THE BOARDS OF APPEAL
DECISION
of the Second Board of Appeal
of 25 October 2017
In Case R 14/2017-2
Beiersdorf AG
Unnastr. 48
20253 Hamburg
Germany
Cancellation Applicant / Appellant
represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain
v
Henkel AG & Co. KGaA
Henkelstrasse 67
40589 Düsseldorf
Germany
EUTM Proprietor / Respondent
represented by White & Case LLP, Valentinskamp 70 / EMPORIO, 20355 Hamburg,
Germany
APPEAL relating to Cancellation Proceedings No 12 393 C (European Union trade
mark registration No 11 929 759)
THE SECOND BOARD OF APPEAL
composed of S. Stürmann (Chairperson and Rapporteur), A. Szanyi Felkl (Member)
and S. Martin (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 By an application filed on 25 June 2013, Henkel AG & Co. KGaA (‘the EUTM
proprietor’) sought to register the word declared the invalidity of
STRESS PROOF
for the following list of goods:
Class 3 – Soaps, cosmetics, cosmetic skin creams in liquid and solid form, deodorants for
personal use, cosmetic bath and shower foam, cosmetic hair care and treatment preparations;
Dentifrices and mouthwashes, not for medical purposes.
2 The application was published on 29 July 2013 and the mark was registered on
5 November 2013.
3 On 20 January 2016, Beiersdorf AG (‘the cancellation applicant’) filed a request
for declared the invalidity of of the registered mark for all of the goods covered by
the EUTM.
4 The grounds of the request for declared the invalidity of were those laid down in
Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.
5 By decision of 22 December 2016 (‘the contested decision’), the Cancellation
Division rejected the request for a declaration of invalidity in its entirety. It gave,
in particular, the following grounds for its decision:
Article 7(1)(c) EUTMR
– Taken as a whole the words ‘STRESS PROOF’ may be understood by the
relevant public as referring to something that is resistant to stress.
Nevertheless, to establish whether the combination ‘STRESS PROOF’ is
capable of distinguishing the goods for which registration is sought, it is
necessary to determine from the point of view of an English-speaking
consumer whether this combination may be viewed as a normal way of
referring to the goods or of representing their essential characteristics in
common parlance.
– The Cancellation Division notes that this sign is not suitable to describe the
goods in question or to designate one of their essential characteristics. In this
respect, the applicant did not prove that, at the date of filing of the EUTM
application, the expression ‘STRESS PROOF’ was used and/or perceived by
the relevant public in a descriptive way in relation to the contested goods in
Class 3. The applicant was not in the position to submit evidence showing a
combination ‘STRESS PROOF’ or ‘STRESS RESISTANT’ used to indicate
any of the characteristics of personal care articles.
– The screenshots provided by the applicant contain indications, such as ‘also
protects in stressful situations’, ‘… there’s a difference between the way your
body produces sweat when you’re hot, and the way you start sweating when
you’re stressed…’, ‘stress on nervous tension is a major enhancer of bad
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2
breath’, ‘stress, bad diet and hormonal changes can all make your hair fall
out’, ‘stressed-out hair’ or ‘stress sweat’ as well as names of products
(deodorants and antiperspirants), such as ‘Soft & Gentle Anti-Stress
Deodorant’, ‘Vichy Stress Resist Deodorant’ and ‘Stress Response
Deodorant’. All the above demonstrates that sweating, hair loss and bad
breath are, inter alia, possible responses of the human body to stress. The
evidence also shows that this phenomenon of the human body’s reaction to
stress is used in marketing deodorants and antiperspirants. However, it has
not been sufficiently demonstrated by the applicant that either consumers or
sellers would refer to deodorants or other personal care preparations in
question in a descriptive manner as ‘STRESS PROOF’ products or
substances. While it is true that deodorants and antiperspirants can efficiently
deal with sweating, which may result, inter alia, from stress, this does not
mean that the term ‘STRESS PROOF’ (in isolation) will be immediately
understood by the consumer as giving information about the characteristics
and purpose of these products. In other words, products such as deodorant
and antiperspirants are liable to hinder sweating, which is a result of stress but
they are unlikely to hinder stress, which is not a consequence of sweating.
There is additional mental step needed to understand the message the
contested sign may want to convey.
