For over 20 years, Debonair Trading Internacional Lda has offered perfumes and other cosmetics under the trade mark SO…?, and other marks containing that element. More recently, it has also offered clothing and related goods under such marks.
In 2008, Debonair instructed Deborah Selden at Beck Greener to commence opposition proceedings at the EU Intellectual Property Office (EUIPO) against an EU trade mark application for the following logo (which belongs to Groupe Lea Nature SA), to stop it proceeding to registration for the goods it covered (which included perfumery and clothing):
We argued that the mark in the application was similar to our client’s SO…? marks, and that
a) The goods covered were similar to those in our client’s registrations, and so there was a likelihood of public confusion,
b) Our client’s registrations have a reputation of which use of the mark in the application would take unfair advantage, or to which use of the mark would cause detriment,
c) Our client had accrued unregistered rights in the UK to SO…? marks as a result of their extensive use over many years, and use of the mark in the application would misrepresent to the public a connection with our client, potentially causing them damage.
The EUIPO initially rejected the opposition; however, in March 2013, their Board of Appeal reversed this decision and refused the application in its entirety. They found that Debonair’s marks had achieved an enhanced level of distinctiveness and reputation in a substantial part of the EU, that Debonair have a family of marks featuring the element SO…?, and that the parties’ marks were similar. As a result, there was a likelihood of public confusion as regards almost all the goods and services in the application, and where there was no likelihood of confusion, use of the Applicant’s mark may nonetheless cause detriment to Debonair’s reputation.
The Applicant filed an appeal to the General Court of the European Union, where our client continued to be represented by Deborah Selden at Beck Greener, alongside counsel (as is required before the EU courts). In November 2013, the General Court issued a decision (the First Judgment of the General Court), in which they concluded that the marks were not similar and so allowed the Application in its entirety. Both Debonair and the EUIPO themselves then filed an appeal to the Court of Justice of the European Union (CJEU - the highest court in the EU), arguing that the First Judgment of the General Court was legally flawed.
The CJEU agreed with our client and the EUIPO (their decision can be read here). They found that the reasons given in the First Judgment of the General Court were inconsistent and therefore unsafe. In particular, the General Court had been unclear as to whether the word element ‘so’ had a laudatory function only when it was used with another word, or also when it was used on its own (with the language of their judgement suggesting the former at certain points, and the latter at others). The First Judgment of the General Court was set aside, and the case was duly sent back to that court to re-decide.
Again, Beck Greener and counsel (on behalf of Debonair) and the EUIPO submitted observations to the General Court arguing the Applicant’s appeal should be dismissed, and the Application remain refused. Debonair’s submissions in particular focussed on arguing clear similarity between the parties’ marks, both inherently and when taking into account the enhanced distinctiveness and reputation the SO…? marks have acquired as a result of their extensive use over many years. The decision issued on 8 June 2017 (the Second Judgment of the General Court) and can be found here.
In their Second Judgment, the General Court began by comparing the marks in detail. They agreed that the figurative element of the mark applied for (i.e. the frame with rounded corners) is commonplace and serves only to outline the word elements. Further, the words bio and etic would be perceived as a reference to the composition or origin of the goods, or to environmentally-friendly methods of producing cosmetic products. Given its size in the mark, the element BIO will make some visual impression and be likely to be remembered by consumers. Nonetheless, visually and phonetically the marks are similar to a certain extent, as the mark applied for identically reproduces the SO element of Debonair’s marks.
The General Court went on to hold that, with the exception of ‘bleaching preparations and other substances for laundry use’ in the Application, given the similarity of the signs in issue, the average level of attention of the relevant public, and the enhanced distinctiveness and reputation of Debonair’s SO…? marks (which the Applicant did not convincingly call into question), the Board of Appeal’s conclusion that the parties’ marks were confusingly similar must be upheld.
The remaining term covered by the Application (bleaching preparations and other substances for laundry use) was knocked out also, and the General Court upheld the Board of Appeal’s finding that the SO…? mark has a reputation in a substantial part of the EU, and there is a risk that use of the mark in the Application for these goods could tarnish that reputation.
It remains to be seen if the Applicant will appeal this decision to the CJEU. In the meantime, Beck Greener and Debonair are pleased that the European Courts have upheld findings that our client’s trade marks enjoy a protectable reputation in the EU, and that the mark applied for has been successfully opposed in its entirety.