OPPOSITION No B 2 451 949

Kelemata S.r.l., Corso Re Umberto, 20, 10128 Turin, Italy (opponent), represented by Odra Papaleo, Via Pietro Palmieri, 14, 10138 Turin, Italy (professional representative)

a g a i n s t

Прайвътлейбъл Уърлд ЕООД, бул."Шести Септември " № 177, 4000 Пловдив, Bulgaria (applicant), represented by Ivan Nikolov Ivanov, IP Consulting Ltd.,  6-8 Mitropolit Kiril Vidinski Str. vh. 8, floor 2, office 2, 1164 Sofia, Bulgaria  (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 451 949 is partially upheld, namely for the following contested goods:

Class 3:        Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations; Animal grooming preparations; Abraders; Aromatics [essential oils]; Scented oils used to produce aromas when heated; Almond oil; Badian essence; Bergamot oil; Pine oil; Geraniol; Distilled oils for beauty care; Emulsified essential oils; Natural oils for cleaning purposes; Essential oils; Essential oils for the care of the skin; Essential oils for use in air fresheners; Essential oils for personal use; Ethereal essences; Jasmine oil; Cedarwood (Essential oils of -); Oils for the body [cosmetics]; Blended essential oils; Lavender oil; Terpenes [essential oils]; Textile finishing oils; Safrol; Rose oil; Aromatherapy preparations; Non-medicated oils; Natural oils for cosmetic purposes; Mineral oils [cosmetic]; Peppermint crude oil; Mint essence [essential oil]; Tea-tree oil; Gaultheria oil; Oils for toilet purposes; Oils for perfumes and scents; Oils for cosmetic purposes; Skin care oils [non-medicated]; Lemon [Essential oils of -]; Household fragrances; Soap pads; Oils for cleaning purposes; Colorants for toilet purposes; Perfumes for ceramics; Cleaning preparations impregnated into pads; Cleaning agents for household purposes; Furniture cleaner; Perfumes for cardboard; Perfumery and fragrances; Body cleaning and beauty care preparations; Oral hygiene preparations; Abrasive preparations for use on the body; Perfumed lotions [toilet preparations]; Perfumed body lotions [toilet preparations]; Cuticle conditioners; Moist wipes impregnated with a cosmetic lotion; Massage gels other than for medical purposes; Sponges impregnated with toiletries; Impregnated cloths for cosmetic use; Cuticle removers; Cosmetics for personal use; Cosmetic kits; Cosmetic preparations for slimming purposes; Cosmetics; Cosmetic preparations for use as aids to slimming; Cosmetics in the form of oils; Cosmetic pads; Cuticle cream; Henna [cosmetic dye]; Henna powders; Tissues impregnated with cosmetic lotions; Tissues impregnated with cosmetics; Lacquer for cosmetic purposes; Adhesives for cosmetic purposes; Adhesives for affixing false hair; Greases for cosmetic purposes; Lint for cosmetic purposes; Massage creams, not medicated; Massage oils; Massage oils, not medicated; Ointments for cosmetic use; Non-medicated cosmetics; Non-medicated toiletries; Cotton wool for cosmetic purposes; Cotton sticks for cosmetic purposes; Cotton balls for cosmetic purposes; Pumice stone; Pumice stones for use on the body; Emery boards; Cleaner for cosmetic brushes; Pedicure preparations; Aloe vera preparations for cosmetic purposes; Baby care products (Non-medicated -); Slimming aids [cosmetic], other than for medical use; Mineral water sprays for cosmetic purposes; Scalp treatments (Non-medicated -); Make-up pads of cotton wool; Paper hand towels impregnated with cosmetics; Fragrances for personal use; Aromatics for perfumes; Aromatics for fragrances; Scented body spray; Perfume water; Perfumed toilet waters; Perfumed tissues; Perfumed powder; Cologne impregnated disposable wipes; Extracts of perfumes; Natural oils for perfumes; Ionone [perfumery]; Amber [perfume]; Lavender water; Mint for perfumery; Peppermint oil [perfumery]; Musk [perfumery]; Eau de Cologne; Fragrance preparations; Perfumery; Solid perfumes; Flower perfumes (Bases for -); Fumigation preparations [perfumes]; Rose oil for cosmetic purposes; Synthetic perfumery.

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Nightlights [candles]; Candle assemblies; Tallow candles; Floating candles; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles.

Class 21:        Cosmetic and toilet utensils and bathroom articles; Brushes and brush-making articles; Dental cleaning articles; Eye make-up applicators; Applicators for applying eye make-up; Applicator sticks for applying makeup; Hair for brushes; Combs; Comb (electric); Hair combs; Combs for the hair (Large-toothed -); Eyelash combs; Sponges; Bath sponges; Abrasive sponges for scrubbing the skin; Sponges for applying body powder; Body sponges; Facial sponges for applying make-up; Deodorising apparatus for personal use; Hand towel dispensers; Dispensers for the storage of toilet paper [other than fixed]; Dispensers for liquids for use with bottles; Dispensers for paper towels; Cotton ball dispensers; Soap dispensers; Perfume bottles.

