The missing link
David Birchall considers the rejection of a reputation-based opposition. B 3 145 895, The Procter & Gamble Company v Giovanna Depalma, EUIPO, 12th August 2022.
Key points
- The fact that services such as “advertising” and “business management of retail outlets” might potentially relate to the opponent’s goods does not make such services similar to the opponent’s goods
- Similarity of goods and services is a sine qua non for there to be likelihood of confusion
- For an Article 8(5) claim to succeed it is necessary to demonstrate that the relevant public will establish a link or association between the signs
Procter and Gamble (P&G) opposed an application to register the stylised form of Allways as an EU trade mark (EUTM) for goods in classes 3 and 5 and the following class 35 services:
“Business management; Advertising; Business management of wholesale outlets; Business management of retail outlets; Business management of wholesale and retail outlets”.
The opposition was filed under Articles 8(1)(b) and 8(5) of Regulation (EU) 2017/1001 (EUTMR), based on several of P&G’s earlier EUTM registrations.
The EUIPO limited its examination to just one of the earlier registrations relied upon, P&G’s EUTM registration No. 4076311 covering goods in classes 3, 5 and 16, since it conferred the broadest protection.
P&G claimed reputation for its mark for the following goods:
- Class 3: Soaps, perfumery, cosmetics, wipes pre‑impregnated with personal cleansing and/or cosmetic preparations.
EUTM registration no. 4076311 - Class 5: Sanitary preparations, including feminine hygiene products (such as panty liners, sanitary napkins and tampons, sanitary briefs, interlabial pads for feminine hygiene), wipes pre‑impregnated with medical lotions, incontinence diapers, napkins and incontinence pants.
- Class 16: Paper and goods made from this material not included in other classes; paper products for sanitary use such as napkins, handkerchiefs.
Assessment of similarity
On the basis that the only differences were the addition of an L in the opposed mark and figurative elements of a purely decorative or non‑distinctive nature, the EUIPO Opposition Division (OD) found the marks to be visually similar to a high degree.
The OD found the marks to be conceptually identical and, on the basis that the second L in the opposed mark would not affect pronunciation, aurally identical.
Interestingly, the OD found the marks to have “no straightforward meaning in relation to the goods in question” and that the earlier mark had a normal degree of inherent distinctiveness.
This is a marked contrast to the view taken by the UK trade mark authorities back in the 1980s, when they refused P&G’s application to register its ALWAYS mark on the basis that it was “a word which has very descriptive connotations” and “a term which is likely to be required by other traders in the legitimate course of trade in the goods for which registration is sought for the purpose of describing or drawing attention to their goods”.
Finding the opposed class 3 and 5 goods similar to those protected by P&G’s registration, the OD upheld the opposition against the class 3 and 5 elements under Article 8(1)(b).
The EUIPO rejected P&G’s argument that, since the opposed class 35 services contained no exclusions, they could potentially relate to the Opponent’s goods and that made them similar.
The OD found that all the opposed class 35 services were aimed at supporting or helping businesses to do or improve their business and therefore, in principle, directed at the professional public.
The OD held that the opposed services are far removed from P&G’s goods in classes 3, 5 and 16 (broadly speaking, non‑medicated toiletry preparations, cleaning preparations, pharmaceuticals, sanitary preparations and other preparations for medical or veterinary purposes or pest control preparation paper, cardboard and certain goods made of those materials, office requisites and artists’ materials).
The OD further found that the possibility that the opposed services could relate to/include P&G’s goods was insufficient for finding similarity.
It was decided that P&G’s goods have different natures and intended purposes, are delivered by different undertakings through different distribution channels and are neither complementary nor in competition.
The EUIPO distinguished its findings from a previous Board of Appeal decision (R 2367/2019‑1 Alpharma Alliance, S.L. v Helsinn Healthcare S.A. – ALOXA (stylised), 24th February 2020) relied upon by the Applicant on the basis that, in that case, the opposed class 35 services involved actual retail and wholesale services.
Finding the opposed class 35 services in this case dissimilar to the goods protected by P&G’s earlier registrations, the EUIPO rejected the opposition against the class 35 services under Article 8(1)(b).
It declined to consider P&G’s claim of enhanced distinctiveness on the basis that, since similarity between the goods and service was a prerequisite for likelihood of confusion, there was no point in doing so.
Assessment of reputation
Despite the evidence of reputation filed (on which the Applicant filed no comments), not including any explicit evidence of market share, the OD found P&G’s mark had a reputation in the EU for feminine hygiene products (such as panty liners, sanitary napkins and tampons) before the filing date of the opposed application.
The OD held, however, that with completely divergent distribution channels, target customers with different needs and because they were provided by different suppliers, these class 5 goods and the contested class 35 services had no points of contact whatsoever.
This large gap made it unlikely that the opposed mark would remind the consumer of the earlier reputed mark.
Consequently, the OD rejected the opposition against the class 35 services under Article 8(5) on the basis that the relevant public would not establish the link or association between the marks that case law (eg, C-252/07 Intel EU:C:2008: 655, 27th November 2008, paras 42 and 66; and T-62/16 PUMA ECLI:EU:T:2018:604, 26th September 2018, para 38) has held is a precondition for an opposition under Article 8(5) to succeed.
The EUIPO’s own guidelines emphasise the difficulty where the market sectors involved differ: “The link will be more difficult to establish in cases where the market sectors concerned by the goods and services are remote, in the sense that a connection between the respective segments of the public is not obvious.
"In such situations, the opponent must justify why the marks will be associated, by reference to some other connection between its activities and those of the applicant, for example where the earlier mark is exploited outside its natural market sector, for instance, by licensing or merchandising.”
This decision is a reminder that, even where the marks are very similar and the reputation of the earlier mark is proven, the opponent must also demonstrate that a link between the marks will be established by the relevant public.
David Birchall is a Chartered Trade Mark Attorney and Partner at Venner Shipley LLP
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