IN THE MATTER OF Community Trade Mark Application No. 12427514 ‘THEFACESHOP (stylised) in the name of THEFACESHOP CO. LTD (‘the Applicant") -and- Opposition No. B002345794 thereto by The Body Shop International ple ("the Opponent") SUBSTANTIATION OF OPPOSITION 1. On 13 December 2013, the Applicant filed Community Trade Mark Application No. 12427514 for the stylised mark THEFACESHOP ("the Applicant's Sign") covering "Cosmetics, namely facial creams, cleansing creams, eye shadows, brow liners, foundations, face powders, blushers and skin sprays; make-up removing preparations; non-medicated skin care preparations, namely creams, lotions, gels, toners, cleansers, scrubs, masks and peels; perfumes; fragrances, namely colognes, aftershaves; common lotions, namely after-shave lotions, face lotions, fragranced body lotions, cleansing lotions, skin moisturizing lotions; skin lotions; nourishing creams, namely, nourishing body creams, skin moisturizing creams and ipsticks; make-up base; cleansing creams; solid anti-aging creams; mascaras; eye powder for compacts; non-medicated sun care preparations; non-medicated skin creams for massage use; nail care preparations; hair care and hair styling preparations, namely shampoos, conditioners, finishing sprays, and gels; skin soaps; body cleansers: tooth whitening preparations, namely tooth pastes" in class 3, and "Wholesale services for cosmeties; retail services for cosmetics; brokerage services (buying and selling agency services) of cosmetics; commercial intermediary services in the field of cosmetics; sales arranging of cosmetics; cosmetics procurement services for others (purchasing cosmetics for other businesses); cosmetics sales promotion (for others); cosmetics import-export agencies; commercial information agencies in relation to cosmetics; cosmetics marketing studies; distribution of cosmetics samples; professional business consultancy in relation to cosmetics” in class 35 ners; (altogether "the Application"), LONTMXH - #463637 12. On 28 April 2014, the Opponent filed an opposition against the Application and was awarded Opposition No. B002345794 ("the Opposition"). 3. The Opposition is directed against the Application in its entirety. 4. ‘The Opposition is based on the following CTM Registrations: i) CTM Registration No. 1980416 THE BODY SHOP (word) in inter alia class ai ii) CTM Registration No. 2305175 THE BODY SHOP (word) in imer alia class 35, and ili) CTM Registration No. 3957651 THE BODY SHOP (stylised) in inter alia classes 3 and 35, all registered in the name of The Body Shop Intemational ple ("the Opponent's Trade Marks") 5. The Opposition was based on Article 8(1)(b), 8(4) and 8(5) of the Community Trade Mark Regulation ("CTMR"). 6. Each of the Opponent’s Trade Marks constitute an "earlier trade mark" as defined in Article 8(2) of the Regulation, 7. We refer to the Notice of Opposition submitted on 28 April 2014 and hereby substantiate the Opposition. PROOF OF EXISTENCE AND VALIDITY OF EARLIER RIGHTS 8. For ease of reference, attached at Annexure I are copies of the Certificates of Registration for CTM Registration Nos. 1980416, 2305175 and 3957651, which proves the existence and validity of the Opponent's earlier trade mark registrations, ARTICLE 8(1)(b) 9. The Opponent's Trade Marks are both inherently distinctive and have acquired enhanced distinctiveness as a result of substantial use in relation to the goods and services for which they have registered protection. 10, The Opponent submits that the Applicant's Sign is confusingly similar to the Opponent’s ‘Trade Marks and the goods and services in respect of which the Application is made in LONTMOKH - #453637 2classes 3 and 35 are either identical to the Opponent’s goods and services or very highly similar. 11. As a result, use and/or registration of the Applicant's Sign will lead to a likelihood of confusion on the part of the relevant public, including a likelihood of association with the Opponent and/or the Opponents Trade Marks. Registration of the Applicant's sign would, therefore, be contrary to the provisions of Article 8(1)(b) and therefore registration of the Applicant's sign should be refused in it's entirety. yon of Marks 12, The Applicant's Sign is highly similar to the Opponent’s Trade Marks, which are set out respectively below: Applicant sign ‘Opponents Trade Marks THEFACESHOP THE BODY SHOP THE BODY SHOP Visual Comparison 13. Visually, both marks consist