2.        European Union trade mark application No 13 172 564 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 172 564. The opposition is based on, inter alia, Italian trade mark registration No 1 093 821. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 Italian trade mark registration No 1 093 821.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, including the Italian trade mark registration No 1 093 821.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The opponent argues that the applicant’s request is unclear and ambiguous because the applicant requested proof of use and, at the same time, admitted that the mark had been used for certain goods in Class 3 and requested more specifically to prove use of the mark for the remaining goods.

The Opposition Division considers that the applicant’s request for proof of use is sufficiently clear and unambiguous because the applicant stated, among other things, the following: ‘we request the opponent to provide proof of use for the goods for which the earlier trade marks are registered’. Although the applicant submitted other observations together with the request, the fact is that it expressly requested proof of use for all the goods. This was reflected in the corresponding letter from the Office to the opponent of 23/11/2015 in which the Office stated: ‘you must now provide proof of use of all your trade marks for all the goods/services on which the opposition is based’. Consequently, there is no doubt as to the extent of the request for proof of use. The request for proof of use is admissible.

The contested application was published on 23/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Italy from 23/09/2009 to 22/09/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 23/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/01/2016 to submit evidence of use of the earlier trade mark. This time limit was extended on request of the opponent until 28/03/2016. Since this day was a public holiday, the time limit effectively expired on 29/03/2016.

On 23/03/2016, within the time limit, the opponent submitted observations concerning proof of use in which it referred to the evidence filed previously (on 09/07/2015) to prove reputation of the earlier trade marks and submitted other documents as evidence of use.

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 to be taken into account is the following:

Evidence of reputation submitted on 09/07/2015:

• Enclosure 1: documents concerning the use of the mark ‘VENUS’ for beauty-care products in Italy in the early 1900s,
• Enclosures 2-4: documents concerning the acquisition of the trade mark ‘VENUS’ by the opponent,
• Enclosure 5: excerpt of a report by Nielsen showing that ‘VENUS’ was among the leading cosmetics brands in Italy in 2008,
• Enclosure 5bis: statement of Ms Elisa Giraudi, legal representative of the opponent’s company, commenting on the good results of the ‘VENUS’ brand according to the IRI reports 2014-2015, accompanied by a letter from IRI to the opponent dated 2012,
• Enclosure 5ter: article from Wikipedia on the market research company IRI,
• Enclosure 6: presentation of Kelemata Group and its brands,
• Enclosure 7: presentation of the new ‘VENUS’ products 2015,
• Enclosure 8: an internal document with an overview of advertising costs and sales volumes concerning the trade mark ‘VENUS‘ in 2000-2007,
• Enclosure 9: an overview of advertising of the ‘VENUS‘ trade mark on various Italian TV channels in 2006,
• Enclosure 10: affidavit of Mr Alberto Aimi, legal representative and CEO of the opponent’s company, dated 10/06/2015, attesting to high advertising expenditures related to the trade mark ‘VENUS’ in 2009-2014,
• Enclosure 10bis: affidavit of Mr Corrado Vesino, accountant and external advisor of Keletama Group, dated 29/06/2015, attesting to high advertising expenditures for the ‘VENUS’ products between 2009 and 2014,
• Enclosure 11: affidavit of Mr Corrado Vesino, accountant and external advisor of Keletama Group, dated 26/05/2015, attesting to high sales figures for the ‘VENUS’ products between 2009 and 2014,
• Enclosure 12: list of clients distributing ‘VENUS’ products in Italy,
• Enclosure 12bis: affidavit of Mr Alberto Aimi dated 03/06/2015 relating to the list of clients,
• Enclosure 13: advertisements for various ‘VENUS’ products in Italian magazines from the years 2010-2014,
• Enclosure 14: information from Wikipedia and other websites about the magazines where the advertisements appeared and their circulation figures (being quite high),
• Enclosure 15: documents relating to the promotional spots for ‘VENUS’ products on various Italian television channels,
• Enclosure 16: information from Wikipedia about the television channels where these promotional spots were broadcasted,
• Enclosure 17: further documents relating to the promotional spots for ‘VENUS’ products,
• Enclosures 18-23: a number of invoices for the sale of high quantities of ‘VENUS’ products in Italy between 2009 and 2014,
• Enclosure 24: affidavit of Mr Alberto Aimi, legal representative and CEO of the opponent’s company, dated 10/06/2015, attesting that the abbreviation ‘VEN.’ appearing in the invoices refers to ‘VENUS’,
• Enclosure 25: documents concerning ‘VENUS’ prize competitions organized in 2014 and 2015,
• Enclosures 26-27: judgments of Italian courts confirming reputation of ‘VENUS’,
• Enclosure 28: website print-outs concerning on-line sales of ‘VENUS’ products,

Evidence of use submitted on 23/03/2016:

