Cellapy | Decision 581/2016-5

Date Published: Sep 28, 2017

THE BOARDS OF APPEAL

DECISION of the Fifth Board of Appeal of 8 March 2017

In Case R 581/2016-5

Cellap Laboratoire S.A. En Budron A2 1052 Le Mont-sur-Lausanne Switzerland Opponent / Appellant

represented by Wilson & Berthelot, 22 rue Bergère, 75009 Paris, France

GM Holdings Co., Ltd #1303, DMC Business-University Collaboration Research Center, 37 Maebongsan-ro Mapo-gu, Seoul Republic of Korea Applicant / Respondent

represented by Protectia Patentes Y Marcas S.L., C/ Arte 21, 2oA, 28033 Madrid, Spain

APPEAL relating to Opposition Proceedings No B 2 456 369 (European Union trade mark application No 13 222 237)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (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 2 September 2014, GM Holdings Co., Ltd (‘the

applicant’) sought to register the word mark

Cellapy

for the following list of goods:

Class 3 – Shampoos; hair rinses (shampoo-conditioners); hair conditioners; cosmetic preparations for baths; facial washes; body oils; liquid bath soaps; cosmetics; lipsticks; make-up; eye lotions; skin lotions; cosmetic lip care preparations; sun-block lotions; oils for cosmetic purposes; cleansing creams [cosmetic]; mask pack for cosmetic purposes; cosmetic kits; cosmetic products for the face and body.

2 The application was published on 8 October 2014.

3 On 8 January 2015, Cellap Laboratoire S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods.

4 The grounds of opposition were those laid down in Article 8(4) EUTMR.

5 The opposition was based on the following earlier rights:

– The trade name

CELLAP

used in the course of trade in France in respect of:

Cosmetic products.

– The trade name

CELLAP LABORATOIRE SA

used in the course of trade in France in respect of:

Cosmetic products.

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– The company name

CELLAP LABORATOIRE SA

used in the course of trade in France in respect of:

Cosmetic products.

– The domain name

cellap.ch

used in the course of trade in France in respect of:

Cosmetic products.

– The domain name

cellap.com

used in the course of trade in France in respect of:

Cosmetic products.

– The signboard

CELLAP SHOP FR

used in the course of trade in France in respect of:

Cosmetic products.

6 By decision of 28 January 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety and ordered the opponent to bear the costs. It based the decision, in particular, on the following reasons:

– The opponent did not submit sufficient information on the legal protection granted to the signs that have been invoked, namely the French trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’, the French company name ‘CELLAP LABORATOIRE SA’, the domain names ‘cellap.ch’ and ‘cellap.com’ and the French signboard ‘CELLAP SHOP FR’ in connection with ‘cosmetic products’. The following evidence was taken into consideration in particular in the present case:

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• Exhibit 1: printout from www.legifrance.gouv.fr in relation to Article L.711-4 of the CPI (in French and accompanied by a translation into English by WIPO).

• Exhibit 2: printout from www.inpi.fr (in French).

• Exhibit 3: printouts from www.legifrance.gouv.fr of judgments by the Cour de cassation’s Commercial Chamber of 19/11/2002 (Case No H2000/18130, ‘Casa International’) and of 10/07/2012 (Case No V/2008/12010; M20120367, ‘Coeur de Princesse’) (in French with a partial translation into English).

• Exhibit 6: printout of a judgment the Court of Appeal of Paris of 09/11/2014, (Case RG 2013/05804; M140442).

• Exhibit 8: printouts of judgments by the Court of Appeal of Paris of 22/05/2012 (Case RG 2011/20422; M20120283, ‘Marithé et François Girbaud’) and of 30/01/2013 (Case No 11/07953, ‘Cigarettec.com’) and of a summary from the law review Propriété Industrielle – Revue Mensuelle LexisNexis – Jurisclasseur, June 2014 (in French with a partial translation into English).

– According to the legal provisions cited above (Exhibit 1) and the case-law submitted by the opponent (Exhibit 8), the proprietor of a company name, of a trade name or of a domain name used in the course of trade in France is entitled to prohibit the registration of an identical or similar trade mark. Yet, pursuant to Article 8(4) EUTMR, the claimed earlier right has to confer upon its proprietor the right to prohibit the use of a later trade mark and not, or not only, the right to prohibit the registration of a subsequent trade mark. The legal provisions submitted by the opponent are not sufficient to establish that it enjoyed a right to prohibit the use of a later trade mark. Therefore, the opposition is not well founded under Article 8(4) EUTMR and must be rejected. The remaining evidence submitted by the opponent does not alter this conclusion.

7 On 25 March 2016, the opponent filed an appeal against the contested decision, requesting that the decision be annulled. The grounds of appeal were received on 27 May 2016.

