OPPOSITION DIVISION
OPPOSITION No B 2 693 086
Gabriel Serrano Sanmiguel, Polígono Industrial Rafelbuñol – Massamagrell, 3,
46138 Rafelbuñol – Valencia, Spain (opponent), represented by Kapler, Calle
Orense, 10, 1º, Of. 12, 28020 Madrid, Spain (professional representative)
a g a i n s t
Académie Scientifique de Beauté, 157-189 Rue Léon Jouhaux, 78507 Sartrouville,
France (applicant), represented by Cabinet Erick Landon, 154 Boulevard
Malesherbes, 75017 Paris, France (professional representative).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 693 086 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 042 741 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 042 741, ‘HYDRADERM’. The opposition is
based on Spanish trade mark registration No 1 626 116, ‘HIDRADERM’. The
opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must 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.
Decision on Opposition No B 2 693 086 page: 2 of 8
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of the trade mark on
which the opposition is based, namely Spanish trade mark No 1 626 116.
The date of filing of the contested application is 27/01/2016. The opponent was
therefore required to prove that the trade mark on which the opposition is based was
put to genuine use in Spain from 27/01/2011 to 26/01/2016, inclusive.
The request was submitted in due time and is admissible given that the earlier trade
mark was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 3: Cosmetics products, not included in other classes.
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 25/11/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
date of filing the request for proof of use), the Office gave the opponent until
30/01/2017 to submit evidence of use of the earlier trade mark. The deadline was
extended until 30/03/2017. On 16/02/2017, within the time limit, the opponent
submitted evidence of use.
The evidence to be taken into account is the following:
Document 1: 42 invoices, dated between 27/01/2011 and 27/01/2016, issued
by Sesderma S.L. to several clients in Spain, concerning sales of various
types of cosmetics.
Document 2: 35 purchase orders, from 26/01/2011 to 25/01/2016, issued by
Sesderma S.L. to several clients in Spain, concerning sales of various types
of cosmetics.
Document 3: an extract from the Sidatex database concerning the trade
mark licence granted by the opponent to Sesderma S.L. for the use of earlier
Spanish trade mark registration No 1 626 116.
Document 4: extracts from magazines, blogs and other publications about
the beauty and cosmetics industry, namely:
– an article published in the magazine Valencia Business of 01/03/2013;
– an article published in the magazine Ultimate of 13/03/2013;
– an advertisement in the magazine Telva;
– an advertisement in the magazine Oxxo;
– an article published in the online magazine Nosotras.com;
– a post on the blog Loca por los Tacones, dated 03/04/2013;
Decision on Opposition No B 2 693 086 page: 3 of 8
– an article about the opponent, Mr Gabriel Serrano Sanmiguel, published in
the magazine Las Provincias of 22/02/2013;
– an advertisement in the publication Inforxarxa;
– an article published in the magazine Im Farmacias;
– a post on the blog A Miúda dos Saltos Altos, dated 02/01/2013;
– an article published in the magazine Correo Farmaceutico (in the issue for the
week commencing 02/04/2012);
– an article published in the online magazine BellezaMedica.es about an award
received by the facial cream Hidraderm in Estonia;
– an article published in the magazine Ddermis;
– a post on the blog El Blog de Mery, dated 25/10/2012;
– a post on the blog El Tocador de Khimma, dated 10/01/2013;
– an advertisement in the magazine Estar Vital, issue of June 2012, and an
article published in the same magazine regarding the recognition of the trade
mark ‘Hidraderm’ in Estonia;
– a post on the blog Fashion & Beauty, dated 28/05/2012;
– an advertisement in the magazine Harper’s Bazaar of June 2012;
– a brochure showing goods bearing the trade mark ‘Hidraderm’.
Document 5: a copy of the EUIPO decision on opposition B 1 289 786
concerning the refusal of the trade mark ‘Hidraderm’.
The invoices, the purchase orders and the extracts from magazines, blogs and other
publications show that the place of use is Spain. This can be inferred from the
language of the documents (Spanish), the currency mentioned (euros) and some
addresses in Spain. Therefore, the evidence relates to the relevant territory.
Most of the evidence is dated within the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken
into account, including the nature of the relevant goods or services and the
characteristics of the market concerned, the territorial extent of use, and its
commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the
factors taken into account. Thus, the fact that commercial volume achieved under the
mark was not high may be offset by the fact that use of the mark was extensive or
very regular, and vice versa. Likewise, the territorial scope of the use is only one of
several factors to be taken into account, so that a limited territorial scope of use can
be counteracted by a more significant volume or duration of use.
The documents filed, namely the invoices, provide the Opposition Division with
sufficient information concerning the commercial volume, the territorial scope, the
duration, and the frequency of use.
Use of the mark need not be quantitatively significant for it to be deemed genuine.
Although the quantities of ‘HIDRADERM’ products mentioned in the invoices range
between 1 and 3 units of certain types of cosmetics, priced between EUR 5.76 and
EUR 22.85, it should be stressed that the opponent has not been requested or
Decision on Opposition No B 2 693 086 page: 4 of 8
expected to submit each and every invoice issued. The sample invoices submitted
are dated throughout the relevant period and, therefore, show that the use was
continuous. In addition, the invoice numbers are not consecutive, which implies that
other invoices were issued in between.
Therefore, the Opposition Division considers that the opponent has provided
sufficient indications concerning the extent of use of the earlier mark.
The evidence shows that the mark has been used in accordance with its function and
as registered for all the goods for which it is registered. The earlier mark was used on
the products as body milk, oatmeal roses water, bath gel, hand cream, orchid water,
cleansing milk, facial cream and liposomal serum, which belong to the general
category of cosmetic products for which the mark is registered.
