CANCELLATION No 13 023 C (INVALIDITY)

Difusión Consumo S.L, Ronda Santa María 200, 08210 Barberá del Vallés (Barcelona) Spain (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2º piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Canea Pharma Chemisch-pharmazeutische Vertriebsgesellschaft mbH, Tarpenring 12, 22419 Hamburg, Germany (EUTM proprietor), represented by SGP Schneidergeiwitz Rechtsanwalts GmbH, Hörvelsinger Weg 51, 89081 Ulm, Germany (professional representative).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is partially upheld.

2.        European Union trade mark No 14 992 788 is declared invalid for some of the contested goods, namely:

Class 3:        Cosmetics and cosmetic preparations.

Class 5:        Pharmaceutical preparations; Nutritional supplements.

        

3.        The European Union trade mark remains registered for all the remaining goods, namely:

Class 29:        Oils and fats; Dairy products and dairy substitutes; Processed fruits, fungi and vegetables (including nuts and pulses).

4.        Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 14 992 788. The application is based on, inter alia, Spanish trade mark registration No 147 793. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant focuses its arguments on comparing the Spanish trade mark ‘EUDERMIN’ protected for goods in Classes 3 and 5 and the contested EUTM. It argues that the contested goods in Class 3 are identical to the applicant’s goods in the same class whereas the contested goods in Classes 5 and 29 are either similar or similar to a low degree. With regards to the comparison of the signs, it considers that ‘EUDERMIN’ and ‘EUDERMIS’ are visually and aurally highly similar and are meaningless for the relevant consumers. As a result, there is a likelihood of confusion, even for those goods found to be similar to a low degree, based on the interdependence principle.

The EUTM proprietor admits certain similarity of the goods in Class 3. However, it considers that the contested goods in Classes 5 and 29 are not similar to the applicant’s goods. The EUTM proprietor also admits certain similarity of the signs. However, it argues that the differences in the final letters ‘N’ and ‘S’ create a different overall impression. Finally, it contends that the degree of attention of the relevant public with regards to goods in Class 3 and 5 is high.  

The applicant did not submit observations in reply within the time limit.

On 21/02/2017, the EUTM proprietor requested the suspension of the proceedings due to ongoing negotiations with the applicant.

On 03/03/2017, the Cancellation Division refused such request as it was not requested jointly by both parties. It further informed the parties that a decision on the substance would be taken on the basis of the evidence before it.

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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Spanish trade mark registration No 147 793.

1. The goods

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.

The goods on which the application is based are the following:

Class 3:        Essences; perfumes; cosmetics and all kinds of goods and preparations for perfumery; toiletries; beauty and dentifrices.

Class 5:        Hygiene preparations.

        

The contested goods are the following:

Class 3:        Cosmetics and cosmetic preparations.

Class 5:        Pharmaceutical preparations; Nutritional supplements.

Class 29:        Oils and fats; Dairy products and dairy substitutes; Processed fruits, fungi and vegetables (including nuts and pulses).

Contested goods in Class 3

Cosmetics are identically contained in both lists of goods.

The contested cosmetics preparations are included in the broad category of the applicant’s cosmetics. Therefore, they are identical.

 

Contested goods in Class 5

The contested pharmaceutical preparations are considered similar to the applicant’s cosmetics in Class 3. They can have the same purpose (for instance, skin-care). Moreover, they can coincide in producer as it is not uncommon that pharmaceutical companies (especially those focused on skin-care products) also manufacture cosmetics. Finally, the goods coincide in end users and can be sold in the same distribution outlets.

The contested nutritional supplements, also referred to as dietary supplements or food supplements, are foodstuffs the purpose of which is to supplement the normal diet and which are concentrated sources of nutrients or other substances with a nutritional or physiological effect, alone or in combination, marketed in dose form, namely forms such as capsules, pastilles, tablets, pills and other similar forms, sachets of powder, ampoules of liquids, drop dispensing bottles, and other similar forms of liquids and powders designed to be taken in measured small unit quantities (see Article 2(a) of  Directive 2002/46/EC of the European Parliament and of the Council of 10/06/2012 on the approximation of the laws of the Member States relating to food supplements).