• Enclosures A-D: hundreds of invoices for the sale of high quantities of ‘VENUS’ products in Italy between 2011 and 2014,
• Enclosure E: marketing book concerning ‘VENUS’ products dated 2010,
• Enclosure F: marketing book concerning ‘VENUS’ products dated 2011,
• Enclosure G: marketing book concerning ‘VENUS’ products dated 2012,
• Enclosure H: another marketing book for the year 2011 with information about the ‘VENUS’ cosmetic products, the history of the brand and an overview of the  market shares held by ‘VENUS’ in Italy in 2009/2010 (the market shares being quite significant),
• Enclosure I: excerpt of a report by IRI for the year 2013 showing a strong position of ‘VENUS’ face and body creams,
• Enclosure L: excerpt of a report by IRI for the year 2014 showing a strong position of ‘VENUS’ face and body creams,
• Enclosure M: advertisements in the press for ‘VENUS‘ products from 2009-2014,
• Enclosure N: information from Wikipedia and other websites about the newspapers and magazines where the advertisements appeared and their circulation figures (being quite high),
• Enclosure O: excerpt of the ‘VENUS’ catalogue of toiletries,
• Enclosure P: promotional leaflet for various ‘VENUS’ products.

Evidence submitted on 29/03/2016:

• Enclosure Q: opposition decision of the French national office ‘VENUS ET MILO‘ vs ‘VENUS‘,
• Enclosure R: documents concerning advertising campaigns on television in 2011 and 2012,
• Enclosure S: article from Wikipedia about the Nielsen company.

As far as the affidavits are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, 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.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Many of the documents (e.g. the invoices, the affidavits, the list of clients or the advertisements) show that the place of use is Italy. This can be inferred from the language of the documents (Italian) and some addresses in Italy. Therefore, the evidence relates to the relevant territory.

Although a part of the evidence is either undated or relates to the time before the relevant period, there are still enough documents on file that are dated within the relevant period.

The documents filed, in particular the invoices, the affidavits, the advertisements or the excerpt from the reports by IRI, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used either as registered (i.e. as the word ‘VENUS’) or in a form which does not alter its distinctive character. In particular, the mark is often shown in the following form:

 

This use does not alter the distinctive character of the mark because the distinctiveness is fully concentrated in the word ‘Venus’ and the stylisation of the script and the oval background only play an ancillary decorative role.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory. In this context it can be mentioned that even the applicant admits that proof of use was established (although only for certain goods).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the Opposition Division considers that the evidence shows genuine use of the trade mark only for the following goods:

Class 3:        Soaps, perfumery, cosmetics, hair lotions.

There is evidence on file that the mark was used for a wide range of body-care products falling under the above-mentioned categories. However, no use has been proven for essential oils. As to cosmetics, the applicant argues that use has not been proven for cosmetics at large but only for certain specific goods falling within this category. The Opposition Division considers that since the opponent proved use of the mark for a range of various cosmetic products, use has been established for cosmetics at large. The applicant also argues that no use has been proven for perfumery. However, as correctly pointed out by the opponent, there is evidence of use of the mark for deodorants which is a type of perfumery. Consequently, there is proof of use for perfumery.

For the sake of clarity, the Opposition Division notes that use has been proven for soaps, perfumery, cosmetics, hair lotions that are for personal use (on people) and not for use on animals or for cleaning.

Therefore, the Opposition Division will consider in its further examination of the opposition only the following goods:

Class 3:        Soaps, perfumery, cosmetics, hair lotions; all for personal use.

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.

As already mentioned above, likelihood of confusion will now be assessed in relation to the opponent’s Italian trade mark registration No 1 093 821.

1. The goods

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

Class 3:        Soaps, perfumery, cosmetics, hair lotions; all for personal use.

The contested goods are the following:

Class 3:        Essential oils and aromatic extracts; Toiletries; Cleaning and fragrancing preparations; Animal grooming preparations; Abraders; Tailors' and cobblers' wax; Aromatics [essential oils]; Cake flavorings [essential oils]; Scented oils used to produce aromas when heated; Flavourings for beverages [essential oils]; Flavour enhancers for food [essential oils]; Almond oil; Badian essence; Bergamot oil; Pine oil; Geraniol; Distilled oils for beauty care; Emulsified essential oils; Natural oils for cleaning purposes; Essential oils; Essential oils for the care of the skin; Essential oils for use in air fresheners; Essential oils for personal use; Food flavoring, being essential oils; Essential oils for use foods; Ethereal essences; Jasmine oil; Cedarwood (Essential oils of -); Oils for the body [cosmetics]; Blended essential oils; Lavender oil; Food flavorings prepared from essential oils; Terpenes [essential oils]; Textile finishing oils; Safrol; Rose oil; Aromatherapy preparations; Non-medicated oils; Natural oils for cosmetic purposes; Mineral oils [cosmetic]; Peppermint crude oil; Mint essence [essential oil]; Tea-tree oil; Gaultheria oil; Oils for toilet purposes; Oils for perfumes and scents; Oils for cosmetic purposes; Skin care oils [non-medicated]; Lemon [Essential oils of -]; Household fragrances; Soap pads; Oils for cleaning purposes; Colorants for toilet purposes; Perfumes for ceramics; Cleaning preparations impregnated into pads; Cleaning agents for household purposes; Furniture cleaner; Perfumes for cardboard; Perfumery and fragrances; Body cleaning and beauty care preparations; Oral hygiene preparations; Abrasive preparations for use on the body; Perfumed lotions [toilet preparations]; Perfumed body lotions [toilet preparations]; Cuticle conditioners; Moist wipes impregnated with a cosmetic lotion; Massage gels other than for medical purposes; Sponges impregnated with toiletries; Impregnated cloths for cosmetic use; Cuticle removers; Cosmetics for personal use; Cosmetic kits; Cosmetic preparations for slimming purposes; Cosmetics; Cosmetic preparations for use as aids to slimming; Cosmetics in the form of oils; Cosmetic pads; Cuticle cream; Henna [cosmetic dye]; Henna powders; Tissues impregnated with cosmetic lotions; Tissues impregnated with cosmetics; Lacquer for cosmetic purposes; Adhesives for cosmetic purposes; Adhesives for affixing false hair; Greases for cosmetic purposes; Lint for cosmetic purposes; Massage creams, not medicated; Massage oils; Massage oils, not medicated; Ointments for cosmetic use; Non-medicated cosmetics; Non-medicated toiletries; Cotton wool for cosmetic purposes; Cotton sticks for cosmetic purposes; Cotton balls for cosmetic purposes; Pumice stone; Pumice stones for use on the body; Emery boards; Cleaner for cosmetic brushes; Pedicure preparations; Aloe vera preparations for cosmetic purposes; Baby care products (Non-medicated -); Slimming aids [cosmetic], other than for medical use; Mineral water sprays for cosmetic purposes; Scalp treatments (Non-medicated -); Make-up pads of cotton wool; Paper hand towels impregnated with cosmetics; Fragrances for personal use; Aromatics for perfumes; Aromatics for fragrances; Scented body spray; Perfume water; Perfumed toilet waters; Perfumed tissues; Perfumed powder; Cologne impregnated disposable wipes; Extracts of perfumes; Natural oils for perfumes; Ionone [perfumery]; Amber [perfume]; Lavender water; Mint for perfumery; Peppermint oil [perfumery]; Musk [perfumery]; Eau de Cologne; Fragrance preparations; Perfumery; Solid perfumes; Flower perfumes (Bases for -); Fumigation preparations [perfumes]; Rose oil for cosmetic purposes; Synthetic perfumery.

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Patio torches; Combustible waxes; Nightlights [candles]; Christmas lights [candles]; Candle assemblies; Tallow candles; Floating candles; Wicks for lighting; Lamp wicks; Wicks; Christmas tree decorations for illumination [candles]; Tapers for lighting; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Candles for use in the decoration of cakes; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles; Beeswax for use in the manufacture of candles.

Class 21:        Cosmetic and toilet utensils and bathroom articles; Brushes and brush-making articles; Dental cleaning articles; Eye make-up applicators; Applicators for applying eye make-up; Applicator sticks for applying makeup; Baby baths, portable; Baby bath tubs; Hair for brushes; Combs; Comb (electric); Hair combs; Combs for the hair (Large-toothed -); Eyelash combs; Sponges; Bath sponges; Abrasive sponges for scrubbing the skin; Sponges for applying body powder; Body sponges; Facial sponges for applying make-up; Deodorising apparatus for personal use; Hand towel dispensers; Dispensers for the storage of toilet paper [other than fixed]; Dispensers for liquids for use with bottles; Dispensers for paper towels; Cotton ball dispensers; Soap dispensers; Perfume bottles.