of three words, which themselves consist of three-letters, four- letters and four-letters respectively. While the spacing between each word is removed from the Applicant's Sign, each word is visually distinguished from the other two by the use of bold text in the central word FACE. Of these three words, the first and final are identical (i. "THE" and "SHOP"), Excluding the extremely mild stylisation of the Applicant's Sign and ‘omission of the spacing, the only visual difference between the Applicant's Sign and the Opponent’s non-stylised trade mark is in the respective central words "FACE" and "BODY" in the centre of the marks, to which consumer normally pay less attention than to the beginning and ending, which are identical. In relation to the Opponent's stylised trade mark, the stylisation of the Applicant's Sign reinforces the similarity, being a virtually identical font. Aural Comparison 14, Phonetically, the marks begin and end identically and to that extent the marks are aurally imilar. The central bold typeface of the contested sign means the sign will be immediately LONTIMKH - #463687 315, 16. understood as three words and pronounced accordingly. Therefore, when spoken the marks have a similar rhythm and the difference in pronunciation from the central words "FACE" in the Applicant's Sign and "BODY" of the Opponent’s Trade Marks is not sufficient to avoid overall phonetic similarity. Conceptual Comparison ‘The Applicant's Sign and the Opponent’s Trade Marks have the same general meaning and concept, that being a shop that sells products suitable for personal care, i.e. products that are for the face / body. This meaning is further reinforced in the context of the goods and services applied for and for which the Opponent’s Trade Marks have registered protection. The term "BODY" encompasses the term "FACE", as this is merely a feature of one's body and to this extent the marks have broad conceptual identity. Overall Comparison wal and aural similarities and broad conceptual identity, the Opponent’s submits that the signs are confusingly similar. This similarity is reinforced by the substantial use which has been made of the Opponent's Trade Marks, resulting in an enhanced distinetiveness and reputation. Taking into account the Comparison of Goods and Services 17. 18. ‘When making an assessment of similarity of the goods and services concerned, all relevant factors relating to these goods and services should be taken into account. These factors include, inter alia, their nature, purpose and method of use and whether they are in ‘competition with each other or are complementary (Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, [1998] OJ OHIM 12/98 p.1419, paragraph 23). Further factors include the pertinent distribution channels (in particular the sales outlets), the relevant public, and the usual origin of the goods. The opposition is directed at the goods and services covered by the Applicant's Sign in classes 3 and 35, Below is a comparison of the Applicant's goods and services and the Opponent's imilar or complimentary goods and services from which you will see that they are identical, of one another. LONTMXH - 463697 4Cosmetics, namely facial creams, cleansing | cosmetics Identical creams, eye shadows, brow liners, foundations, face powders, blushers and skin sprays: make-up removing preparations; non-medicated | non-medicated toilet | Identical skin care preparations, namely creams, lotions, | preparations gels, toners, cleansers, scrubs, masks and peels; perfumes; fragrances, namely colognes, | perfumes, eau de toilette, | Identical or at aftershaves; non-medicated skin care | least highly preparations, namely, | similar lotions, creams ‘common lotions, namely after-shave lotions, face | perfumes, eau de toilette, | Identical lotions, fragranced body lotions, cleansing lotions, | non-medicated skin care skin moisturizing lotions; skin lotions; nourishing | preparations, namely, creams, namely, nourishing body creams, skin | lotions, creams moisturizing creams and anti-aging creams; ‘mascaras; eye-liners; lipsticks; make-up base: cosmetics Identical cleansing creams; non-medicated skin care | Identical preparations, namely, lotions, creams solid powder for compacts; cosmetics Identical non-medicated sun care preparations sunscreen oils and lotions _| Identical non-medicated skin creams for massage use; non-medicated skin care | Identical