Nutritional supplements can therefore coincide in nature with the applicant’s cosmetics, in Class 3 as nowadays cosmetics can also be a source of nutrients. It is not uncommon to use nutritional supplements in addition to cosmetics with the intention of body-care (for instance, to prevent hair loss or broken nails). Moreover, they can coincide in end users and can be sold in the same distribution channels. Finally, these goods can be in competition. Therefore, they are similar to a low degree.

Contested goods in Class 29

The contested oils and fats; Dairy products and dairy substitutes; Processed fruits, fungi and vegetables (including nuts and pulses) are foodstuff products intended for human consumption.

These goods have no point of contact with the applicant’s goods in Class 3 and 5 (broadly, perfumery, cosmetic and hygiene products). The nature and intended purpose is different (cover the daily consumption needs vs body-care). Moreover, they are normally manufactured by different companies. In addition, they are sold in different outlets or sold in different sections of department stores and large supermarkets. The goods are therefore dissimilar.

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 and similar to various degrees are directed at the public at large. The degree of attention may vary from average (as regards mass consumption goods in Class 3) to higher than average (for pharmaceutical preparations in Class 5).

3. The signs

EUDERMIN	EUDERMIS
Earlier trade mark	Contested trade mark

The relevant territory is Spain.

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).

Both marks are word marks consisting overall of fanciful terms. However, in view of the relevant goods in Classes 3 and 5, it cannot be excluded that part of the relevant public in Spain will breakdown the sign into EU-DERMIN and EU-DERMIS and associate both suffixes -DERMIN and -DERMIS with ‘derm’, ‘derma’, ‘dermis’ etc., that is, allusive to the skin. It should be noted in this regard that there are many terms in the Spanish vocabulary referring to the skin that include ‘derm’ and derivatives (e.g. dermatólogo, dermatología, dermatitis, dermis, epidermis). For this part of the relevant public, the elements -DERMIN and -DERMIS will be weak in connection to the relevant goods.

Visually and aurally, the signs are practically identical as they coincide in all of their letters/sounds of letters except in the ending letters ‘N’ of the earlier sign and ‘S’ of the contested EUTM.

Moreover, it should be noted that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are highly similar from a visual and aural point of view.

Conceptually, as mentioned above, part of the public in the relevant territory will perceive the elements –DERMIN and –DERMIS as allusive to ‘skin’. To the extent that this element in both signs will be allusive of the same idea, the signs are conceptually highly similar for part of the public.

For the other part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 meaning for any of the 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 (at least for part of the public) in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Moreover, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods have been found to be partially identical, partially similar to various degrees and partially dissimilar.

Taking into account the fact that the earlier trade mark and the contested EUTM share most of their letters, that the different endings ‘N’ and ‘L’ cannot counteract the visually and aurally high similarities, and that for part of the public, the signs convey a similar meaning, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s Spanish trade mark registration No 147 793.

In view of the similarities of the signs, a risk of confusion exists even if the level of attention of the consumers is enhanced for part of the goods. A high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56, decision of 06/09/2010, R 1419/2009-4, Hasi).

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark. In light of the similarities of the signs and pursuant to the interdependence principle, the application is also successful insofar as the goods that are similar to a low degree are concerned.

The rest of the contested goods in Class 29 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods cannot be successful.

The applicant has also based its cancellation application on the following earlier trade marks:

• International trade mark registration No 441 198 for the word mark ‘EUDERMIN’ designating the Benelux, France, Italy, Austria and Portugal for the same goods in Class 3 as the Spanish trade mark registration No 147 793;
• Spanish trade mark registration No 2 898 006 for the figurative mark (EUDERMIN XGEN) for the following goods in Class 3: cosmetic products for the skin care; body creams.

The other earlier rights invoked by the applicant cover the same a narrower scope of goods. Therefore, the outcome cannot be different for goods for which the cancellation application has already been rejected; there is no likelihood of confusion for those goods.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation 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 Cancellation Division will decide a different apportionment of costs.

Since the cancellation 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 Cancellation Division

Ioana MOISESCU

Elisa ZAERA CUADRADO

Judith NÉMETH

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.