– The EUTM could be considered allusive for the contested goods. However,
the term ‘STRESS PROOF’ is too unspecific in its scope and the link between
this term and the goods in question is too remote to establish that the EUTM
cannot enable members of the public concerned to distinguish the goods that
it designates from those, which have a different trade origin.
– The cancellation applicant refers to a previous decision of the Office to
support its arguments. However, it must be noted that the Office is not bound
by its previous decisions as each case has to be dealt with separately and with
regard to its particularities. Moreover, the previous case referred to by the
applicant concerns signs that are not identical with the EUTM, namely
‘STRESS PROTECT’ and ‘STRESS DEFENCE’ and therefore will not
necessarily be perceived in the same way as the contested sign.
– It must, therefore, be concluded that the cancellation applicant has not proven
that the contested EUTM falls foul of Article 7(1)(c) EUTMR.
Article 7(1)(b) EUTMR
– As is apparent from the above, the cancellation applicant’s arguments are
based on the assumption that the contested sign ‘STRESS PROOF’ is
descriptive. However, as has been seen, descriptiveness of the contested sign
cannot be concluded. Therefore, no lack of distinctiveness of the EUTM can
be affirmed on account of its alleged descriptiveness. The cancellation
applicant has presented no evidence that the word combination ‘STRESS
PROOF’ was commonly used in the trade or that it otherwise lacked
distinctive character at the time of filing of the EUTM or at the time of its
registration, in 2013.
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– In view of the above, the invalidity application must be rejected also on the
ground for invalidity laid down in Article 52(1)(a) EUTMR in conjunction
with Article 7(1)(b) EUTMR.
6 On 2 January 2017, the cancellation applicant filed an appeal against the contested
decision, requesting that the decision be entirely set aside. The statement of
grounds of the appeal was received on 21 April 2017.
7 In its observations in reply received on 26 June 2017, the EUTM proprietor
requested that the appeal be dismissed.
Submissions and arguments of the parties
8 The arguments raised in the statement of grounds may be summarised as follows:
Article 7(1)(c) EUTMR
– The Cancellation Division’s criticism that the appellant had allegedly not
provided sufficient proof of use of the expression ‘STRESS PROOF’ in a
descriptive way before the application date of the contested mark is
unfounded, because actual use does not need to be shown. This has been clear
– at least – since the CJEU decision in 23/10/2003, C-191/01 P, Doublemint,
EU:C:2003:579. In addition, it is not necessary to provide evidence that
predates the filing date of the contested mark if conclusions can be drawn
regarding the situation at the time of filing from other evidence submitted.
– However, the Cancellation Division only paid lip service to the legal threshold
set by the CJEU in 23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:22 and
did not even consider the fact that the evidence relating to a subsequent
period had to be taken into consideration to draw conclusions with regard to
the situation at the time of filing. The contested mark was applied for on 25
June 2013 and the submitted evidence which was produced at the end of
2013, as third- party observations, certainly gave a clear indication about the
situation at the filing date.
– As to the Cancellation Division’s assessment of the descriptive character of
the contested mark, first there is no requirement for consumers to use the
descriptive term to refer to the product in question, as the Cancellation
Division appears to have assumed. To the contrary, it is enough that the
consumers could perceive the term as descriptive, i.e. as capable of describing
the products at issue or any characteristics thereof.
– The Cancellation Division applied a very narrow view by only taking one
possible meaning into consideration. However, there are other meanings of
the term, which are descriptive, but were not considered by the Cancellation
Division. According to the CJEU, it suffices for a refusal under Article 7(1)(c)
EUTMR if one of those meanings designates a characteristic of the goods or
services for which the mark shall be used.
– One possible descriptive meaning of the term ‘STRESS PROOF’ is the
protection from stress sweat. A deodorant’s main characteristic is the
protection against sweat. The human body produces sweat for various
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reasons, including physical or psychological stress. While one might say that a
deodorant cannot protect from stress per se, it can protect from its immediate
consequence, namely stress sweat – and that itself, will reduce the stress in the
first place.
– The expression can be understood as a reference to products that protect the
skin from stress, i.e. from skin irritations caused by stress. Not only
‘deodorants’ but also ‘soaps, cosmetics, cosmetic skin creams in liquid and
solid form, cosmetic bath and shower foam, cosmetic hair care and treatment
preparations; dentifrices and mouthwashes, not for medical purposes’ covered
by the contested mark are directly applied to the skin and their effects on the
skin are directly relevant for consumers, in particular those with sensitive skin.
