OPPOSITION No B 2 506 395

Dermage-Clínica de Dermatologia e Cirurgia, Lda., Avenida António Augusto de Aguiar, nº 17, 2º Dtº, 1050-012 Lisboa, Portugal (opponent), represented by Garrigues IP, Unipessoal Lda., Avenida da República, 25 – 1º, 1050-186 Lisboa, Portugal (professional representative)

a g a i n s t

Tecnopharma Farmácia de Manipulação Ltda, Rua Aguiar Moreira, 480 -Parte- Bonsucesso, Rio de Janeiro 21 041 070, Brasil (applicant), represented by Joaquim Calado Marques, Av. Álvares Cabral no. 47 – r/c, 1250-015 Lisboa, Portugal (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 506 395 is partially upheld, namely for the following contested goods:

Class 3:         Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

2.        European Union trade mark application No 13 418 611 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 418 611. The opposition is based on:

1. European Union trade mark registration No 6 795 132 “DERMAGE” which, after revocation proceedings C 9213, remains registered for goods in Class 5 and services in Class 44. This decision is final.

2. Portuguese trade mark registration No 418 371, “DERMAGE”, registered for goods in Classes 3 and 5, and services in Class 44.  

The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks “DERMAGE” on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 15/01/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Portugal from 15/01/2010 to 14/01/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely:

Both marks for the following goods in Class 5 and 44:

Class 5:         Cosmetic preparations for treating skin conditions; pharmaceutical preparations for the care, treatment and beautification of the skin; dietetic preparations for medical use with therapeutic effects, dietetic substances adapted for medical use, pharmaceutical preparations and substances.

Class 44:         Clinics for treating the skin and cosmetic medicine, including skin operations and cosmetic surgery, healthcare, medical, hygiene and beauty care.

Additionally, the Portuguese mark also for the following goods in Class 3:

Class 3:         Skincare preparations; cosmetics, preparations for the care of the hair and scalp, essential oils, cosmetic products for the care, treatment and beautification of the skin; perfumery, dentifrices.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 16/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/01/2016 to submit evidence of use of the earlier trade marks. This deadline was then extended in accordance with Rule 71 EUTMIR until 16/03/2016. On 14/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence filed is the following:

• Item 1: a declaration from a chemist, dated 15/07/2014, and what seems to be three till receipts showing the same date. The declaration states that from February 2014 the chemist has supplied the clinic owned and managed by Ms Alexandra Osório with several cosmetics named ‘Dermage’.
• Item 2: a declaration from a chemist, dated 15/07/2014. The declaration states that from 2012 the chemist has supplied the clinic owned and managed by Ms Alexandra Ósorio with several cosmetics. The declaration is accompanied by some photographs of products.
• Item 3: 58 invoices dated 2010 to 2015.
• Item 4: 32 pictures depicting products.
• Item 5: 12 testimonials by clients in relation to the services provided in the clinic.
• Item 6: five pictures of preparations made in pharmacies to better suit the needs of clients.
• Item 6A: declaration of the representative of the company Carmado S.L. confirming that since 2010 they have been supplying the clinics with the products seen in the invoices.
• Item 6B: 56 invoices issued by Carmado S.L. dated 2010-2015.
• Item 7: extracts from ERS (Entidade Reguladora da Saúde, the independent body responsible for regulating the activity of health care providers in Portugal).
• Item 8: copy of a declaration made by ERS in 2014 stating that Mrs. Alexandra Osório is since 2011 the director of DERMAGE clinic.
• Item 9: an extract from the Portuguese Registry of Companies with a record of a change of name.
• Item 10: an article published in January 2010 in the Portuguese magazine Ultimate Beauty regarding the anti-ageing treatments conducted at the DERMAGE Clinic.
• Items 11 and 12: articles published in the Portuguese newspaper Correio da Manhã, dated 04/12/2011 and 05/12/2011, regarding hair treatments conducted at the DERMAGE Clinic.
• Item 13: 16 invoices from 2010-2015 showing the sale of beauty and health products.
• Item 14: a gift voucher for a rejuvenating treatment at the DERMAGE Clinic. The voucher is valid until 31/05/2012.
• Item 15: several examples of campaigns conducted by the clinic to advertise its services.
• Item 16: some information in relation to a TV show in which Ms Alexandra Osório participated, and some screenshots from a YouTube video regarding the show Viva Saúde broadcasted by the TV Channel RTP Africa. The show was aired in 2012.
• Item 17: a copy of an advertisement that appeared in the Portuguese magazine VIP, dated May 2013.
• Item 18: proposal made by the advertising agency “Glow” for the branding of the DERMAGE clinic (31/10/2011).
• Item 19: a set of stationery products bearing the trade mark DERMAGE.
• Item 20: a number of forms used by the clinic to inform its clients on how to use a number of products.
• Item 21: a set of leaflets regarding the services rendered under the DERMAGE trade mark.
• Item 22: a leaflet written by Ms Alexandra Osório that explains the history and the services offered by the clinic.
• Items 23 and 24: printouts from the Portuguese websites ‘SAPO Saúde’ and ‘SAPO Mulher’ with references to beauty treatments performed at the DERMAGE Clinic.
• Item 25: six screenshots of DERMAGE’s websites and social network pages.
• Item 26: 5 screenshots of DERMAGE’s Facebook with information relating to some TV shows in which the company participated in 2012.
• Item 27: 4 screenshots of webpages that advertise the services of the company.
• Item 28: articles from the press.
• Item 29: several examples of advertising in Portuguese magazines.
• Item 30: four testimonials written by clients.
• Item 31: three examples of booking of appointments for several patients.
• Item 32: several pictures of the entrance and interior of the DERMAGE clinic in Lisbon.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The evidence, when examined on the whole, indeed proves the use of some goods and services during the relevant period, in the relevant territory, namely Portugal. The documents are dated within the relevant period and the language they are drafted in is Portuguese, with translations submitted by the opponent.