In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before
01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in
accordance with its function, of use of the mark as registered, or of a variation thereof
according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for
the goods and services for which it is registered.
According to Article 18(1), second subparagraph, point (a), EUTMR, the following will
also constitute use within the meaning of paragraph 1: use of the European Union
trade mark in a form differing in elements that do not alter the distinctive character of
the mark in the form in which it was registered, regardless of whether or not the trade
mark in the form as used is also registered in the name of the proprietor. When
examining the use of an earlier registration for the purposes of Article 47(2) and
(3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of
the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the earlier mark ‘HIDRADERM’ is depicted on the invoices
together with the words ‘leche corporal’ (body milk), ‘agua de avena rosas’ (rose
oatmeal), ‘gel de baño’ (bath gel), ‘crema de manos’ (hand cream), ‘agua de
orquideas’ (orchid water), ‘leche limpiadora’ (cleansing milk), ‘crema facial’ (facial
cream) and ‘hyal liposomal serum’ (hyal liposomal serum). These additional elements
are descriptive and do not alter the distinctive character of the mark in the form in
which it was registered.
In view of the above, the Opposition Division considers that the evidence does show
use of the sign as registered within the meaning of Article 18(1), second
subparagraph, point (a), EUTMR.
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).
Taking into account the evidence in its entirety, although the evidence submitted by
the opponent is not particularly exhaustive, it does reach the minimum level
necessary to establish genuine use of the earlier trade mark during the relevant
period in the relevant territory.
Decision on Opposition No B 2 693 086 page: 5 of 8
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 3: Cosmetics products, not included in other classes.
The contested goods and services are the following:
Class 3: Essential oils and aromatic extracts; perfumery and fragrances; body
cleaning and beauty care preparations.
Class 44: Human hygiene and beauty care.
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
The contested body cleaning and beauty care preparations are included in the broad
category of, or overlap with, the opponent’s cosmetics products, not included in other
classes. Therefore, they are identical.
The contested perfumery and fragrances are similar to a high degree to the
opponent’s cosmetics products, not included in other classes, as they have the same
purpose. They can also have the same producers, end users and distribution
channels.
The contested essential oils and aromatic extracts are similar to the opponent’s
cosmetics products, not included in other classes, as they have the same purpose.
They can also have the same end users and distribution channels.
Contested services in Class 44
The contested human hygiene and beauty care are similar to the opponent’s
cosmetics products, not included in other classes, as they have the same purpose.
They can have the same end users and distribution channels. Furthermore, they are
complementary.
Decision on Opposition No B 2 693 086 page: 6 of 8
b) 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 to various
degrees are directed at the public at large.
The degree of attention is average.
c) The signs
HIDRADERM HYDRADERM
Earlier trade mark Contested sign
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 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, § 23).
As regards both signs, although each is composed of one verbal element, the
relevant consumers, when perceiving a verbal sign, will break it down into elements
that suggest a concrete meaning, or that resemble words that they already know
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion,
EU:T:2008:33, § 58). Considering that the element ‘DERM’ of both signs will be
associated with a specific meaning, as explained below, both signs will be spilt into
‘HYDRA’/‘HIDRA’ and ‘DERM’.
The coinciding element ‘DERM’ will be perceived as a suffix commonly used in
connection with skin (information extracted from Diccionario de Real Academia
Espanola on 26/09/2017 at http://dle.rae.es/?id=CHeWIZ5). Bearing in mind that the
relevant goods and services could be used to care for and scent the skin, this
element is weak for all the relevant goods and services.
In addition, the elements ‘HIDRA’ of the earlier mark and ‘HYDRA’ of the contested
mark would evoke the idea of ‘hidratación’ (hydration) for the relevant public. Bearing
in mind that the relevant goods and services could be used to hydrate the skin, this
element is weak for all the relevant goods and services except perfumery and
fragrances, since most cosmetic skincare goods and lotions for skincare have
moisturising/hydrating properties.
Visually, the trade marks are highly similar, since they differ in only one letter, ‘I’ in
the earlier mark versus ‘Y’ in the contested mark, out of nine.
Aurally, considering that in Spanish the letters ‘I’ and ‘Y’ are pronounced in the same
manner, the signs are identical.
Decision on Opposition No B 2 693 086 page: 7 of 8
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the elements ‘HIDRA’ of the earlier mark and ‘HYDRA’ of the
contested mark and the coinciding element ‘DERM’, included in both signs, will be
associated with the meanings explained above. To that extent, the signs are
conceptually identical.
As the signs have been found identical in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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 opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. Considering what has been stated above in section c) of this
decision, the distinctiveness of the earlier mark must be seen as lower than average
because the earlier goods are cosmetics that include products for skin hydration.
e) 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.).
The goods and services are identical or similar to various degrees to the opponent’s
goods and target the public at large. The degree of attention is average.
From the point of view of the relevant public, the signs are visually highly similar, as
they coincide in the letters ‘H*DRADERM’, which are in the same positions in both
marks. The signs differ visually in their second letters, namely ‘I’ in the earlier mark
and ‘Y’ in the contested mark. Aurally and conceptually, the signs are identical.
Therefore, the commonalities between the signs clearly outweigh the visual
difference in only one letter. They are also sufficient to outweigh the lower than
average degree of distinctiveness of the earlier mark.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323,
§ 26).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 1 626 116. It follows that the contested trade mark must be
rejected for all the contested goods and services.
Decision on Opposition No B 2 693 086 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Zuzanna STOJKOWICZ Francesca DRAGOSTIN Ioana MOISESCU
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.