CANCELLATION No 12 298 C (INVALIDITY)
Anika Cosmetics S.R.L., Via Polveriera 47, Naples 80143, Italy (applicant), represented by Jacobacci & Partners S.P.A., Via delle Quattro Fontane, 15, 00184 Roma, Italy (professional representative)
a g a i n s t
Frontline Solutions International Ltd, No. 1 Bay Street, Nassau 8198, Commonwealth of the Bahamas (EUTM proprietor), represented by Rechtsanwälte Hentschke & Blükle, Kirchstr. 11, 74336 Brackenheim, Germany (professional representative).
On 10/02/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 8 205 692 is declared invalid for all the contested goods and services, namely:
Class 3: Perfumery, essential oils, cosmetics, hair lotions.
Class 44: Hygienic and beauty care for human beings.
3. The European Union trade mark remains registered for all the uncontested goods, namely:
Class 5: Food supplements with a roughage or carbohydrate base.
4. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 8 205 692, namely against all the goods and services in Classes 3 and 44. The application is based on, inter alia, Italian trade mark registration No 1 228 929. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. In relation to the other rights on which the declaration of invalidity is based, the applicant invoked Article 53(1)(c) in connection with Article 8(4) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant, an Italian company founded in 2002, claims that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR between the contested figurative mark, , registered for, inter alia, goods in Class 3 and services in Class 44, and the applicant’s earlier word mark, ‘ANIKA Cosmetics’, registered for goods in Class 3. The applicant argues that the contested goods and services are identical or similar to the applicant’s goods, and that the signs are similar on account of the shared name, ‘ANIKA’, which is the most distinctive element in the applicant’s mark. In addition, the applicant claims that its mark enjoys a high degree of distinctiveness acquired through long-standing and intensive use.
In relation to Article 8(4) EUTMR, the applicant states that it owns the Italian company name, ‘ANIKA COSMETICS S.r.L.’, and the domain name, www.store.anika.it, and that according to Article 12(1)(b) of the Italian Industrial Property Code these signs, used in the course of trade, are protected against the adoption of a subsequent mark that is identical or similar, registered or applied for identical or similar goods or services, provided that such prior signs are notoriously known throughout Italy, or a substantial part thereof. In order to support the foregoing claims, the applicant submits evidence, consisting of certificates for substantiating the applicant’s earlier rights, a large selection of invoices dated from 2004 to 2015, several screenshots from websites, and a list of ‘ANIKA’ stores in Italy.
In its reply, the EUTM proprietor argues that its rights in the trade mark ‘ANIKA’ predate those of the applicant. The EUTM proprietor states that the former owner of the contested EUTM, ‘Anika chemisch-physikalische Analysen und Kosmetik GmbH’, was founded in 1985 and since then the name ‘ANIKA’ has been used on the packaging and in advertising of cosmetic products. To support these claims, the EUTM proprietor submits two invoices (one dated 07/06/2001, issued to a customer in the U.S.A, and the other one dated 14/01/2000, issued to a customer in Taiwan); a press clip showing an advert, in German, published in Sport on 10/02/2001, and a price list for 1998. The EUTM proprietor claims that a company name gives a world-wide right to prohibit the infringement of the company name, even through trade marks.
The applicant does not submit any observations in reply.
The application for declaration of invalidity is based on more than one earlier right and ground. The Cancellation Division finds it appropriate to first examine the applicant’s claim in relation to earlier Italian trade mark registration No 1 228 929, based on Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods on which the application is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
The contested goods and services are the following:
Class 3: Perfumery, essential oils, cosmetics, hair lotions.
Class 44: Hygienic and beauty care for human beings.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 3
Perfumery, essential oils, cosmetics, hair lotions are identically contained in both lists of goods.
Contested services in Class 44
The contested hygienic and beauty care for human beings is a broad category encompassing a range of services of providing treatments and consultancy in relation to beauty care in spas, beauty salons etc. On the other hand, the applicant’s cosmetics in Class 3, are designed to be applied to the human body for the purpose of cleaning it, making it smell nice, altering its appearance, protecting it or keeping it in good condition. The purpose of the contested services is also to wash, purify and make the human body more attractive. Furthermore, hygienic and beauty care services often include cosmetic treatments requiring use of beauty products. The establishments which provide such services may also offer for sale beauty and health products bearing their trade mark, or as the case may be, goods from an outside supplier. Consequently, the distribution channels of the contested services and the applicant’s goods may be the same. Moreover, they are directed at the same public. It is not uncommon that, in hygienic and beauty care establishments, the treatments are followed by the application of body lotions, creams or other cosmetic preparations, and the public may expect treatment with these products when they are in a spa or beauty salon. Therefore, there is some complementarity between those goods and services.