It follows that ‘STRESS PROOF’ may serve, from the point of view of the
public concerned, to designate an essential and desired characteristic of these
goods. The mark conveys obvious and direct information regarding the kind,
quality or other characteristics and the link between ‘STRESS PROOF’ and
the contested goods is sufficiently close for the sign to fall within the scope of
Article 7(1)(c) EUTMR.
– The Cancellation Division disregarded the previous practice of the Office in
comparable cases, in particular, the First Board of Appeal already confirmed
in its decision of 23/10/2015, R 2036/2014-1, STRESS DEFENCE, the
descriptiveness of ‘STRESS DEFENCE’ in relation to the goods at issue
here.
– In addition, the Office already rejected the registration of ‘STRESS
PROTECT’ for deodorants and antiperspirants. Even if not identical, the signs
‘STRESS PROTECT’ and ‘STRESS DEFENCE’ are conceptually identical
to the contested mark, and cover identical goods. Hence, is not
comprehensible why ‘STRESS PROTECT’ and ‘STRESS DEFENCE’ are
considered descriptive and ‘STRESS PROOF’ is not. The Cancellation
Division’s failure to declare the contested mark invalid is therefore clearly
contrary to the Office’s previous practice.
Article 7(1)(b) EUTMR
– In addition, ‘STRESS PROOF’ is also non-distinctive in accordance with
Article 7(1)(b) EUTMR. When seeing the term ‘STRESS PROOF’ on a
deodorant, the consumer will not perceive this term as a source indicator.
Terms that are descriptive of characteristics of goods and services are
necessarily devoid of any distinctive character with regard to the same goods
or services within the meaning of Article 7(1)(b) EUTMR.‘STRESS PROOF’
is therefore non-distinctive in accordance with Article 7(1)(b) EUTMR.
– The cancellation applicant submitted sufficient evidence to show the absence
of distinctiveness of the term ‘STRESS PROOF’ in relation to the personal
care goods covered by the contested mark in Class 3 (see the enclosures 2, 3
and 4 to the cancellation applicant’s submissions of 20 January 2016).
9 The arguments raised in reply to the appeal may be summarised as follows:
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– With regard to deodorants, the cancellation applicant’s allegedly descriptive
meaning of the term ‘STRESS PROOF’ is not in line with the ordinary literal
understanding of the relevant public of this term. As the cancellation applicant
already pointed out in its submissions dated 20 April 2016, (pages 7 and 8) in
particular deodorants but also other skin or hair care cosmetics, cannot
prevent or fight stress as such. Accordingly, it needs several intellectual
intermediate steps in order to arrive at the assumed descriptive reference of
‘STRESS PROOF’ to a deodorant’s or other cosmetic’s main characteristic
and purpose, described by the cancellation applicant as ‘protection from
stress’. This information therefore is neither obviously nor directly (without
further reflection) conveyed by the designation ‘STRESS PROOF’.
Therefore, the contested decision correctly follows the settled case-law, that
Article 7(1)(c) EUTMR does not apply to terms like ‘STRESS PROOF’ that
are only suggestive or allusive as regards certain characteristics of goods or
services. The EUTM proprietor cites case-law in support.
– Insofar as the cancellation applicant refers to two previous decisions of the
Office concerning the marks ‘STRESS DEFENCE’ and ‘STRESS
PROTECT’, the Cancellation Division correctly pointed out that the Office is
not bound by previous decisions and cites case-law in support. Moreover,
contrary to the cancellation applicant, the Cancellation Division does not
ignore the principle of equal treatment. The contested decision discusses the
decisions the cancellation applicant refers to and highlights their differences
with regard to the case at hand. This corresponds to settled case-law which
only requires that the way in which the principle of equal treatment is applied
must be consistent with respect for legality.
– Furthermore, as the Cancellation Division rightly states, the designations
‘STRESS DEFENCE’ and ‘STRESS PROTECT’ will be perceived in a
different way to the contested sign. First, the signs are not identical. Even if
there may be some conceptual similarity because of the common element
‘STRESS’ the visual and phonetic differences between the signs lead to a very
different perception by the relevant public. Second, the EUTM proprietor has
already pointed out in previous submissions that ‘STRESS DEFENCE’ and
‘STRESS PROTECT’ have a relatively clear descriptive message. Contrary to
the contested mark, they lack ambiguity and there is no need for interpretation
withregardtotherespectivewordcombination.
