of the following documents:

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

2) An affidavit signed on 07/09/2015 by the Executive Director of the Hairdressers Journal International and of the ‘Salon International Exhibition’ and the ‘British Hairdressing Awards’, which are considered the United Kingdom’s largest professional hairdressing exhibitions. The declarer confirms the strong recognition of the opponent’s brand ‘GHD’ in the UK market in relation to haircare products, in particular in the electrical category, such as hair straighteners and irons, hair curlers and hair dryers;

3) An affidavit signed on 09/09/2015 by the Assistant Counsel of Jemella Group Limited (Jemella), including Exhibit DW1, which is accompanied by notes explaining the content thereof:

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

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

• Cuttings and advertisements from the national press, including copies of some of the articles published by various online sources that are referred to in the Wikipedia extract; in particular, the sources include online fashion and beauty magazines, such as www.graziedaily.co.uk, www.cosmopolitan.co.uk, www.vogue.co.uk, www.elleuk.com and www.glamourmagazine.co.uk, as well as online daily news magazines and newspapers, such as www.hellomagazine.com, www.dailymail.co.uk, www.independent.co.uk, www.telegraph.co.uk and www.manufacturingtoday-europe.com. Most of the articles are dated between 2012 and 2015, although some are dated in 2007 and 2008. The articles have titles such as ‘Ghd launches revolutionary new styling’, ‘10 best hair straighteners’, ‘Is the new ghd hairdryer actually ground-breaking?’, ‘How ghd is getting ahead’, ‘ghd’s straight to the top’ and ‘Katy Perry is the new face of GHD’, which indicate that the opponent is recognised as one of the leading companies in the United Kingdom in the haircare industry;

• Cuttings and advertisements from the international press, including extracts from promotional materials from different foreign magazines, in languages including Danish, French, German, Italian, Spanish, and Swedish; among them are various articles in international issues of Vanity Fair, Cosmopolitan, Elle, Marie Claire, Glamour, Grazia, Go Beauty, Woman, etc. They are dated between 2008 and 2015 and concern the promotion of the opponent’s range of products in the hairdresser section;

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

• An extract from the CoolBrands evaluation by The Centre for Brand Analysis with the official results for 2009/2010 in which the opponent’s brand is listed as a winner in the category ‘Toiletries – Haircare’, as well as being one of the listed CoolBrands for 2011/12, 2012/13 and 2013/14. As it states, the entire selection process for CoolBrands is independently administered by The Centre for Brand Analysis. A nationally representative group of just under 3 000 British adults is further accessed via an SSI online panel;

• Information about a charity campaign in which the opponent’s brand was involved, namely ‘Breakthrough Breast cancer’, between 2004 and 2015, which was supported by the release of a new product in the range, a pink styler; sales of this product contributed to a donation to the charity;

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

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

• Extracts from articles containing information about the TV ban on the advertising campaign ‘thy will be done’ in which the ‘GHD’ brand was involved; news about this ban has been published on various UK media websites, such as www.uk.reuters.com and www.bbc.uk.co, and has been commented on publicly.

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

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

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

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

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

The opponent’s brand ‘GHD’ has been the subject of significant marketing activities and advertising investments in the hairstyle industry since its establishment, and it submitted a variety of evidence in support of this claim. Direct evidence of this fact is particularly the frequent and consistent public presence of the brand in different magazines and newspapers, as well as its internet presence and the report evaluating the opponent’s success in commercialising the brand by means of serious investments to achieve a leading position among its competitors.

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

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

Furthermore, the opponent also submits solid evidence in support of its total sales and market share, as illustrated in the first diagram above, which is presented in an independent marketing agency report by Nielsen/Mintel. Contrary to the applicant’s opinion, the figures shown were put into the context of the market and, consequently, the substantial market share, which indicates that the opponent’s brand is one of the major players in the haircare market, is another strong indication of reputation. This is taken into account particularly when it is assessed in conjunction with the remaining evidence concerning public perception, particularly the articles with information about the reasonably high degree of trade mark awareness, for example ‘10 best hair straighteners’, ‘How ghd is getting ahead’, ‘ghd’s straight to the top’, etc., which were published by the national media.

Therefore, on the basis of the above, the Opposition Division concludes that the earlier trade marks have a reputation in the United Kingdom. However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to hair style tools, in particular hair irons, hair straighteners, hair dryers (in Class 8), whereas there is no or little reference to the remaining goods and services in Classes 3, 8, 9, 11, 16, 21, 25, 26, 35, 41, 42 and 44. This is clear, for example, from the market share report, press cuttings, advertisements and awards, where only the former are mentioned.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are similar to different degrees and the degree of attention will vary between average and high, the latter for medical products and related services.

