In the case T‑157/23, Kneipp GmbH filed an application for the EU word mark “Joyful by nature” on November 29, 2019. Jean Patou opposed this application, citing their earlier EU word mark “JOY,” registered for various cosmetics and perfumery products in Class 3. The opposition was based on Articles 8(1)(b) and 8(5) of Regulation (EU) 2017/1001, focusing on the reputation of “JOY.”

The EUIPO’s Opposition Division upheld the opposition, citing the strong reputation of “JOY.” Kneipp GmbH appealed this decision, but the EUIPO Board of Appeal partially annulled it concerning some Class 35 services while maintaining the opposition for other goods and services in Classes 3, 4, 35, and 44.

The General Court confirmed that “JOY” enjoys a strong reputation, particularly in France. This conclusion was based on extensive evidence, including awards, publications, advertisements, and sales invoices. The court rejected Kneipp GmbH’s argument that the reputation was not sufficiently proven and that the burden of proof had been reversed.

Regarding the similarity of the marks, the court agreed with the Board of Appeal that “JOY” and “Joyful by nature” are visually, phonetically, and conceptually similar due to the shared element “joy.”

The court supported the Board of Appeal’s finding that a link exists between the marks due to their similarity, the strong reputation of “JOY,” and the related nature of the goods and services. The court dismissed Kneipp GmbH’s claim that the reputation of “JOY” needed to be “phenomenal” to prevent the registration of “Joyful by nature.”

The court concluded that the use of “Joyful by nature” would likely take unfair advantage of the distinctive character or reputation of “JOY.” Kneipp GmbH’s argument that they had a due cause for using “joy” was dismissed, as the term “JOY” was found to have distinctive character and was not merely descriptive for the relevant goods.

In conclusion, the General Court dismissed Kneipp GmbH’s action and upheld the Board of Appeal’s decision. Each party was ordered to bear its own costs, as the EUIPO had requested in the event no oral hearing was held. This judgment reinforces the protection of trademarks with established reputations and clarifies the conditions under which new marks can be deemed to take unfair advantage of such reputations.