preparations, namely, lotions, creams nail care preparations; nail care preparations Identical | hair care and hair styling preparations, namely | hair care and hair styling | Identical shampoos, conditioners, finishing sprays, and | preparations, namely, gels; shampoos, conditioners, finishing sprays, and gels skin soaps: skin soaps | Identical body cleansers; skin soaps; non-medicated | Identical skin care preparations, namely, lotions, creams, cleansers, scrubs, masks and toners, ig preparations, namely tooth pastes. | dentifrices Identical LONTIKH - #489637 5Wholesale services for cosmeties; retail services cosmetics; brokerage services (buying and selling agency services) of cosmetics commercial intermediary services in the field for of cosmetics; sales arranging of cosmetics; cosmetics procurement services for others (purchasing cosmetics for other businesses); cosmetics sales promotion (for others); cosmetics importexport agencies; commercial information agencies in relation to cosmetics; Cosmetics (class 3) Retail store services, online retail services, telephone shop at home services, and shop at home parties featuring beauty products, cosmetics, toiletries, skin care preparations, hair care preparations, fragrances, and personal care products; computerised online ordering featuring beauty products, cosmetics, skin care products, fragrances, related products (class 35) services and The retail and distribution services for cosmetics of the Applicant in identical to the ‘Opponent's retail services. The remaining services are highly similar. and complementary to both the Opponent’s goods and services insofar as they are all related to cosmetics. Consumers will immediately associate the manufacturer and retailer of a cosmetic product with the services of cosmetics marketing studies; wiolesale, brokerage, distribution of cosmetics samples; commer intermediary, professional business consultancy procurement, sales in relation to cosmetics. promotion, — import-export, commercial information, marketing studies. and. professional business consultancy in relation to cosmetics. Likelihood of Confusion 19. According to established case-law of the ECJ, the more distinetive a mark is, the greater the chance of there being a likelihood of confusion (C-251/95 Sabel v Puma, at paragraph 24). As evidenced in the Witness Statement of Peter O'Byme attached at Annexure 2 hereto, the Opponent’s Trade Marks have acquired an exceptionally high level of distinctiveness as a result of substantial and longstanding use throughout the EU, thus increasing the likelihood of ‘confusion with the Applicant's Sign. 20. Further, it is well established law that the "/g/lobal assessment applies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa" (C-342/97 Lloyd Schubfabrik Meyer at paragraph 19). In this case we submit LONTMaxH - #463837 6that the Opponent’s Trade Marks and the Applicant's Sign are very similar and that the identity and/or high similarity of the goods and services is a factor which further increases the ikelihood of confusion. 21. In view of this, in this instance any lesser degree of similarity between any of the Applicant's Sign and the Opponent's Trade Marks should be deemed offset by the identity and very high similarity between the respective goods and services. 22. The Opponent's submissions with regard to a likelihood of confusion are further reinforced by a survey which has been conducted in the UK and clearly illustrates that when confronted with the Applicant's Sign it is the Opponent’s Trade Marks which come to mind, Details of this survey are set out in the Witness Statement of Rachel Wilkinson-Dufly attached at Annexure 3, which is discussed in further detail below. ARTICLE 8(1)(4) 23. Article 8(4) of the Regulation states "Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (@) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed Sor the application for registration of the Community trade mark; (b) shai sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.” 