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 3

The contested toiletries, distilled oils for beauty care, essential oils for the care of the skin, oils for the body [cosmetics], non-medicated oils, natural oils for cosmetic purposes, mineral oils [cosmetic], oils for toilet purposes, oils for cosmetic purposes, skin care oils [non-medicated], colorants for toilet purposes, body cleaning and beauty care preparations,  abrasive preparations for use on the body, perfumed lotions [toilet preparations], perfumed body lotions [toilet preparations], cuticle conditioners, moist wipes impregnated with a cosmetic lotion, sponges impregnated with toiletries, impregnated cloths for cosmetic use, cuticle removers, cosmetics for personal use, cosmetic kits, cosmetic preparations for slimming purposes, cosmetics, cosmetic preparations for use as aids to slimming, cosmetics in the form of oils, cosmetic pads, cuticle cream,  henna [cosmetic dye], henna powders, tissues impregnated with cosmetic lotions, tissues impregnated with cosmetics, lacquer for cosmetic purposes, adhesives for cosmetic purposes, greases for cosmetic purposes, lint for cosmetic purposes, ointments for cosmetic use, non-medicated cosmetics, non-medicated toiletries, cotton wool for cosmetic purposes, cotton sticks for cosmetic purposes, cotton balls for cosmetic purposes, pedicure preparations, aloe vera preparations for cosmetic purposes, baby care products (non-medicated -), slimming aids [cosmetic], other than for medical use, mineral water sprays for cosmetic purposes, scalp treatments (non-medicated -), make-up pads of cotton wool, paper hand towels impregnated with cosmetics, rose oil for cosmetic purposes  are identical to the opponent’s cosmetics; all for personal use, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested fragrancing preparations, perfumery and fragrances, fragrances for personal use, scented body spray, perfume water, perfumed toilet waters, perfumed tissues, perfumed powder, cologne impregnated disposable wipes, amber [perfume], lavender water, eau de Cologne, fragrance preparations, perfumery, solid perfumes, synthetic perfumery are identical to the opponent’s perfumery; all for personal use, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested essential oils and aromatic extracts, aromatics [essential oils], scented oils used to produce aromas when heated, almond oil, badian essence, bergamot oil, pine oil, geraniol, emulsified essential oils, essential oils, essential oils for use in air fresheners, essential oils for personal use, ethereal essences, jasmine oil, cedarwood (essential oils of -), blended essential oils, lavender oil, terpenes [essential oils], safrol, rose oil, aromatherapy preparations, peppermint crude oil, mint essence [essential oil], tea-tree oil, gaultheria oil, oils for perfumes and scents, lemon [essential oils of -], aromatics for perfumes, aromatics for fragrances, extracts of perfumes, natural oils for perfumes, ionone [perfumery], mint for perfumery, peppermint oil [perfumery], musk [perfumery], flower perfumes (bases for -) are similar to a high degree to the opponent’s perfumery; all for personal use as they have the same purpose and nature. They can coincide in producer, relevant consumer and distribution channels.

The contested massage gels other than for medical purposes, massage creams, not medicated, massage oils, massage oils, not medicated are similar to the opponent’s cosmetics; all for personal use. This is because they have a similar nature, purpose and method of use, namely creams or oils used for body-care that are applied on the skin. They can also coincide in the relevant public and distribution channels.

The contested adhesives for affixing false hair are similar to the opponent’s cosmetics; all for personal use. They can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.

The contested pumice stone, pumice stones for use on the body, emery boards are used for body-care. They are similar to the opponent’s cosmetics; all for personal use as they coincide in purpose of use, relevant consumer and distribution channels. Furthermore they are complementary.

The contested oral hygiene preparations are similar to a low degree to the opponent’s cosmetics; all for personal use as they can coincide in relevant consumer and distribution channels.

The contested cleaner for cosmetic brushes is similar to a low degree to the opponent’s cosmetics; all for personal use. These goods coincide in relevant consumer and distribution channels.

The contested cleaning … preparations, abraders, natural oils for cleaning purposes, textile finishing oils, soap pads, oils for cleaning purposes, cleaning preparations impregnated into pads, cleaning agents for household purposes, furniture cleaner are goods used for cleaning objects or surfaces in the household or for the treatment of materials. They are considered similar to a low degree to the opponent’s soaps; all for personal use as they can coincide in the relevant consumer, producer and distribution channels.

For the same reasons, the contested household fragrances, perfumes for ceramics, perfumes for cardboard, fumigation preparations [perfumes] (i.e. goods applied to objects or for use in the household) are considered similar to a low degree to the opponent’s soaps; all for personal use.

The contested animal grooming preparations are similar to a low degree to the opponent’s soaps, cosmetics; all for personal use. Although there is a difference between the goods in that the former are for use on animals whereas the latter are for use on people, the goods have in fact the same nature (e.g. creams or gels), purpose (beautifying) and method of use.

The contested tailors' and cobblers' wax are very specific products used by tailors and shoemakers in their profession. They are absolutely dissimilar to all the opponent’s goods. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

The contested cake flavorings [essential oils], flavourings for beverages [essential oils], flavour enhancers for food [essential oils], food flavoring, being essential oils, essential oils for use foods, food flavorings prepared from essential oils are flavourings for foods and beverages used mostly in the manufacturing processes in the food and beverage industry. These goods are dissimilar to all the opponent’s goods. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

Contested goods in Class 4

The contested aromatherapy fragrance candles, perfumed candles, patio torches, combustible waxes, nightlights [candles], Christmas lights [candles], candle assemblies, tallow candles, floating candles, wicks for lighting, lamp wicks, wicks, Christmas tree decorations for illumination [candles], tapers for lighting, candles containing insect repellent, musk scented candles, fruit candles, candles for use as nightlights, candles for use in the decoration of cakes, special occasion candles, table candles, candles for absorbing smoke, candles in tins, candles, beeswax for use in the manufacture of candles are various types of candles and other products or materials used for illuminating. They are dissimilar to all the opponent’s goods which are, in essence, body-care products. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

The opponent argues that the purpose of the goods compared is the well-being of the consumer which means that their purpose of use is identical or highly similar. In addition the goods are complementary. The opponent also submits evidence showing that there are several companies that produce both cosmetics and perfumed candles.