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

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

As regards earlier mark (3), it has been noted that the additional word ‘HAIR’ does not add to the distinctiveness of the mark when it concerns goods and services that are related to haircare and, consequently, the public will focus instead on the more distinctive element ‘GHD’, which is present in all the conflicting signs.

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

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

The commonality in the three letters ‘GHD’, which are present in the conflicting signs as independent and perceptible verbal elements, may offset the lower degree of similarity between some of the goods and services in question. The same reason may have a further impact on the economical linking of the parties.

Furthermore, as regards the degree of similarity between the marks at issue, it is clear from case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44). Moreover, the greater the degree of distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark. This must be taken into account particularly given that earlier marks (1) and (2) were considered to have a reputation in the relevant territory.

In its observations, the applicant argues that the earlier trade marks have a low degree of distinctive character given that the abbreviation ‘GHD’ stands for ‘good hair day’, as indicated by the opponent itself, and there are other trade mark registrations that include this specific element. Firstly, the Opposition Division notes that consumers who have been exposed to widespread use of this particular slogan and have become accustomed to it in relation to the goods in the relevant sector tend to associate the letters ‘ghd’ with a particular reputed brand of a particular origin, as shown above in section d). Therefore, taking into account that earlier marks (1) and (2) have a reputation in the relevant territory, as well as the fact that earlier mark (3) incorporates the same three letters and is very likely to be linked to the same company, the applicant’s claims must be set aside in relation to all the opponent’s earlier rights. Secondly, as also mentioned above, although the applicant’s intention may be to use the sign ‘GHD’ as an abbreviation for its entire company name, ‘GesundHeits Deutschland’, it cannot be expected that the public will be able to differentiate clearly between two signs ‘GHD’ that use identical abbreviations to stand for different names. The relevant consumer may still perceive the abbreviation ‘GHD’ in each of the conflicting signs and, consequently, may link them, since they may have no clear connotations when used alone.

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

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

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

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

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

Since the Opposition Division has identified that these marks cover essentially the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected, even bearing in mind that an enhanced distinctive character was claimed for one of these rights, as mentioned above. Therefore, no likelihood of confusion exists with respect to these goods and services.

For the sake of completeness, it must be also noted that there is no need to examine proof of use for some of the earlier trade marks (listed among ‘the remaining earlier rights’ above on which the opposition is based), as this will not lead to a different outcome from that already concluded above.

As a result, the opposition has already been successful for some of the contested goods and services. The examination must proceed with respect to the remaining contested goods and services, which were found to be dissimilar in the comparison carried out in section a) of this decision. The examination will firstly proceed with the earlier rights for which Article 8(5) EUTMR was invoked and with respect to the goods and services considered dissimilar in this section.

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

According to the Office’s practice (Guidelines, Part C, Opposition, Section 5, Trade marks with reputation (Article 8(5) EUTMR), 2.1.2), where the opponent invokes a registered trade mark and claims the same mark in the same country as a well-known mark, this will, in general, be taken as a claim that his registered mark has acquired a high degree of distinctiveness by use.

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

REPUTATION – ARTICLE 8(5) EUTMR

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

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

Two of the earlier rights already have been examined in the previous section in relation to the signs ‘ghd’/’GHD’. Therefore, for reasons of procedural economy, the Opposition Division will focus the examination under Article 8(5) EUTMR on these two earlier rights, as they are identical to earlier rights United Kingdom trade mark No 2 471 848 and European Union trade mark No 2 860 518, and cover the same or a broader scope of protection; consequently, given that the evidence filed by the opponent in relation to those rights is the same evidence already examined above, same findings will apply in relation to these rights.  

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

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

• The signs must be either identical or similar.

