In November 2019, a German cosmetics company called Kneipp filed an EUTM application to register the word mark 'JOYFUL BY NATURE'. In July 2020, Maison Jean Patou, a French luxury goods company (covering fashion and fragrances mainly), opposed Kneipp’s application based on their earlier EUTM for 'JOY'. The opposition was directed at certain goods and services covered by the EUTM application, including cosmetics, perfumed candles and marketing services.

The opposition was based on a likelihood of confusion with the earlier 'JOY' mark under Article 8(1)(b) and a reputation in the earlier 'JOY' mark under Article 8(5) EUTMR. For context, the earlier 'JOY' mark was used in relation to fragrances, mainly in France.

The EUIPO Opposition Division assessed the reputation claim under Article 8(5) first and based their conclusions on that ground. They did not go on to consider the likelihood of confusion claim under Article 8(1)(b).

The Opponent filed evidence in order to show that the earlier 'JOY' mark had a reputation at the relevant date (November 2019). They filed evidence dated between 2013 and 2017, including awards, accolades, social media posts, press cuttings and invoices for marketing campaigns. Several articles described the Opponent’s 'JOY' fragrance as the ‘second best-selling perfume of all time’ and ‘one of the most popular and successful fragrances in the world’.

The Opponent also submitted documents from as early as the late 1990s, which went towards the historical significance of the earlier 'JOY' mark. The Opposition Division found in favour of the Opponent, finding that the earlier 'JOY' mark had a strong reputation in France, which constituted a significant part of the EU, and that consumers would make the necessary link between the marks 'JOY' and 'JOYFUL BY NATURE' given the inclusion of ‘JOY’ in both marks.

Kneipp appealed and the Board of Appeal partially annulled the decision in respect of the class 35 services, primarily related to marketing and advertising, but dismissed the appeal in respect of the other contested goods and services on the basis of the strong reputation of the earlier 'JOY' mark.  

Kneipp then appealed to the General Court, claiming that the earlier courts had erred in the assessment of the evidence of reputation, the assessment of the similarity of the marks at issue, in the existence of a link between the marks and in the failure to take into account due cause for the use of the 'JOYFUL BY NATURE' mark.

The General Court dismissed the action in full. The General Court, in its judgement, proceeded to consider the cumulative conditions under Article 8(5) in turn and issue some helpful guidance and reminders especially in relation to establishing a reputation of a mark.

In respect of whether the earlier 'JOY' mark has a reputation, the Appellant argued that the evidence filed by the Opponent was not sufficient to establish a reputation in France, because the evidence did not show a significant market share at the relevant date (the filing date of the Application), and market share is a critical factor in establishing reputation. Secondly, the JOY fragrance had only generated a low turnover in 2016, 2017 and 2018, which had steadily decreased.

The General Court reiterated that in order establish a reputation, a mark must be known to a significant part of the relevant public, but there is no prescribed percentage.  It noted that whilst all the relevant facts of the case must be taken into consideration, including market share, promotional investment, intensity, geographical extent and duration of use, it is not necessary for the evidence to relate to all of these elements.  An overall assessment of the evidence must be carried out, and this may lead to a finding of reputation even if each individual item of evidence is insufficient alone.  

The General Court held that the evidence was sufficient to establish a reputation, even though the awards dated back several years, and the sales figures had fallen between 2013 and 2018. It found that the earlier 'JOY' mark enjoyed a high degree of reputation in the past, and even if this had diminished, it still survived at the relevant date.  It referred to EU case law confirming that a ‘historical’ mark may retain a certain ‘surviving’ reputation, even where the mark is no longer used.  It confirmed the Board of Appeal’s finding that reputation is lost gradually and cannot simply be switched on and off, and that it would be for the Appellant to prove any drastic loss in reputation.  The General Court also confirmed that evidence that postdated the filing date of the Application may still be taken into account where it casts light on what the situation was at the relevant date.

The General Court’s decision highlights the fact that the collation of evidence and its subsequent maintenance is an ongoing exercise for brands whose marks enjoy a reputation. Further, historical brands may still benefit from a surviving reputation, even if sales have diminished or the mark is no longer used. It is for the other party to prove that the reputation has diminished to the extent it is no longer sufficient to support a claim under Article 8(5).

Finally, the finding that the marks 'JOY' and 'JOYFUL BY NATURE' are sufficiently similar to create a link in the mind of the consumer is perhaps surprising and serves as a reminder that in order to successfully show link, the level of similarity between the marks does not have to be such that it would lead to a likelihood of confusion. It would be interesting to know whether the marks would have been found confusingly similar had this ground been considered.