Heritage brands in the perfume and cosmetics industries often have histories spanning many years, and have become synonymous with luxury, sophistication, and quality. But where the height of a brand's reputation is perhaps more 'in the past', what is the impact in opposition or invalidity proceedings? In an important decision, the EU General Court has reiterated that, just as a mark's reputation can be acquired progressively over time, so it can also diminish gradually over the years. In this case, the earlier mark, for the famous perfume 'Joy', retained a 'surviving reputation' as at the date of the application being opposed (JOYFUL BY NATURE, filed in 2019). Accordingly, the JOY mark could be relied upon successfully in an opposition.
Background
The applicant (German company Kneipp GmbH) filed an application in 2019 for an EUTM for JOYFUL BY NATURE in relation to various goods and services including cosmetics, beauty products and fragrances, and services relating to beauty care. Jean Patou opposed the application relying on its earlier EUTM for JOY which was registered for various beauty and cosmetic products and fragrances. Jean Patou's 'Joy' perfume was launched in France in 1930 (the 'most expensive perfume in the world') and was voted 'Scent of the Century' at the Fragrance Foundation FiFi Awards in 2020. It is no longer in production following recent acquisitions.
Jean Patou's opposition to the JOYFUL BY NATURE application was successful before the Opposition Division. Kneipp was then partially successful in an appeal before the Board of Appeal, and it appealed further in relation to the remaining goods and services to the EU General Court. This appeal was unsuccessful.
Jean Patou's opposition was based on Article 8(5) of the EU TM Regulation which requires the earlier mark to have a reputation; the marks to be similar; there to be a link between the marks; and, in this case, the argument was that the sign applied for took unfair advantage of the distinctive character or repute of the JOY mark and there was no due cause.
Did the JOY mark have a reputation?
A key issue before the Court was the assessment of the reputation of the JOY mark as at the date of Kneipp's application in 2019. Kneipp argued that market share was of prime importance and the JOY perfume had only been sold by selected luxury and prominent retailers. It further argued that the low sales figures did not prove that the JOY mark was known to a significant part of the relevant public in France, particularly since its low turnover had steadily decreased further since 2016.
The General Court reiterated that market share was just one factor to be taken into account when assessing reputation. Other factors would be the intensity, geographical extent and duration of use, and the size of investment by the owner of the earlier mark. All these factors should be considered as part of an overall assessment. There was no requirement that the mark be known by a given percentage nor that its reputation covered all of the territory concerned, so long as it existed in a substantial part of that territory.
The Court found that the documents relied upon by Jean Patou, as well as the prestigious awards won by the perfume Joy, confirmed that the JOY mark was widely known by the general public, in relation to the goods which it designated, in a substantial part of the territory of the European Union as at 2019. This was the case even though the awards dated back several years and the sales figures had fallen between 2013 and 2018. The JOY mark enjoyed a high degree of reputation in the past, which, even if it may have diminished over the years, still survived in 2019 as a ‘surviving’ reputation.
Kneipp argued that a significant part of the relevant public did not visit luxury retail outlets but the Court also rejected this argument – the relevant public could acquire knowledge of a mark in several ways, and even general consumers who could not afford luxury branded goods would be exposed to them and familiar with them.
Similarity of signs, link and unfair advantage
The Court went on to find that the signs were visually and phonetically similar and conceptually similar to a certain degree. The JOY mark was also found to have distinctive character, necessarily given the finding it had a reputation. The Board of Appeal was, the Court concluded, right to decide that the relevant public was likely to establish a link between the marks, and that the use of the sign would take unfair advantage without due cause.
Comments
The Court's decision confirms that, just as the reputation of a trade mark is, in general, acquired progressively, the loss of such a reputation also typically happens gradually. Reputation cannot usually be simply switched on or off.
The Jean Patou website proclaims: "Perfumes can keep a name alive. "Joy" has remained a reference fragrance, one of the great commercial successes of the perfume industry". The General Court's decision truly highlights the continuing value of heritage brands.