A well-known trademark is understood to be one that is known by a significant part of the public interested in the goods or services covered by it. In the field of Community trademarks, this special condition requires that the trademark be registered and benefits from a reputation in a substantial geographical area of the European Union and in at least one Member State.
With regard to the nature and preservation of a well-known trademark, the question arises as to how it is acquired, who is responsible for proving that status, and whether it can be abruptly extinguished.
The recent judgment of the Court of Justice of the European Union (CJEU) of 24 April 2024 answers these questions, along with others.
The facts of the case being analysed are, in essence, the following:
- In 2019, the German company Kneipp GmbH, manufacturer and marketer of cosmetic products, applied to the European Intellectual Property Office (EUIPO) to register the name “Joyful by nature” as a trademark in class 3 (cosmetics), 4 (scented candles), 35 (marketing services) and 44 (beauty services).
- In February of 2022, the renowned French perfume company, Jean Patou, filed an opposition against the granting of the aforementioned trademark, on the basis of their Community trademark “JOY”, registered in 2016 in class 3.
- Jean Patou based their opposition on articles 8 (1) (b) and 5 of EU Regulation 2017/1001 on community trademarks, an opposition which was fully accepted by the EUIPO.
- On 31 March 2022 Kneipp filed an appeal against the decision, as a result of which the EUIPO partially overturned it, allowing the granting of the trademark applied for in class 35. However, it rejected the appeal with regards to the other classes of products and services.
- The Court of Justice of the European Union heard the appeal filed by Kneipp against the decision issued by the EUIPO and with respect to it, proceeded to declare the following:
On the condition of a “well-known trademark”, the court recognises that the trademark JOY has a reputation in the European Union, and at the very least in France, concerning perfumery and fragrances. It states that there is no requirement for a certain minimum percentage of the public to be aware of the trademark, but that one must pay attention to certain elements which, although they do not constitute a definitive list, they do serve as a guide for determining whether or not it exists: the intensity of use, its geographical presence, the duration of its use and the size of the investment made to promote it. Nor is it required that all of the aforementioned elements must be present, rather a joint assessment of these (or those that exist) might determine the presence of the trademark in a substantial part of the territory. In this case, the court found the evidence provided by Jean Patou sufficient, consisting of copies of JOY trademark licence agreements with third parties, excerpts from websites, a press article, references and excerpts from books, awards, advertisements and invoices, excerpts from invoices and evidence on its activity on social media. All of this was considered sufficient to demonstrate that the trademark JOY was known by a “relevant” part of the public in a significant geographical area of the European Union, in other words, France, and to a lesser extent, in other Member States, in which products were commercialised under said trademark.
This is a section of particular interest, because the accreditation of the reputation of a trademark or the loss thereof is based on evidence of the knowledge of the market of the trademark in relation to certain goods and services, or even in relation to the disappearance of this knowledge, or the awareness of consumers with respect to the association of a trademark with certain products or services. In any case, and in the first place, whoever objects to the registration of a trademark application on the basis of the ownership of a well-known trademark must prove its existence on the date on which the third party filed its application.
Jean Patou brought forward a series of evidence which suggested that the trademark JOY was especially well-known in France (and to a lesser extent, in other territories in the EU) although it is also clear that said evidence suggested that the trademark had been declining in recent times. Despite the decline that a well-known brand might have suffered over time, the CJEU recognised that it cannot be ruled out that a “historical” trademark may maintain a certain degree of reputation, even if said mark has fallen into disuse.
Indeed, the Court conceded that the degree of notoriety of the trademark JOY may have declined in recent years, the analysis must be made going back to the date on which the applicant for the trademark (Kneipp) filed its application (2019), and indicated that JOY was a trademark that, at that point in time, retained part of its notoriety, albeit residually. In the same way that the trademark normally becomes renowned with the passage of time, in a progressive manner, the Court reasons that its loss, as a general rule, also occurs gradually.
And herein lies one of Kneipp’s main reasons for appealing, i.e., on whom the burden of proving the survival or destruction of the notoriety falls. The Court maintains that it is precisely the lack of concrete evidence to show the disappearance of the reputation of the trademark, be that through the erosion of time, progressively, or even suddenly, or through the occurrence of some sudden event, which makes it possible to sustain the survival of the trademark’s well-known character. In the absence of the concurrence of a specific fact duly proven, the claim of an abrupt disappearance cannot be accepted, since, as previously mentioned, generally the renown of a historical trademark survives over time and only disappears with the passage of time, gradually, and not abruptly. In the absence of such evidence, the presumption prevails that the trademark retains some of the reputation acquired over the years.
The court did not uphold Kneipp’s argument on the grounds that much of the evidence brought forward by Jean Patou was dated between 2013 and 2017 (and some well before), and based precisely on the criterion of the subsistence of the historical trademark. It added that, in such cases, since as a general rule, well-known trademarks disappear progressively, it is up to the opponent to prove the concurrence of an event that caused the drastic cessation of such status. This duty does not constitute a reversal of the burden of proof, rather the approach is consistent with the jurisprudence of the Court.
The judgement ends by confirming that, given the persistence of the trademark JOY as a well-known trademark, the distinctive character of the trademark applied for by Kneipp is moderate but, there is a phonetic and visual affinity between it and the well-known trademark. To this it must be added that the circumstances of the market, in particular the knowledge of the well-known trademark by a specific and relevant public, may generate a risk that Kneipp may unduly take advantage of the reputation of this older trademark, JOY, to the extent that the latter “convinces” the public to link the products protected under the new trademark with those of the already existing well-known trademark, producing a mental confusion between both signs amongst consumers, and subsequently, as to the origin of the products.
Taking into account all of the arguments outlined, the court confirmed the decision of the EUIPO to reject the trademark “Joyful by nature” (except for in class 35).
Eduardo Vilá
Vilá Abogados
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17th of May 2024