8 In its observations in reply received on 27 July 2016, the applicant requested that

the appeal be dismissed.

Submissions and arguments of the parties

9 The arguments raised in the statement of grounds may be summarised as follows:

– All conditions for the application of Article 8(4) EUTMR were satisfied, including the fourth one, which requires for the opponent to demonstrate that the held right entitles it to prohibit the use of a subsequent trade mark. Thus,

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Article L.711-4 of the French Intellectual Property Code prevents signs that infringe earlier rights to be ‘adopté’, which must be construed as ‘adopted’ in English. Therefore, Article L.711-4 IPC encompasses the right to prohibit both the registration and the use of a subsequent trade mark. This interpretation of Article L.711-4 IPC’s scope was adopted by the General Court (21/10/2014, T-453/11 Gilbert Szajner v. OHIM and Forge de Laguiole SARL, § 37 and § 76) and acknowledged by the Office’s guidelines (PART C OPPOSITION SECTION 4 RIGHTS UNDER ARTICLE 8(4) and 8(4a) EUTMR.

10 The arguments raised in reply to the appeal may be summarised as follows:

– The whole documentation filed by the opponent in order to prove the continuous use in France of the signs on which the opposition was based shows the use of trade marks unrelated to the basis of the said opposition (and now appeal), namely the following trade marks: ‘CELLMEN’, ‘CELLCOSMET’, ‘The Swiss CELLSPA EXPERIENCE’, ‘ULTRACEL’ and ‘CELLECTIVE’. Therefore, the opponent has not proven the continuous use of the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’, of the company name ‘CELLAP LABORATOIRE SA’, of the domain names ‘cellap.ch’ and ‘cellap.com’ and of the signboard ‘CELLAP SHOP FR’.

– Should the Board accept to assess the likelihood of confusion between the contested sign and the opponent’s claimed earlier rights, it would conclude to the absence of likelihood of confusion. Even though the goods at stake may be deemed identical, the visual, phonetic and conceptual comparisons would reveal that the signs are dissimilar. Hence, the signs in conflict present no likelihood of confusion and can therefore coexist in the market.

Reasons

11 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and

49 CTMIR. It is, therefore, admissible.

Article L.711-4 IPC’s claim under Article 8(4) EUTMR

12 According to Article 8(4) EUTMR, upon opposition by the proprietor of a non- registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

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13 In the present case, the opponent refers to several earlier rights it claims to be based on the provisions of Article L.711-4 of the French Intellectual Property Code. The said earlier rights consist of two trade names, a company name, two domain names and a signboard. The said article of the French IPC precludes the adoption as a trade mark of a sign which infringes earlier rights, including the name or style of a company, a trade name or signboard known throughout the national territory, where there is a risk of confusion in the public mind.

14 According to the Opposition Division’s contested decision, French law may not justify the application of Article 8(4) EUTMR when the opponent relies on Article L.711-4 IPC. Following the argumentation of the Opposition Division, the said article only allows the proprietor of an earlier right to prohibit the registration of a subsequent mark, when Article 8(4) EUTMR requires for the national provision to allow the said proprietor to prohibit the use of a subsequent mark. Therefore, the Opposition Division considered that the French national provisions raised by the opponent did not meet the requirements set by Article 8(4) EUTMR.

15 The Board does not adhere to the Opposition Division’s reasoning. When construed in its correct meaning, the French word ‘adopté’ (‘adopted’) should be understood both as ‘registered’ and ‘used’ or ‘chosen’. Moreover, Article L.711-4 of the French Intellectual Property Code is classically admitted as a valid national provision enabling a proprietor to raise an opposition based on Article 8(4) EUTMR (see 21/03/2014, T-453/11, Laguiole, EU:T:2014:901, § 37). Moreover, the Office’s guidelines attest that Article L.711-4 IPC is, as a national law provision, a valid ground to apply Article 8(4) EUTMR.

16 Thus, contrary to the conclusion drawn by the Opposition Division, Article L.711-4 IPC must be deemed as enabling the proprietor of an earlier right to prohibit not only the registration of a sign as a trade mark, but also its use.

17 Therefore, Article L.711-4 IPC fulfils the requirements set by Article 8(4) EUTMR and may be the basis of such an opposition. As a matter of consequence, the Opposition Division wrongfully rejected the opposition on the basis that Article L.711-4 IPC could not be used as ground.