24, The Opponent submits that by virtue of the extensive use of the non-registered trade mark “THE BODY SHOP" throughout the European Union, that it possess the right to prevent use and registration of the Opponent’s mark under Article 84) of the Regulation. This unregistered right is evidence by the Witness Statement of Peter O'Byrne, Group Counsel - Brand & Marketing of The Body Shop International ple. 25. In order to successfully substantiate a ground of opposition under Article (8X4) of the Regulation, the following criteria must be satisfied: (@) The earlier right must be a non-registered trade mark or other sign used in the course of trade; LONTMxH - #469637 7(©) The use must be of more than mere local significance; (©) The proprietor of the sign must have the right under the terms of the national law governing the right to prohibit use of the contests mark; and @) The right must have been acquired prior to the fling date of the contested mark. 26. The evidence provided in the enclosed Witness Statement demonstrates that the Opponent’s brand has acquired a degree of awareness throughout the EU in relation to the following goods and services: Toiletries; perfumery and fragrances; body cleaning and beauty care preparations; essential oils and aromatic extracts. Retail services in relation to toiletries, perfumery and fragrances, body cleaning and beauty care preparations, essential oils and aromatic extracts, 27. While the Opponent has acquired untegistered rights in the majority of EU member states, for the sake of procedural expediency our submissions will be restricted to passing off in the UK. 28. The classical trinity of the common law tort of passing off is set out in the judgment of Lord Oliver in Reckitt & Colman Products Ltd v Borden [1990] RPC 341 at page 406: “The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiffs identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of LONTMXH - #463637 8the defendant's goods or services is the same as the source of those offered by the plaintifi” 29. In short the Opponent must demonstrate that it hed a protectable goodwill at the relevant date, that use the Applicant's Sign would constitute a misrepresentation that there is a connection with the Opponent and that, in consequence, there is damage or a real likelihood of damage to the Opponent as a result, ‘The final element follows almost automatically in cases where there is confusion in the minds of consumers that, for example, leads to or is likely to lead to lost sales. 30. The goods and services applied for under the Applicant's Sign are identical or highly similar to the goods and services for which the Opponent has acquired goodwill through substantive use of THE BODY SHOP in the UK. 31. In light of the evidence filed under the Witness Statements of Peter O'Byrne and Rachel Wilkinson-Dufly, it unquestionable that the Opponent had considerable goodwill in the UK (as well as throughout the EU) in relation to the trade mark THE BODY SHOP in the context of goods and services set out under paragraph 26 above. Due to the close similarity between the Applicant's Sign and THE BODY SHOP, as discussed in detail under paragraphs 12-16 above, use of the Applicant's Sign would amount to a misrepresentation. Such a misrepresentation is likely to cause damage to the Opponent, including loss of future sales and damage to the goodwill and enhanced distinctiveness which has been accrued. ARTICLE 8(1)(5) 32. The registration of the Applicant's sign "THE FACE SHOP" will also be detrimental to the repute of the Opponent’s Trade Marks, which is contrary to the provisions of Article 8(5) of the Regulation. 33. The test for similarity between marks is less strict in the context of Article 8(5) of the Regulation than it is under Article 8(1)(b) of the Regulation, as for the purposes of Article 8(5) "it is sufficient for the degree of similarity between the mark with a reputation and the ‘sign to have the effect that the relevant section of the public establishes a link between the ssign and the mark" (Case C-408/01 Adidas/Fitnessworld at paragraph 31). Therefore, even if the similarities between the Opponent's Trade Marks and the Applicant’s Sign were not so striking it would be sufficient for the average consumer of cosmetic and personal care products and visitor of retail establishments selling these products to establish a link between the respective parties. LONTMXH - #463637 834. In accordance with the case law of the Court of Justice, only one of three types of inquiry is sufficient for Article 8(5) of the Regulation to apply, which are (i) detriment to the distinctive character of the mark, (ii) detriment to the repute of the mark, and (iii) taking unfair advantage of the distinctive character or repute of the mark, (see judgement of the Court of Justice in Case C-255/07 Intel Corporation Inc v CPM United Kingdom Lid, paragraph 28). 