The Opposition Division cannot agree with the opponent’s claim that the goods are similar. The purpose of use of the goods does not coincide because the purpose of use of the opponent’s goods in Class 3 is body-care whereas the purpose of use of the contested goods is illuminating, decorating or, as the case may be, illuminating and scenting the air. The goods are not complementary because they are neither indispensable nor important for the use of each other. The fact that there exist several companies that produce both cosmetics and perfumed candles is rather an exception than a rule because the manufacturing of cosmetics on the one hand and perfumed candles on the other requires different knowledge and skills.

Contested goods in Class 21

The contested cosmetic and toilet utensils and bathroom articles, eye make-up applicators, applicators for applying eye make-up, applicator sticks for applying makeup, combs, comb (electric), hair combs, combs for the hair (large-toothed -), eyelash combs, sponges, bath sponges, abrasive sponges for scrubbing the skin, sponges for applying body powder, body sponges, facial sponges for applying make-up are similar to a high degree to the opponent’s cosmetics; all for personal use as they can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.

The contested dental cleaning articles are similar to a low degree to the opponent’s cosmetics; all for personal use as they can coincide in relevant consumer and distribution channels.

The contested brushes and brush-making articles are similar to a low degree to the opponent’s cosmetics; all for personal use as they can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.

By the same token, the contested hair for brushes (that are a type of brush-making articles) are considered similar to a low degree to the opponent’s cosmetics; all for personal use.

The contested deodorising apparatus for personal use, perfume bottles are similar to a low degree to the opponent’s perfumery; all for personal use as they can coincide in relevant consumer and distribution channels. Furthermore they are complementary.

The contested soap dispensers are similar to a low degree to the opponent’s soaps; all for personal use as they can coincide in the relevant consumer and distribution channels. Furthermore they are complementary.

The contested hand towel dispensers, dispensers for the storage of toilet paper [other than fixed], dispensers for liquids for use with bottles, dispensers for paper towels, cotton ball dispensers are similar to a low degree to the opponent’s cosmetics; all for personal use. They can coincide in the relevant consumer and distribution channels. Furthermore, some of them can be complementary.

The contested baby baths, portable and baby bath tubs are highly specific products that are dissimilar to all the opponent’s goods in Class 3 (in essence, body-care products). They have a different nature, purpose and method of use. They are neither in competition nor clearly complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

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 found to be identical and similar to various degrees are directed essentially at the public at large. Only some of those goods, namely brush-making articles and hair for brushes in Class 21 are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

venus
Earlier trade mark	Contested sign

The relevant territory is Italy.

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

The element ‘venus’ of which the earlier mark consists will be understood by the relevant public as the name of the Roman goddess of love and beauty. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

As far as the contested sign is concerned, the element ‘Venus’ will be understood the same way (name of the Roman goddess ‘Venus’) and the element ‘Aphrodite’ will be understood as the name of the Greek goddess of love and beauty. As these words are not descriptive, allusive or otherwise weak for the relevant goods, they are both distinctive.

The line in the middle of the contested sign is the most basic geometrical element having only a decorative function. It is, therefore, non-distinctive.

There is no element in the contested sign that would be clearly dominant (visually eye-cathing).

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 and from top to bottom, which makes the part placed at the left or the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the element ‘Venus’. However, they differ in the additional element ‘Aphrodite’ and the non-distinctive line of the contested sign. They also differ in the stylisation of script in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VENUS’, present identically in both signs. The pronunciation differs in the sound of the letters ‛APHRODITE’ of the contested mark, which have no counterparts in the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

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 mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods have been found partially identical, partially similar to a high degree, partially similar, partially similar to a low degree and partially dissimilar. The earlier trade mark’s degree of distinctiveness per se is average and the degree of attention of the public will be average.

The marks show an average degree of visual, aural and conceptual similarity. The entire earlier trade mark ‘venus‘ is incorporated in the contested sign (in a stylised script) where it plays the role of a separate distinctive element. In addition, the identical element ‘venus‘ is placed in the prominent position at the top of the mark and will thus be perceived first. On the whole, the overall impressions created by the marks are similar.

 

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 Italian trade mark registration No 1 093 821.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

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

The applicant argues that the names of the Roman and Greek goddesses of love and beauty ‘VENUS’ and ‘APHRODITE’ cannot be monopolized in relation to beauty-care products (cosmetics). The Opposition Division considers that although the words ‘VENUS’ and ‘APHRODITE’ are in a way related to the notion of beauty, there is no clear and direct connection between these words and the relevant goods that would make these words non-distinctive or weak. These two words are primarily the names of mythological characters. Consequently, the words ‘VENUS’ and ‘APHRODITE’ (or ‘VENUS’ alone) are normally distinctive and the applicant’s argument must be set aside.  

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to the goods that are identical and similar (to various degrees). The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

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

• Italian trade mark registration No 145 868 ‘VENUS’,
• Italian trade mark registration No 740 139 .