Reasons
10 All references made in this decision should be seen as references to the EUTMR
2017/1001 (OJ L 154, 16.6.2017, p. 1), codifying EUTMR 207/2009 as amended,
unless specifically stated otherwise in this decision.
Admissibility
11 The appeal complies with Articles 66, 67 and 68(1) EUTMR. It is, therefore,
admissible.
Article 52 EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR
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12 Article 52 EUTMR, under the heading ‘Absolute Grounds for Invalidity’, states,
in relevant part, the following:
‘1. An EU trade mark shall be declared invalid on application to the Office or on
the basis of a counterclaim in infringement proceedings: (a) where the EU trade
mark has been registered contrary to the provisions of Article 7;
2. Where the EU trade mark has been registered in breach of the provisions of
Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in
consequence of the use which has been made of it, it has after registration
acquired a distinctive character in relation to the goods or services for which is
registered.’
13 Article 7(1) EUTMR contains the absolute grounds for refusal and each of these
grounds is independent of the others and calls for a separate examination.
Moreover, it is appropriate to interpret those grounds for refusal in the light of the
general interest which underlies each of them. The public interest taken into
account in the examination of each of those grounds for refusal may, or even must,
reflect different considerations, depending upon which ground for refusal is at
issue (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55 and 16/09/2004,
C-329/02 P, SAT.2, EU:C:2004:532, § 25).
14 It is sufficient that one of the absolute grounds for refusal applies in order for the
sign at issue not to be registrable as an EU trade mark (16/03/2006, T-322/03,
Weisse Seiten, EU:T:2006:87, § 110).
15 Article 7(1)(b) EUTMR stipulates that trade marks which are devoid of distinctive
character shall not be registered.
16 Under Article 7(1)(c) EUTMR, trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, intended purpose or
other characteristics of the goods or services, shall not be registered.
17 The question whether or not any of the grounds for refusal set out in Article 7(1)
EUTMR apply to the mark must be assessed, first, not in the abstract but by
reference to those goods or services, and, second, by reference to perception of
the trade mark on the part of the average consumer of the goods or services in
question, who is reasonably well informed and reasonably observant and
circumspect, taking account of all the relevant facts and circumstances
(12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 31-35, and the case-law
cited therein).
18 In view of these considerations, the Board will first determine the average
consumer of the goods concerned, as well as his/her level of attentiveness, and will
then – by reference to the goods in question – assess whether Article 7(1)(b)
and/or (c) EUTMR applies in the present case.
Relevant public and its level of attention
19 The Board recalls that the average consumer’s attention is likely to vary according
to the category of goods and services in question (07/10/2010, T-244/09, Acsensa,
EU:T:2010:430, § 18 and the case-law cited therein).
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20 Where the goods or services with which the registration application is concerned
are intended for all consumers, the relevant public must be deemed to be
composed of the average consumer, who is reasonably well informed and
reasonably observant and circumspect (26/04/2007, C-412/05 P, Travatan,
EU:C:2007:252, § 62).
21 The Cancellation Division considered that the contested goods are everyday
consumption goods and are mainly aimed the general public and, taking into
account their nature, the awareness of the public will be that of the average
consumer, as referred to in paragraph 20. The cancellation applicant does not
contest these findings on appeal.
22 The Board observes that the General Court has previously confirmed that the level
of attention exercised in the purchase of cosmetic products by the general public
to be at least average (02/02/2011, T-437/09, Oyster cosmetics, EU:T:2011:23, §
23; 13/09/2010, T-366/07, P&G Prestige beauté, EU:T:2010:394, § 51;
21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 38).
23 However, in these cases there was, as in the present case, no dispute on this point,
and the issue was not considered in any depth. Given that generally these products
are relatively high in added value, and also directly applied to the skin, affecting
the looks and appearance of the individual, it is more reasonable to conclude that
the consumer’s attention with respect to the relevant goods must be deemed to be
higher than average (14/10/2004, R 250/2002-4, FL FENNEL (fig.) / FENJAL, §
13).