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

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

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

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

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

2. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

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

The goods for which reputation was proven, as demonstrated in the previous section, are hair style tools, in particular hair irons, hair straighteners, hair dryers (in Class 8). The contested goods and services found to be dissimilar to the opponent’s goods and services in the previous section are the following:

Class 5: Pharmaceutical preparations for artificial nourishment; dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia

Class 10: Medical goods (apparatus and instruments) for ostomies, tracheostomies, enteral and parenteral nutrition

Class 39: Transport, in particular transport of medical goods, medication and medical appliances to patients, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; packaging and storage of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care; logistics in the transport sector in relation to medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care

Class 44: Health care consultation services, namely in relation to utilisation of medical goods, medication and medical appliances, being exclusively for use in the fields of cancer treatment, ostomies, tracheostomies, enteral and parenteral nutrition, and wound care

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

In the present case, there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. It is apparent from the wording used in the list of contested goods and services that the contested goods and services target patients suffering from particular diseases and a professional public mainly involved in the medical field. The earlier trade marks, on the other hand, were found to have a reputation among people interested and involved in beauty care and particularly hair care; although it cannot be generalised, given the distribution channels and the target group of the advertising and promotional activities, consumers of the earlier marks’ products are likely to be fashion- and style-oriented persons. Consequently, given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade marks enjoy a reputation, no association will be made between the signs.

By way of example, the nutritional supplements and medical products in Classes 5 and 10 and the contested hair care tools will generally be manufactured by different companies involved in different sectors, namely health care and beauty care. The Opposition Division finds that the conflicting goods belonging to these industries are sufficiently remote from each other to allow the conclusion that consumers will not be reminded of the opponent’s mark when encountering the contested sign. As previously highlighted, the contested artificial nourishment; dietary preparations and dietary supplements for patients with cancer, bowel disorders or dementia in Class 5 are substances used for the purpose of treating or preventing diseases, and their usual distribution point will be rather specialised nutrition or dietetic stores or pharmacies, whereas the opponent’s hair care tools will be available in different cosmetic and beauty shops or even shops selling electrical appliances. In addition, even though some of the goods of the beauty sector and health sector may be sold to retailers by the same distributor, as the opponent itself tries to show through the submission of additional extracts (reference is made to the extract from www.boots.com, observations dated 03/06/2016), these goods are still included in two different main categories, namely ‘pharmacy & health’ and ‘hair styling’, available under ‘electrical’. The mere fact that one distributor may offer a variety of different categories of products is not sufficient to conclude that there is a direct relationship between the goods, as consumers are accustomed to ordering distantly related goods from the same sales outlets without necessarily having the impression that such goods are linked in any way. The goods in Class 10 are even more remote from the opponent’s goods, as they are meant for a professional public in the medical field and do not overlap in any way with the opponent’s goods and services.

The contested services in Class 39 are a particular type of services provided by specialised companies, and the Opposition Division is of the opinion that these services will not, in any case, target the same public as the opponent’s goods, nor will they overlap in any other relevant sector where a link between the signs may be established.

The contested services in Class 44, health care consultation services in relation to specific medical goods or treatments, will also not be linked with any product of the beauty consultation sector, as they will be exclusively provided by particular consultants and advisors having different knowledge backgrounds and professional skills.

In its argumentation, the opponent further points out the fact that its company has been sponsoring a cancer campaign for more than 10 years. However, this does not automatically lead to the conclusion that the opponent has gained reputation for its brand name in manufacturing cancer-related medical products or rendering cancer-related medical services. Its participation in charity work may be considered an activity related to the opponent’s company mission and values, but this is not a commercial or business field in which the opponent operates. Therefore, the encountering of the sign ‘GHD’ has not been proven to lead to a strong and immediate association of the opponent’s brand with the relevant medical field in which the applicant’s goods and services will be introduced.

Consequently, the significant differences between the use of the goods in dispute for which reputation has been proven and the contested goods and services make it very unlikely that the public will make a link between the conflicting signs, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier marks. It is even less likely that, when intending to purchase a dietary supplement or medical device, the relevant public will link these contested goods to a trade mark that is very well known for hair stylers/tools.

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, as far as this article was invoked.

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

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

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

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

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

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

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

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

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

1. The rights under the applicable law

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

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

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

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

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

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

The evidence already examined above in relation to the brand ‘GHD’ indicates that by the filing date of the contested trade mark the opponent’s goods, namely hair style tools, in particular hair irons, hair straighteners, hair dryers (in Class 8), had been effectively present in the UK market for some time, generating transactions and sales. The Opposition Division finds that the evidence is sufficient to prove that the opponent enjoys goodwill for these goods in the mind of the purchasing United Kingdom public for the signs on which the opposition is based (under this ground).

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

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

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

Therefore, a comparison of the signs is required.

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

1.        The goods and services

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

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

It follows from the above that the remaining goods and services in Classes 5, 10, 39 and 44 are found dissimilar to the opponent’s goods for which the opponent has shown that it has acquired goodwill through use. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods and services for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker MENSING

Manuela RUSEVA

Benoit VLEMINCQ

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