In view of the above, the contested hygienic and beauty care for human beings is similar to the applicant’s cosmetics in Class 3.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are directed at the public at large. The degree of attention is considered to be, on the whole, average.
- The signs
Earlier trade mark
Contested trade mark
The relevant territory is Italy.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark comprising the words ‘ANIKA Cosmetics’. The contested trade mark is composed of a slightly stylised representation of the word ‘ANIKA’.
As argued by the applicant, Anika is a female name. Although this name is not common in the relevant territory, the Cancellation Division finds it reasonable to assume that the relevant public will perceive the word ‘ANIKA’, present in both signs at issue, as a female given name, probably of a foreign origin. In relation to the relevant goods and/or services, that word has an average degree of inherent distinctiveness.
As regards the word ‘Cosmetics’ included in the earlier mark, the public in the relevant territory will associate it with preparations used to enhance or maintain the beauty of the human body. That perception will occur on account of the very similar equivalent terms that exist in Italian, for instance ‘cosmetico/-a’. In the context of the relevant goods covered by the earlier mark, namely cosmetics, that element has a very weak distinguishing capacity.
As regards the stylisation of the word element in the contested sign, it is customary in the relevant market sector to depict verbal elements of trade marks in an embellished fashion to endow them with a new or fashionable image. The public will perceive the graphical representation of the word ‘ANIKA’ as a mere carrier of the verbal element.
Visually, the signs coincide in the word ‘ANIKA’ which is included in the earlier mark as its most distinctive component and constitutes the contested sign. The signs differ in the earlier mark’s element ‘Cosmetics’, which only has limited distinctiveness for the goods at issue, and the slight stylisation of the word ‘ANIKA’ in the contested sign. Therefore, the signs are highly similar visually.
Aurally, the pronunciations of the signs coincide in the sound of the word ‛ANIKA’ which is included in the earlier mark as its most distinctive component and constitutes the entirety of the contested sign. The signs differ in the earlier mark’s element ‘Cosmetics’ which only has limited distinctiveness for the goods at issue. Therefore, the signs are highly similar aurally.
Conceptually, the public in the relevant territory will perceive the contested sign as a female name, as explained above. The earlier mark, taken as a whole, does not exist as such in common parlance in the relevant territory, and it will be perceived as a sum of its parts, namely the female name juxtaposed to a reference to cosmetic preparations. On account of the concept underlying the element ‘ANIKA’ and the fact that the earlier mark’s element ‘Cosmetics’ only has limited distinctiveness for the goods at issue, the signs are highly similar conceptually.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the applicant, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear meaning for the pertinent goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The high degree of similarity between the signs results from the element ‘ANIKA’ that constitutes the entirety of the contested sign, notwithstanding the slight stylisation, and is fully included in the earlier mark.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings.
When being confronted with the trade marks at issue, consumers may think that the earlier mark, ‘ANIKA Cosmetics’, expressly denotes a range of cosmetic products whilst the contested figurative mark, ‘ANIKA’, is used for hygienic or beauty care preparations and treatments that are offered under the control of the same commercial entity.
Since the differences between the signs are confined to weak or secondary elements, it is considered that they are clearly insufficient to enable to average consumer to safely distinguish between the signs in the context of identical or similar goods and services.
In its observations, the EUTM proprietor argues that its rights in the trade mark ‘ANIKA’ predate those of the applicant, and submits various items of evidence to substantiate this claim. Furthermore, the proprietor emphasises that the company name of the former owner of the contested EUTM contained the name ‘ANIKA’.
In that regard, the Cancellation Division notes that the right to an EUTM begins on the date when the EUTM is filed and not before. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts related to the EUTM which happened before its filing date are irrelevant because the applicant’s rights, insofar as they predate the EUTM, are prior to the EUTM proprietor’s EUTM.
For the purposes of assessing likelihood of confusion, the examination carried out by the Cancellation Division is in principle limited to the trade marks at issue. Therefore, the EUTM proprietor’s arguments in relation to any other intellectual property rights, even though they allegedly predate the filing date of the trade mark on which the declaration for invalidity is based, are irrelevant.
Therefore, the EUTM proprietor’s arguments are dismissed.
Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s Italian trade mark registration No 1 228 929. It follows that the contested trade mark must be declared invalid for all the contested goods and services in Classes 3 and 44.
The contested European Union trade mark remains registered for all the uncontested goods in Class 5.
Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the earlier mark due to its extensive use as claimed by the applicant. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(4) EUTMR in conjunction with Article 53(1)(c) EUTMR.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
|Jose Antonio GARRIDO OTAOLA
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.