24 Furthermore, the General Court in its ‘Caldea’ judgment, stating that consumers
tend to be attentive in the acquisition of body care products, on grounds of
aesthetic considerations or personal preferences, sensitivity, allergies, type of skin
and hair and so forth, as well as the expected effect of the products (18/10/2011,
T-304/10, Caldea, EU:T:2011:602, § 55; see also 28/04/2015, R 1225/2014-5,
TOPModel (fig.) / TOP MODELING YANBAL (fig.) et al., § 19-22; 17/09/2015,
R 3164/2014-2, BIO LIFT WHITE COMPLEX / BIO-LIFT, § 125-127;
17/02/2016, R 571/2015-2, DERMOCREM, § 23-25).
25 The Board nevertheless points out that the fact the relevant public pays particular
attention when purchasing specific goods does not necessarily mean that the
‘descriptiveness threshold’ of the sign must be ‘higher’ to a certain extent in order
for that sign to fall under the ground for refusal set out in Article 7(1)(c) EUTMR
(see, by way of analogy, 12/07/2012, C-311/11 P, Wir machen das Besondere
einfach, EU:C:2012:460, § 48). Even taking into account that (part of) the public
concerned is considered to consist of especially circumspect individuals, this
especially high degree of attention does not mean that the absolute grounds for
refusal should be applied to the mark in a more relaxed manner
(11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27–28).
26 As correctly considered by the Cancellation Division, since the contested mark for
consists of an English word combination, the relevant public consists of English-
speaking consumers in the European Union (22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 26). The public by reference to whom the
absolute ground of refusal must be assessed consists of at least the public in the
Member States in which English is an official language, i.e. Ireland, Malta and the
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United Kingdom. The Board will limit its assessment to these Member States and
will refrain, for reasons of procedural economy, from considering the language
knowledge of the relevant public and/or the common use of these English words in
the various other Member States.
Article 7(1)(c) EUTMR
27 Article 7(1)(c) EUTMR excludes trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin or the time of production of the
goods or of rendering of the services, or other characteristics of the goods or
service, from registration.
28 Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that
descriptive signs or indications relating to the characteristics of the goods or
services in respect of which registration is sought may be freely used by all. That
provision, therefore, prevents such signs or indications from being reserved to one
undertaking alone because they have been registered as trade marks (12/02/2004,
C-265/00, Biomild, EU:C:2004:87, § 35 and 36; 27/02/2002, T-219/00, Ellos,
EU:T:2002:44, § 27; 04/05/1999, C-108/97 & C-109/97, Chiemsee,
EU:C:1999:230, § 25).
29 For a sign to be rejected as descriptive, there must be a sufficiently direct and
specific relationship between the sign and the goods and services in question to
enable the public concerned immediately to perceive, without further thought, a
description of the goods and services in question or one of their characteristics
(22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00,
Streamserve, EU:T:2002:43, § 40).
30 The descriptiveness of the sign has to be assessed in relation to the goods or
services for which registration is sought and by reference to the relevant public’s
perception of it (02/04/2008, T-181/07, Steadycontrol, EU:T:2008:362, § 38;
21/05/2008, T-329/06, E, EU:T:2008:161, § 23).
31 The expression ‘STRESS PROOF’ is likely to be perceived as an English
compound composed of the two nouns ‘STRESS’ and ‘PROOF’. The Board
agrees with the findings of the contested decision with regard to the definition of
the words ‘STRESS’ and ‘PROOF’, i.e.:
‘the noun ‘STRESS’ has the meaning, inter alia, ‘mental, emotional, or physical
strain or tension’, while the term ‘PROOF’ has the meaning, inter alia, ‘able to
resist; impervious (to)’ (information extracted from Collins Dictionary online on
15/12/2016 at https://www.collinsdictionary.com)’.
32 The word ‘STRESS’ qualifies the word ‘PROOF’ such that the expression as a
whole will be understood to denote a specific kind of resistant, namely one
concerned with ‘stress’ (see by analogy 23/10/2015, R 2036/2014-1 – STRESS
DEFENCE, § 20).
33 Considering the combined meaning of these word elements, the Board agrees with
the Cancellation Division’s findings that ‘STRESS PROOF’ may be understood by
relevant consumers as a meaningful expression, namely as referring to something
that is resistant to stress.
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34 The expression ‘STRESS PROOF’ is, therefore, generally comprehensible for the
public concerned. The expression is perhaps not defined as a stand-alone
expression in dictionaries but the mere fact that an expression is not mentioned in
dictionaries does not render a sign eligible for registration (12/02/2004, C-363/99,
Postkantoor, EU:C:2004:86, § 97; 12/01/2000, T-19/99, Companyline,
EU:T:2000:4, § 26; 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 22-
24; 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 37).
