EU trade mark dispute: JOY v Joyful by nature

On 24 April, in case T-157/23, the General Court of the European Union had to decide whether the registered  word trade mark "JOY" of the French fashion designer Maison Jean Patou was well-known enough to support and opposition against the registration of the word trade mark "Joyful by nature".

In November 2019, Kneipp GmbH, a German cosmetics company, filed an application with the European Union Intellectual Property Office (EUIPO) to register the word sign 'Joyful by nature' as an EU trade mark (Nº 018159946), which mainly designates cosmetics, perfumed candles and marketing services falling within Classes 3, 4, 35 and 44 of the Nice Classification.

In July 2020, Jean Patou, a French luxury goods company (mainly fashion and fragrances), filed an opposition based on an earlier EU word mark 'JOY' (Nº 14790232) covering goods in Class 3 of the Nice Classification, including hair care preparations, skin care cosmetics, eyebrow cosmetics, etc.

At first instance, the Opposition Division of the EUIPO upheld the opposition on the basis of the reputation of the earlier word mark JOY. However, the Board of Appeal of the EUIPO partially annulled the decision, specifically the application for marketing and promotional services in class 35. However, it agreed that the JOY mark had a reputation in a substantial part of the European Union, particularly for goods in Class 3, and that the applicant could take unfair advantage of the similarity between the two marks.

Kneipp appealed to the General Court of the European Union, which had to decide whether the mark applied for, 'Joyful by nature', infringed the rights of the earlier mark, 'JOY', taking into account its reputation, similarity and the possibility that Kneipp might take unfair advantage of the reputation of the earlier mark.

The General Court upheld EUIPO's decision and considered that JOY has a reputation for perfumes and fragrances in a significant part of the European Union, in particular in France. Although its reputation may have diminished over the years, there was still a "residual reputation" at the time of the application for the new trade mark.

In addition, the Court clarified that the proof of reputation could be based on documents from before or after the date of application, as reputation is acquired and lost gradually. In this case, as there was no evidence of a sudden disappearance of JOY's reputation, it was considered that the trade mark still had a reputation at the relevant date.

All in all, the General Court confirmed the distinctive character of the JOY mark, its similarity to the mark applied for and the likelihood of confusion between them. It therefore dismissed the appeal and held that the owner of the trade mark applied for could take unfair advantage of the reputation of JOY.