18 Consequently, the Board shall examine the merits of the opposition.

Article 8(4) EUTMR

19 Pursuant to Article 8(4) EUTMR, a European Union trade mark applied for shall not be registered upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade, whereby the sign must meet the following conditions: it must have been acquired prior to the date of application or the date of the priority claimed for the application for registration of the European Union trade mark and confer on its proprietor the right to prohibit the use of the subsequent trade mark. These conditions are to be examined using the national law of the relevant Member State. Moreover, according to European law, the earlier right must have been used in the course of trade of more than mere local significance, which is to be appreciated in regards to European standards. As these conditions are cumulative, the opposition fails if just one of these conditions

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is not satisfied (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 32, 33 and 47).

20 Therefore, the Board shall assess if the claimed earlier rights fulfil the following

requirements set by Article 8(4) EUTMR:

• The existence of an earlier right, prior to the contested trade mark’s date of application for registration, conferring on its proprietor the right to prohibit the use of a subsequent trade mark according to national law; and

• The use of the sign in the course of trade of more than mere local significance according to European standards.

21 The opponent invoked Article 8(4) EUTMR in relation to France. Therefore, the Board will only evaluate the merits of the opposition in the context of that territory.

22 In the present case, the relevant date for proving the existence of an earlier right is 2 September 2014, which corresponds to the date of application of the contested mark for products in Class 3.

Earlier French trade names

23 In its statement of grounds, the opponent claims that the trade names ‘CELLAP SHOP FR’ and ‘CELLAP LABORATOIRE SA’ are valid oppositions to the contested mark. However, the Board notices that the opposition is solely based on the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’. Therefore, all the arguments raised by the opponent concerning a so-called earlier right based on the trade name ‘CELLAP SHOP FR’ are to be disregarded.

24 Thus, in accordance with the opposition form, the assessment of existence of earlier rights on trade names benefitting the opponent will only pertain to the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’.

25 In support of its assertions, the opponent submitted evidence for the period after 2 September 2014 or for an undetermined period, which must therefore be left aside as they are not included in the relevant period:

• Exhibit 7: printouts from the opponent’s exclusive reseller in France and the Monaco website (‘cellcosmet-cellmen.com’) showing that the products sold on this website were exclusively intended for France. This document is dated 29 December 2014.

• Exhibit 9: whois records concerning the domain names ‘cellap.ch’ and ‘cellap.com’. The first two printouts establish that the domain name ‘cellap.ch’ is held by ‘CELLAP LABORATOIRE SA’. As regards to the second whois, it contains no data linking ‘cellap.com’ to the opponent, except for the website title, which is as follows: ‘Cellcosmet and Cellmen: exceptional skin cosmetics devoted to beauty – Cellap Laboratoire S.A. Cellcosmet and Cellmen –

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Switzerland’. These documents are dated 29 December 2014. This document provides no information related to the trade names alleged by the opponent.

• Exhibit 11-a: a printout of ‘cellcosmet-cellmen.com’ online shop dated 2 April 2015.

• Exhibit 11-b: a printout of ‘cellcosmet-cellmen.com’ online shop dated 9 December 2014.

• Exhibit 11-c: a printout of ‘cellcosmet-cellmen.com’ online shop’s terms and conditions dated 5 May 2015.

26 However, the opponent also submitted the following documents for the period before 2 September 2014, which will therefore be taken into account by the Board, as they fall within the relevant period:

• Exhibit 5: six invoices establishing sales of products branded ‘Cellcosmet’ and ‘Cellmen’ by ‘CELLAP LABORATOIRE S.A.’ from 13 January 1999 to 12 July 1999.

• Exhibit 10-1: printouts of brochures illustrating the CELLAP LABORATOIRE’s products branded ‘Cellmen’. According to the legal text, the first document is dated 2009, the second one 2011, the third one 2008, the fourth and fifth ones 2012.

• Exhibit 10-2: printouts of a brochure illustrating products branded ‘Cellmen’. According to the legal text, this document is dated of 2009.

• Exhibit 10-3: printouts of a brochure illustrating products branded ‘Cellmen’ dated 8 November 2012.

• Exhibit 10-4: printouts of a brochure illustrating products branded ‘Cellmen’. According to the legal text, this document is dated of 2014.

• Exhibit 12 (claimed as confidential): 41 invoices establishing the sales, among other things, of products branded ‘Cellcosmet’ and ‘Cellmen’ between 9 March 2009 and 6 March 2014.

• Exhibit 14-a to 14-d: various press releases with no indication relating to dates, except for the first one, dated August 2011.

• Exhibit 14-e: ‘Cellmen skin care range’ presskit the opponent claims to be from 2012.

• Exhibit 14-f to 14-h: beauty magazines and website excerpts mentioning products branded ‘Cellmen’ and ‘Cellcosmet’. The opponent claims these documents are from 2014.

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• Exhibit 16 (claimed as confidential): ‘cellap.ch’ internet statistics covering a period extending from 1 January 2013 to 28 February 2014. This document provides no information related to the trade names alleged by the opponent.