35 It should, however, be assessed whether this meaning of ‘STRESS PROOF’ is
descriptive for all the contested goods in Class 3, as examined below.
Descriptiveness of the mark in relation to the contested goods
36 The specific meaning of the mark applied for must be determined specifically in
connection with the goods claimed (16/10/2012, T-371/11, Clima Comfort,
EU:T:2012:545, § 38).
37 The cancellation applicant filed a declaration for a declaration of invalidity against
all the goods of the challenged mark (‘the contested goods’), namely:
Class 3 – Soaps, cosmetics, cosmetic skin creams in liquid and solid form, deodorants for
personal use, cosmetic bath and shower foam, cosmetic hair care and treatment preparations;
Dentifrices and mouthwashes, not for medical purposes.
38 The contested EUTM is registered in relation to ‘soaps, cosmetics, cosmetic skin
creams in liquid and solid form, deodorants for personal use, cosmetic bath and
shower foam, cosmetic hair care and treatment preparations; Dentifrices and
mouthwashes, not for medical purposes’.
39 In respect of ‘soaps, cosmetics, cosmetic skin creams in liquid and solid form,
deodorants for personal use, cosmetic bath and shower foam’, these are all types
of skin care products that are applied to the human body, in order to either prevent
body odour and/or unwanted sweating, in particular in the case of ‘deodorants for
personal use’ and/or alleviate overworked and stressed out skin and prevent
possible breakouts, rashes, blemishes, irritation etc., such as aromatherapeutic
anti-stress soaps, cosmetics with anti-stress and relaxing agents and anti-stress and
anti-blemishing skin care creams.
40 Likewise, as to the contested ‘dentifrices and mouthwashes, not for medical
purposes’, these are products that are applied to the human’s mouth in order to
prevent mouth odour and unwanted bad breath.
41 It is a well-known fact that sweating is inter alia a common response of the human
body to stress. The cancellation applicant submitted evidence that corroborates the
fact that this phenomenon is indeed known to the general public. The extracts
from, amongst others, the ‘Unilever Global’ website, ‘Right Guard’ website, the
world’s largest online retailer’s website, ‘Amazon’, and http://www.priceline.com,
one of the UK’s largest online supermarket websites shows that the marketing of
deodorants and antiperspirants presupposes such knowledge on the part of the
relevant public. The text specifically addresses the purpose of the ‘Rexona’
product range to protect against sweating caused by stress or anxiety. The
evidence also shows that deodorants and antiperspirants are commonly marketed
as means to prevent body odour and unwanted sweating caused by stress or
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anxiety. The product images shown in the screenshots from the various
above-mentioned websites filed by the cancellation applicant prove that the
labelling of deodorants and antiperspirants on the market frequently contains
specifications such as ‘Anti Stress’, ‘Stress Resist’, ‘Stress Response’, or ‘Stress
Control’ (see by analogy 23/10/2015, R 2036/2014-1 – STRESS DEFENCE, § 22
and 23).
42 In light of the above, the expression ‘STRESS PROOF’ in the context of
‘deodorants for personal use’ is very likely to be understood as a reference to the
effect these goods are intended to have which is to prevent body odour and
unwanted sweating caused by stress. Therefore, the expression ‘STRESS PROOF’
is a direct and obvious reference to the intended purpose of the subject
‘deodorants for personal use’.
43 The same principle applies to ‘soaps, cosmetics, cosmetic skin creams in liquid and
solid form, cosmetic bath and shower foam’. In relation to these skin care
products, the term ‘STRESS PROOF’, as ‘stress resistant’, immediately leads to
the assumption that the products sold under such trade mark either help to avoid
or reduce stress which can affect the skin in all kinds of ways, from breakouts,
inflammation, rashes, dryness, to acne, eczema, or can at least help to protect the
consumer from the consequence of stress, such as for instance, anti-stress soaps,
creams, facial moisturizers and cosmetics.
44 There are indeed a number of earth therapeutic and aromatherapy anti-stress soaps
and creams on the market, which are designed for stress relieving and cleaning the
skin. For instance, soaps made with lavender essential oil release a calming scent
that promotes relaxation and combats stress, depression, anxiety and even
headaches. Soaps made with sage essential oil scent are said to help one relax and
cope with stress. The aroma has a calming and even euphoric effect. Soaps made
with peppermint essential oil are said to have anti-depressant, antiseptic, astringent
and insect-repelling properties. Soaps with palmarosa essential oil are said to calm
the mind, and have an uplifting effect. They are used to combat physical and
nervous exhaustion, stress-related problems and nervousness. Soaps with
rosemary essential oil are said to stimulate mental activity and are a good remedy
for depression, stress, mental fatigue and forgetfulness.
