Background
In 2019, German manufacturer Kneipp GmbH (Kneipp) applied for an EU trademark, "JOYFUL BY NATURE," intending to cover various goods and services, including cosmetics, scented candles and marketing services.
In 2020, French luxury fashion house Maison Jean Patou (Patou) filed an opposition before the EUIPO based on earlier rights, including its EUTM for the word mark "JOY," associated with a perfume marketed since 1931. The opposition was based on Article 8(1)(b) and (5) of Regulation (EU) 2017/1001 (EUTMR) concerning similarity, likelihood of confusion and potential unfair advantage or detriment to the earlier trademark's reputation.
In 2022, the Opposition Division upheld the opposition under Article 8(5) due to the reputation of Patou's JOY trademark. Kneipp appealed to the Board of Appeal, which partially annulled the decision, upholding the opposition only for marketing services in class 35. The Board found that the conditions for Article 8(5) were met, considering Patou's evidence of strong reputation, similarity of marks and potential unfair advantage. Kneipp then appealed to the EU General Court.
The decision
Kneipp's action is based on Article 8(5) of Regulation 2017/1001, raising four key complaints: the reputation of the trademark "JOY", similarity between the trademarks, their linkage and the absence of unfair advantage or detriment.
The main issue concerns the evidence required to establish a reputation.
Kneipp argues that Patou's evidence doesn't prove the reputation of the "Joy" trademark in France. Market share is highlighted as crucial by Kneipp, who asserts that "Joy" is exclusively distributed by high-end and renowned retailers, frequented by only a fraction of the relevant public, implying its reputation can't be assumed based solely on its history, which much of the relevant public is oblivious to. Additionally, Kneipp disputes the significance of low sales figures, suggesting they don't indicate widespread recognition of the mark in France, especially considering its declining turnover between 2016 and 2018.
The Court emphasizes that establishing a trademark reputation requires recognition by a significant portion of the relevant public for the goods or services it represents. However, there's no specific percentage requirement for public awareness or territorial coverage as long as the reputation exists substantially across the territory.
An overall assessment of evidence is necessary, with an accumulation of items potentially establishing the required facts, even if individually insufficient. Reputation should be established as of the trademark application filing date, but post-filing documents can be relevant if they shed light on the earlier situation. In this case, Patou's "Joy" trademark reputation had to be established as of November 29, 2019. Despite some awards dating back years and declining sales figures, "Joy" maintained its reputation at the 2019 application filing.
The Court found Kneipp's argument suggesting public unawareness of "Joy's" historical achievements unfounded, as various means can disseminate reputation information. The evidentiary value of pre- and post-filing documents varies, but in this case the Court agrees with the Board of Appeal's consideration of evidence spanning several years as reputation evolves gradually.
As the Board of Appeal stated, "The loss of reputation rarely happens as a single occurrence but is rather a continuing process over a long period of time, as the reputation is usually built up over a period of years and cannot simply be switched on and off [...] in addition, such drastic loss of reputation for a short period of time would be up to the applicant to prove".
Without evidence of sudden reputation loss the Board was justified in concluding that "Joy" maintained its reputation as of November 29, 2019.
The Court decision in case T-157/23—Patou is important for trademark law practitioners due to its insights into establishing a trademark reputation. Its understanding of market dynamics highlights that market share is not the sole determinant of a mark's reputation. Famous or iconic trademarks that may have experienced a decline in sales due to market conditions beyond control may still hold a reputation, potentially impacting later applications.