The earlier Italian trade mark registration No 145 868 is identical to the one which has been compared (as it is a word mark) and the earlier Italian trade mark registration No 740 139 is less similar to the contested mark because it contains a further figurative element, namely the stylised letter ‘V’, which is not present in the contested trade mark. Moreover, the two marks cover the same scope of goods on which the opposition is based and the proof of use submitted in this case cannot prove a wider scope of use for these trade marks than for the earlier Italian trade mark No 1 093 821. Consequently, the outcome cannot be different with respect to goods for which the opposition has already been rejected (even if the claimed enhanced distinctiveness were taken into account). Therefore, no likelihood of confusion exists with respect to those goods.

The assessment of the opposition will now continue on the ground of Article 8(5) EUTMR and on the basis of the opponent’s Italian trade mark registration No 1 093 821 in relation to the dissimilar goods.

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 shall 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 mark

According to the opponent, the earlier trade mark has a reputation in Italy.

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 14/08/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions.

In this connection, the Opposition Division recalls that genuine use of the earlier Italian trade mark registration No 1 093 821 was established only in relation to the following goods:

Class 3:        Soaps, perfumery, cosmetics, hair lotions; all for personal use.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 09/07/2015 the opponent submitted evidence to prove reputation. This evidence has already been summarised above on pages 4-5 (Enclosures 1-28). (The evidence submitted by the opponent on 23/03/2016 and 29/03/2016 (Enclosures A-S) cannot be taken into account as evidence of reputation because these documents were submitted after the expiry of the substantiation period ending on 10/07/2015 (Rule 19(2)(c) and 19(4) EUTMIR)).

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The sales figures and marketing efforts suggest that the trade mark has a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence of reputation proves that the mark was sufficiently known by the public only in relation to cosmetics; all for personal use.

Although genuine use has been established also for other goods (soaps, perfumery,

hair lotions; all for personal use), the evidence submitted by the opponent is not sufficient to prove reputation for these goods. This is because there is not enough conclusive evidence on the degree of knowledge of the mark for these particular goods. Such evidence however has been filed in relation to cosmetics.

The applicant argues that reputation was not proven and criticises the individual pieces of evidence. The Opposition Division considers that although the opponent could have filed a more convincing set of evidence, it transpires from the evidence as a whole that the mark was widely used and advertised throughout Italy and that it was known by the public in relation to cosmetics. Consequently, the documents on file taken in connection with each other are sufficient to prove reputation for the above-mentioned goods.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

In the present case, the marks are similar to an average degree. The strength of the earlier trade mark’s reputation is average and the degree of the earlier mark’s distinctive character is average as well. Nevertheless, it should be mentioned that the word ‘venus’ of which the earlier reputed mark consists is an existing name of a relatively known mythological goddess which means that it is not a unique coined term.

In these circumstances, whether a mental link will be established will depend on the nature of the contested goods concerned and how close or distant from the reputed goods these contested goods are.

The earlier mark is reputed for cosmetics; all for personal use in Class 3.

The contested goods are the following:

Class 3:        Tailors' and cobblers' wax, cake flavorings [essential oils], flavourings for beverages [essential oils], flavour enhancers for food [essential oils], food flavoring, being essential oils, essential oils for use foods, food flavorings prepared from essential oils.

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Patio torches; Combustible waxes; Nightlights [candles]; Christmas lights [candles]; Candle assemblies; Tallow candles; Floating candles; Wicks for lighting; Lamp wicks; Wicks; Christmas tree decorations for illumination [candles]; Tapers for lighting; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Candles for use in the decoration of cakes; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles; Beeswax for use in the manufacture of candles.

Class 21:        Baby baths, portable; Baby bath tubs.

Contested goods in Class 3

The contested tailors' and cobblers' wax are very specific products used by tailors and shoemakers in their profession. On the other hand, the opponent’s cosmetics; all for personal use are common consumer products bought and used by the general public. These goods are considered to be so much removed from each other that the public will not establish a mental link between the marks for these particular goods.

The same reasoning applies to the contested cake flavorings [essential oils], flavourings for beverages [essential oils], flavour enhancers for food [essential oils], food flavoring, being essential oils, essential oils for use foods, food flavorings prepared from essential oils which are flavourings for foods and beverages used mostly in the manufacturing processes in the food and beverage industry. These goods are considered to be so much removed from the opponent’s cosmetics; all for personal use that the public will not establish a link between the marks for these particular goods.

Contested goods in Class 4

A part of the contested goods in this class are various types of candles that are (or potentially can be) used for personal well-being, namely aromatherapy fragrance candles, perfumed candles, nightlights [candles], candle assemblies, tallow candles, floating candles, candles containing insect repellent, musk scented candles, fruit candles, candles for use as nightlights, special occasion candles, table candles, candles for absorbing smoke, candles in tins, candles. As the opponent’s reputed cosmetics; all for personal use are used for personal well-being as well, it is considered that there is a link between these goods.

The remaining part of the contested goods in this class, namely patio torches, combustible waxes, Christmas lights [candles], wicks for lighting, lamp wicks, wicks, Christmas tree decorations for illumination [candles], tapers for lighting, candles for use in the decoration of cakes, beeswax for use in the manufacture of candles are more removed from the opponent’s cosmetics; all for personal use because they are not used for personal well-being. Bearing in mind the nature of these contested goods and the nature of the opponent’s cosmetics; all for personal use, and having regard to the findings in the comparison of goods above, it is considered that these goods are sufficiently removed from each other so that the public will not establish a mental link between the marks for these particular goods.