The trademark in question appears with modifications that are in accordance with Article 15 EUTMR, as the mark is used with another sign pointing to the origin of the goods and services:  

In relation with the extent, it is not particularly important in terms of figures, but there are accounting documents for almost every one of the years that comprise the relevant period, proving that the use has been regular.

As it becomes obvious from the proof submitted, the first line of business of the opponent’s company is the offering of services. In relation to the goods there is, however, also enough information, as the evidence for example shows that the opponent’s company has been supplied with some products (items 6A and 6B) that were then sold under the mark “DERMAGE” by the opponent’s company to different clients (item 3).    

In relation to the nature of the goods and services, the documents contained in item 7 are particularly informative, as the Board of Health Regulatory Authority certifies that the activities carried out in the clinic of the opponent not only concern purely cosmetic treatments, but the company is a “health care provider” in “the typology of Medicine/Doctor’s Office”. This medical/health care side of the goods and services concerned is also supported by the information contained in further documents (item 5, for example, aside from the information contained in press articles, etc. (item 10, which informs that part of the treatments are carried out under local anaesthesia, item 13, which are invoices for, for example, a number of “dermatologic consultations” sic).  

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

The evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services protected, either because there is not enough information in relation to the extent of the use of some goods, for example, or because there is no information at all in relation to some of the goods and services.

Specifically with regard to the goods in Class 5, and although the opponent not only provides services in the cosmetic field but also some services that can be classified as “medical services”, the proof on file suggests that the goods sold under the trademark at issue are primarily cosmetic products.  

As for the services, the specification in Class 44 is very broadly worded, and several subcategories can be found in them.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

 

Therefore, in the present case the evidence shows genuine use of the trade mark only for the following goods and services:

Class 3:         Skincare preparations; cosmetics, preparations for the care of the hair and scalp, cosmetic products for the care, treatment and beautification of the skin.

Class 5:         Cosmetic preparations for treating skin conditions.

Class 44:         Clinics providing dermatological treatments.  

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 3:         Skincare preparations; cosmetics, preparations for the care of the hair and scalp, cosmetic products for the care, treatment and beautification of the skin.

Class 5:         Cosmetic preparations for treating skin conditions.

Class 44:         Clinics providing dermatological treatments.   

The contested goods 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.

Cosmetics appear with the same wording in both specifications (earlier Portuguese mark No 418 371) and are, therefore, identical. The goods hair lotions are included in the opponent’s preparations for the care of the hair and scalp (earlier Portuguese mark No 418 371) and the goods are, therefore, identical. 

Perfumery is highly similar to cosmetics (earlier Portuguese mark No 418 371) as the goods have the same purpose, and they can coincide in producer, end user and distribution channels.

Soaps are similar to cosmetics (earlier Portuguese mark No 418 371) as the goods can coincide in producer, end user and distribution channels.

Essential oils are similar to cosmetics (earlier Portuguese mark No 418 371) as the goods have the same purpose and they can coincide in end user and distribution channels.

Dentifrices are similar to a low degree with cosmetics (earlier Portuguese mark No 418 371) as they can coincide in end user and distribution channels.

The goods bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations are dissimilar to all the goods and services of the opponent. The former goods are used for laundry and for the polishing, etc., of objects, and therefore their purpose, commercial origin, channels of trade are not the same as the cosmetics in Classes 3 and 5, nor are they in competition or complementary to them. As for the services protected by the earlier marks in Class 44, bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations are not complementary to them, as they are not indispensable or important for the use of the other, nor provided by the same companies (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).

2. 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 found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

DERMAGE	DERMAGE
Earlier trade marks	Contested sign

The signs are identical.

4. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

The signs were found to be identical and a part of the contested goods, namely cosmetics, hair lotions are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Furthermore, the contested goods soaps; perfumery, essential oils, dentifrices were found to be similar to various degrees to those covered by the earlier trade mark No 418 371 in Class 3. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

The rest of the contested goods are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

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.