35. In the present case, use of the Applicant's Sign in the EU would clearly ride on the coat-ta of the Opponent's Trade Marks and take advantage of their substantial reputation. Permitting such use would allow the Applicant to benefit from the power of attraction, reputation and the prestige of the Opponent’s Trade Marks, without paying any financial compensation to the longstanding efforts of the Opponent to create and maintain their image 36. The Opponent therefore submits that use of the Applicant's Sign in the EU would result in all three types of injury for which Article 8(5) of the Regulation would apply, namely free- riding, dilution and tarnishment. SURVEY EVIDENCE OF CONFUSION / ASSOCIATION 37. In support of the Opposition, the Opponent commissioned a survey to be conducted in the UK to illustrate the general public's familiarity with THE BODY SHOP brand, even when they are confronted with only the Applicant's Sign, Details of this survey are set out in the Witness Statement of Rachel Wilkinson-Duffy and the full responses which are annexed thereto, 38, As shown from the exhibited surveys, members of the general public were shown a show-card which depicted the Applicant's Sign on its own and asked the entirely open question "What do you think?”. Even at this stage and without any reference to branding whatsoever, a large proportion of respondents mentioned THE BODY SHOP. 39, Respondents were then asked "Does this brand bringing anything in particular to mind?", again only being such the show-card which depicted the Applicant's Sign, Once again, respondents mentioned THE BODY SHOP, with some showing signs of confusion by comments such as "Have they [ie. THE BODY SHOP] changed their name?" (Bristol - survey 525) of "Cruelty free makeup" (Bristol - survey 509) (THE BODY SHOP is widely reputed for its stance in relation to animal testing on cosmetics). 40. Finally Respondents were shown the show-card attached at Annexure 4, which is a photograph of a store in the Singapore which the Opponent had encountered displaying the Applicant's Sign, and asked "...and in this context, does it bring anything in particular to mind?". Yet again, respondents regularly mention THE BODY SHOP, with comments such LonTMoxi - #463637 10as "Looks just like THE BODY SHOP. Is it?" (Bristol - survey 500) or "Looks just "Looks exactly like THE BODY SHOP. A total rip offi” (Bristol - survey 526). 41. It should be noted that the specific response set out above are by no means exhaustive or the most revealing, but a small selection of some of the first responses exhibited. It is the ‘Opponent’s assertion that on reviewing all the responses it will be unquestionable both that the general public in the UK are very familiar with the THE BODY SHOP brand and that a large portion would be confused by use of the Applicant's Sign and assume a link with THE BODY SHOP. CORRESPONDING OPPOSITION DECISION 42. The Opponent also respectfully draws the Office's attention to the decision of the Czech Trade Mark Registry of 5 February 2014, in which it was confirmed that the mark "THEFACESHOP" is confusingly similar to the Opponent’s "THE BODY SHOP" marks. The registry also held that the Opponent's Trade Marks have a good reputation and that registration of the contested sign could result in dilution of their distinguishing characteristics. A copy of this decision is attached at Annexure 5. 43. Whilst we appreciate that the Office is not bound by this decision, it serves to illustrate that ‘one EU member state has already confirmed that the Applicant's Sign and the Opponent's ‘Trade Marks are confusingly similar. As the Industrial Property Office of the Czech Republic has refused registration of the Applicant's Sign due to the Opponent’s prior rights, respectfully submitted that the ruling of the Office should be consistent and the current Application also refused registration. CONCLUSION 44, On the basis of the arguments advanced above, the Opponent therefore respectfully submits that the Applicant's Community Trade Mark Application No. 12427514 should be refused registration in its entirety in view of the Opponent’s earlier rights under Article 8(1}(b), 8(4) and 8(5) of the Regul 45, The Opponent requests that an order be made that the Applicant pay the Opponent’s costs in this Opposition. Bolen ¢ VY UP Baker & McKenzie LLP Agent for the Opponent 11 November 2014 LONTIDH - #468687 "