Contested goods in Class 21

The contested baby baths, portable and baby bath tubs are relatively large objects, namely containers or receptacles made of e.g. plastic or metal, that are used for bathing babies.  Bearing in mind the nature of these contested goods and the nature of the opponent’s cosmetics; all for personal use, and having regard to the findings in the comparison of goods above, it is considered that these goods are sufficiently removed from each other so that the public will not readily establish a mental link between the marks for these particular goods.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs, but only in relation to the following contested goods:

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Nightlights [candles]; Candle assemblies; Tallow candles; Floating candles; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles.

Such a mental link will not be established for the following contested goods: 

Class 3:        Tailors' and cobblers' wax, cake flavorings [essential oils], flavourings for beverages [essential oils], flavour enhancers for food [essential oils], food flavoring, being essential oils, essential oils for use foods, food flavorings prepared from essential oils.

Class 4:        Patio torches; Combustible waxes; Christmas lights [candles]; Wicks for lighting; Lamp wicks; Wicks; Christmas tree decorations for illumination [candles]; Tapers for lighting; Candles for use in the decoration of cakes; Beeswax for use in the manufacture of candles.

Class 21:        Baby baths, portable; Baby bath tubs.

Consequently, for these goods the opposition based on Article 8(5) EUTMR and on the earlier Italian trade mark registration No 1 093 821 must fail.

The opponent has also based its opposition under Article 8(5) EUTMR on the following earlier trade marks:

• Italian trade mark registration No 145 868 ‘VENUS’,
• Italian trade mark registration No 740 139 .

The earlier Italian trade mark registration No 145 868 is identical to the one which has been compared and the earlier Italian trade mark registration No 740 139 is less similar to the contested mark because it contains a further figurative element, namely the stylised letter ‘V’, which is not present in the contested trade mark. Moreover, the two marks cover the same scope of goods on which the opposition is based and the proof of use and proof of reputation submitted in this case cannot prove a wider scope of use and reputation for these trade marks than for the earlier Italian trade mark No 1 093 821. Consequently, the outcome cannot be different with respect to goods for which the opposition under Article 8(5) has already been rejected. Therefore, the opposition on the ground of Article 8(5) and on the basis of the two remaining earlier trade marks must be rejected for those goods.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

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

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

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

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

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

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

The opponent claims the following:

The opponent claims that the contested sign would unfairly benefit from the attractiveness of the earlier trade mark built up by the opponent through massive use and advertising. Furthermore, the use of the contested sign would detrimentally affect the distinctiveness of the earlier trade mark since it would diminish the capacity of the earlier trade mark for stimulating the desire of the public to buy ‘Venus’ cosmetics since the trade mark would no longer be exclusive.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the remaining contested goods that need to be examined (i.e. those for which a link has been established) are the following:

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Nightlights [candles]; Candle assemblies; Tallow candles; Floating candles; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles.

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

Class 3:                Cosmetics; all for personal use

Unfair advantage (free-riding)

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

As mentioned above, the opponent claims that the contested sign would unfairly benefit from the attractiveness of the earlier trade mark built up by the opponent through massive use and advertising.

According to the Court of Justice of the European Union

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

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

The contested aromatherapy fragrance candles, perfumed candles, nightlights [candles], candle assemblies, tallow candles, floating candles, candles containing insect repellent, musk scented candles, fruit candles, candles for use as nightlights, special occasion candles, table candles, candles for absorbing smoke, candles in tins, candles in Class 4 are, or potentially can be, products for personal well-being, the same as the opponent’s cosmetics; all for personal use. They are also directed at the general public.

Due to this particular link between the goods, the contested mark would benefit from the power of attraction and reputation of the earlier mark for its own goods, which would attract the consumers’ attention thanks to the association with the earlier reputed trade mark, thereby gaining a commercial advantage over its competitors’ goods.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark for the goods mentioned above.

Other types of injury

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

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

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR and on the basis of the earlier Italian trade mark registration No 1 093 821 insofar as it is directed against the following goods:

Class 4:        Aromatherapy fragrance candles; Perfumed candles; Nightlights [candles]; Candle assemblies; Tallow candles; Floating candles; Candles containing insect repellent; Musk scented candles; Fruit candles; Candles for use as nightlights; Special occasion candles; Table candles; Candles for absorbing smoke; Candles in tins; Candles.

Since the opposition under Article 8(5) EUTMR is successful for the above goods on the basis of the earlier Italian trade mark registration No 1 093 821, there is no need to assess the opposition under Article 8(5) EUTMR for these goods on the basis of the remaining two earlier Italian trade marks.

The opposition under Article 8(5) EUTMR is not successful insofar as the remaining goods examined under Article 8(5) EUTMR are concerned.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Alexandra APOSTOLAKIS

Vít MAHELKA

Lucinda CARNEY

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.