The Body Shop International limited from United Kingdom also known as “the Body Shop” is a chain of cosmetics shops affiliated with the L’Oreal concern – the network has over 2500 stores in over 60 countries.
On 5th December 2017, the Body Shop filed the European Union trade mark application:
Word mark, filed for the following goods: cosmetic products, hair care preparations, rug, rimel, nail preparations, etc.
Against this registration, on 18 April 2018, the German company dm-drugerie markt GmbH + Co. KG which is a concern with more than 2200 subsidiaries internationally, filed an opposition. The opposition was filed on the basis of the earlier national trade mark right in Germany:
The earlier registered word mark is protected for similar goods such as: soaps; perfumery, essential oils, cosmetics, hair lotions, tooth care products.
The conflict between the two companies first concerned opposition proceedings before the European Office, opposition which was fully accepted by the EUIPO, and subsequently the decision of the EUIPO Opposition Panel was challenged before the European Office’s Board of Appeal, but the Appeal was rejected, as well as the EU trade mark application “STRAWBERRY KISS”.
Briefly, the trade marks in conflict “STRAWBERRY KISS” and “Sunny Kiss” were judged to be similar and the EUIPO decided that it was a very high risk for the likelihood of confusion to be born.
The grounds on which the application for the EU trade mark was rejected by the European Office’s Appeal Court on 9 March 2020 (case R 1199/2019-2) were as follows:
- The relevant territory is Germany and the German public, given that the earlier trade mark is protected only at national level;
- The goods in question of the two trade marks are identical, in part and similar, and the level of attention of the relevant public is medium, the consumer is reasonably circumspect and diligent, but does not exercise a high degree of attention.
- The elements “sunny”, “strawberry” and “kiss” are English words and shall be understood by the relevant public;
- The element “kiss” is a distinctive element in relation to the goods covered by the two trade marks;
- The elements “sunny” and “strawberry” are poorly distinctive, common, compared to the goods covered by the two trade marks in conflict, namely cosmetic goods. “Sunny” refers to the brightly or the period of time during which the sun is shining, thus being rather common characteristics of the cosmetic products (day cream, cream for shine, the laudative expression – shiny skin). “Strawberry” is a fruit and, in relation to cosmetic goods, the relevant public will understand that the goods have the odor, color or flavor of the fruit in question;
- Consequently, the relevant public will remember only the distinctive elements and the two marks coincide with the first letter of the first word, S* and the most distinctive element of the two trade marks, i.e. “KISS”.
- Given that the likelihood of confusion is examined in the light of the distinctive and dominant elements of the two trade marks, the application for the EU trade mark was rejected because “KISS”, the distinctive element of both trade marks in conflict, was found in the same manner in the secondary part (second word), and this is likely to create a real likelihood of confusion and association within the relevant public.
Thus, although the two names appear at first sight to be different, the opposition was accepted, the board of Appeal maintained the Opposition Division’s decision and the subsequent trade mark application was rejected. In order to assess your chances of winning in the event that a similar trade mark application is filed, it would be advisable to consult an industrial property agency or an intellectual property lawyer.