45 Soaps, creams and cosmetics formulated with essential oils or sleep-inducing
scents like lavender or camomile are used to aidone to achieve a relaxedstate.
46 The same applies to ‘cosmetics’ and ‘cosmetic skin creams in liquid and solid
form, cosmetic bath and shower foam’. There is, for example, a range of cosmetics
which is dedicated to the care of oily and sensitive skin, reactive skin prone to
dermatoses or blemish-prone skin, as well as to the care of the skin after
dermatological treatments. Such products are applied to the skin to strengthen the
immune system and calm, soothe and restore stressed, irritated skin and avoid
possiblebreakouts, inflammation, rashes, dryness, etc.
47 Many moisturizing creams nowadays are enriched with vitamins and regenerating
and calming properties/agents to help bring vitality and brightness to tired and
stressed skin.
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48 As the cancellation applicant correctly notes, this can also apply to ‘cosmetic hair
care and treatment preparations, dentifrices and mouthwashes, not for medical
purposes’.
49 It is well known that extreme bouts of stress can cause greying and moreover hair
thinning and hair loss. Thus, reducing stress and anxiety which reduce sweat or the
resulting odour is a desirable feature also for hair care and prevention of hair
thinning and hair loss. Moreover, a high level of stress not only causes sweating
but can also dry out the mouth and cause bad breath, which is supported by the
screenshots submitted from various online newspapers (UK and German-based
websites) and the third party website http://www.qualitydentistry.com submitted
by the cancellation applicant.
50 In the light of the above, the average consumer will assume that hair care and
dental products branded with the EUTM will have positive effects related to the
avoidance of any stress-related body reactions including sweat, hair loss or bad
breath.
51 In view of the above, it is reasonable to believe that consumers do not require a
high degree of sophistication to make a sufficiently clear link between the mark
and all the contested goods in Class 3. Such a link leads consumers to perceive the
descriptive message of the mark with respect to these goods. It is considered
sufficient that the consumer, at the time of the decision to purchase, understands
the sign as indicating this particular positive effect, regardless of whether it
actually occurs later or whether any such effect can objectively be measured at all.
Therefore, the contested goods fall under the descriptive meaning.
52 The Board recalls that it suffices for a sign to fall foul of Article 7(1)(c) EUTMR,
when it contains obvious and direct information in relation to the goods applied
for, which is the case, as explained above, with the expression ‘STRESS PROOF’
in relation to all the contested goods.
53 The EUTM proprietor’s argument that consumers would be required to give
further thought or reflection when being confronted with the mark before they
could perceive a description of any of the goods covered, cannot be followed. The
Board fails to see how the contested sign, as a whole, could create in the relevant
consumers’ minds an overall impression that is sufficiently far removed from that
produced by the mere combination of the descriptive meanings lent by the words
‘STRESS’ and ‘PROOF’. The combination of two generic terms into ‘STRESS
PROOF’ does not possess any additional characteristic so as not to be exclusively
descriptive of (the essential characteristics of) the goods listed in paragraph 1
(19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 22-24).
54 In contrast to the EUTM proprietor’s assertion, the well-informed and observant
relevant consumer (which in the present case has a higher attentiveness for at least
part of the goods in question, as mentioned above) will therefore immediately
perceive the sign as a designation of the essential characteristics of the contested
goods. The contested mark ‘STRESS PROOF’, when applied to the
abovementioned goods in Class 3 will be seen by the relevant consumers as a
meaningful, descriptive indication of the characteristics and intended purpose of
the goods in question.
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55 The Board notes, moreover, that it is not necessary for a term to have only one,
namely a descriptive, meaning in order to be caught by Article 7(1)(c) EUTMR.
Rather, it is established case-law that a word sign is refused registration if at least
one of its possible meanings designates a characteristic of the goods or services
concerned (23/11/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).
56 The contested mark conveys relevant, clear and unambiguous information,
immediately apparent to the English-speaking public. Consequently, from the
perspective of the relevant public there will be a direct association between the
contested mark and all the goods concerned.
57 It follows that there is a sufficient and specific relationship between the mark
‘STRESS PROOF’ and the contested goods for the sign to fall within the scope of
the prohibition laid down by Article 7(1)(c) and 7(2) EUTMR.
Article 7(1)(b) EUTMR
58 In accordance with the standing case-law of the Court of Justice, distinctive
character within the meaning of Article 7(1)(b) EUTMR means that the mark
applied for must serve to identify the goods or services in respect of which
registration is applied for as originating from a particular undertaking. It thus
serves the purpose of distinguishing the trade marked goods or services from
those of other undertakings (21/10/2004, C-64/02 P, Das Prinzip der
Bequemlichkeit, EU:C:2004:645, § 33).
59 Furthermore, the distinctiveness of a trade mark must be assessed both by
reference to the goods and services in the application and to the perception of
them by the relevant public (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86,
§ 34-35).
60 The notion of general interest underlying Article 7(1)(b) EUTMR is, manifestly,
indissociable from the essential function of a trade mark, which is to guarantee the
identity of origin of the marked product or service to the consumer or end-user by
enabling him/her, without the possibility of confusion, to distinguish the product or
servicefromotherwhichhaveadifferentorigin(08/05/2008,
C-304/06 P, Eurohypo, EU:C:2008:261, § 56 and 15/09/2005, C-37/03 P, BioID,
EU:C:2005:547, § 60).
61 The absolute ground for refusal of a lack of distinctive character and the
characteristics of descriptive or usual indications each have their own scope of
application and are neither mutually dependent nor mutually exclusive
(29/04/2004,C-456/01P &C-457/01P,Tabs,EU:C:2004:258,§45-46).
Even though the existence of just one ground for refusal is sufficient, they may
also be examined cumulatively.
62 In this respect, the Board considers that the contested mark also lacks
distinctiveness with respect to the contested goods for the purpose of Article 7(1)
(b) EUTMR. As confirmed by the Court, a mark which is descriptive of
characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is
necessarily devoid of any distinctive character in relation to those goods or
services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99,
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Postkantoor, EU:C:2004:86, § 86 and 14/06/2007, T-207/06, Europig,
EU:T:2007:179, § 47 and the case-law cited therein).
63 A mark which, as in the case at hand, would simply be seen as descriptive, cannot
guarantee the identity of the origin of the marked product to the consumer by
enabling him/her, without any possibility of confusion, to distinguish the said
product from other services which have a different origin. As such, it is incapable
of performing the essential function of a trade mark, namely that of identifying the
origin of the goods/services, thus enabling the consumer who acquired them to
repeat the experience, if it proves to be positive, or to avoid it, if it proves to be
negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best
Buy, EU:T:2003:183, § 20).
64 In the present case, the contested mark simply informs the relevant consumer that
the contested goods are intended to prevent body odour and are resistant to any
unwanted sweating caused by stress. Thus, the sign applied for also lacks any
distinctive character and also falls foul of Article 7(1)(b) EUTMR, not only
because a descriptive mark necessarily also lacks distinctiveness (12/02/2004,
C-363/99, Postkantoor, EU:C:2004:86, § 86), but also because, as mentioned
above, it is incapable of performing the essential function of a trade mark, namely
of identifying the originof the goods concerned.
65 The Board, for the reasons given above, considers that the contested EUTM was
registered contrary to Articles 7(1)(b) and (c) EUTMR.
66 In the light of the above considerations, the appeal is upheld.
Costs
67 Since the cancellation applicant has succeeded in full, the EUTM proprietor must
bear the fees and costs in both the cancellation and appeal proceedings in
accordance with Article 85(1) EUTMR. The EUTM proprietor must, therefore,
pay the cancellation fee (EUR 700) and the appeal fee (EUR 720) and the
cancellation applicant’s representation costs in respect of the cancellation
proceedings (EUR 450) and the appeal proceedings (EUR 550), fixed in
accordance with Article 85(6) EUTMR.
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Order
On those grounds,
THE BOARD
hereby:
1. Annuls the contested decision and declares the contested EUTM invalid;
2. Orders the EUTM proprietor to pay the cancellation
applicant EUR 2 420 in respect of its fees and costs.
Signed
S. Stürmann
Signed
A. Szanyi Felkl
Signed
S. Martin
Registrar:
Signed
H. Dijkema
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