• Exhibit 17 (claimed as confidential): ‘fr.cellcosmet-cellmen.com’ website statistics covering the period from 1 January 2014 to 11 May 2015. This document provides no information related to the trade names alleged by the opponent.

• Exhibit 18 (claimed as confidential): 25 invoices emitted by the opponent’s exclusive reseller in France and Monaco establishing the sales of products from 6 November 2013 to 5 May 2015. It should be noted that half of these invoices are dated after the relevant period and that the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ do not appear on this part of the evidence. Therefore, this document provides no information related to the trade names alleged by the opponent.

27 Pursuant to Article 8(4) EUTMR, the earlier right alleged by the opponent has to confer upon its proprietor the right to prohibit the use of a subsequent trade mark according to national law. The fulfilment of this requirement has to be assessed according to the standards of the national law concerned, which in the present case is France.

Assessment of the existence of an earlier right on the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ under French law

28 The opponent relies on Article L.711-4 French IPC, which establishes the following: ‘Signs may not be adopted as marks where they infringe earlier rights, particularly [...] c) A trade name or signboard known throughout the national territory, where there exists a risk of confusion in the public mind’.

29 Thus, this particular provision contains two elements that need to be construed in

in line with settled French case-law:

• Firstly, it is necessary to underline that, under French law, a risk of confusion between a trade name and a subsequent trade mark exists when, first, the signs are similar and, second, the activity led by the company using the trade name and the goods and services listed in the trade mark are similar (Cour de cassation, Chambre commerciale, 26 June 1999, No 97-16.189).

• Secondly, ‘known throughout the national territory’ must not be understood as setting a criteria based on renown or fame for the trade name but as setting a criteria of use of the said sign throughout the national territory (Cour d’appel de Paris, 4ème Chambre, 15 October 1997).

30 Therefore, under French law, a trade name may allow its user to prohibit the use of a subsequent trade mark provided that, firstly, the signs are similar, secondly, the activities of the company using the trade name and the goods and services applied for by the trade mark are similar and, finally, the said trade name has been used throughout France.

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31 As regards the first condition set by Article L.711-4 IPC, it is necessary to begin by assessing the similarity between the contested mark and the alleged trade names.

32 For reasons of procedural economy, the Board will only assess the similarity between the trade name ‘CELLAP’ and the contested mark. Indeed, among the two alleged trade names, ‘CELLAP’ is obviously closer to ‘Cellapy’ than ‘CELLAP LABORATOIRE SA’ is.

Cellapy CELLAP

Contested mark Earlier trade name

33 Both of the signs are composed of words. The contested mark consists of the word ‘Cellapy’ while the alleged trade name consists of the word ‘CELLAP’.

34 Visually, the conflicting signs coincide in the first six letters.. Thus, the earlier sign is fully included in the contested sign. Moreover, the contested sign consists in the reproduction of the earlier sign, to which only the letter ‘y’ is appended.

35 Therefore, the Board deems the signs in conflict to be visually highly similar.

36 Phonetically, the conflicting signs coincide in the first two syllables of the contested sign, out of its three syllables in total. Meanwhile, the earlier sign consists of two syllables – [se]-[læp] – which are both repeated in the contested sign. Therefore, the earlier sign is fully included in the contested sign. The earlier sign will be pronounced [se]-[læp], whereas the contested sign will be pronounced [se]-[læ]-[piː]. The only difference consists in the fact that the third (and last) syllable of the contested sign will be pronounced [piː] while the one of the earlier sign will be pronounced [læp] (‘lap’). Thus, the addition of the letter ‘y’ at the end of the contested sign modifies the rhythm and the sound of the contested sign.

37 However, the Board considers that the aural differences between the two signs are minor and that the signs should therefore be deemed as phonetically highly similar.

38 Conceptually, it could be argued that the two signs at stake share the same meaning, even though it is denied by the applicant. In this regard, the element ‘cell’, which is common to both signs, could refer to the biological cells composing the substances sold by the opponent. On the other hand, the Board has not been provided with information enabling it to appreciate whether or not the applicant’s products include such biological cells. However, the Board considers that, should the above statement be true, the relevant public, which is the public in France, would not understand the concept, given that the word ‘cell’ is an English word. Even if the French word ‘cellule’ exists, the Board doubts that the

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English word ‘cell’ will be immediately grasped as the synonym or the abbreviation of ‘cellule’.

39 Therefore, should the concepts of the conflicting signs be different or similar, this fact shall not be taken into account for the assessment of similarity between the signs.

40 Overall, because of their visual and phonetic similarities, the Board considers that

the signs under comparison are similar.

41 In order to analyse the fulfilment of the first condition, it is also necessary to

assess the similarity between the activities of the parties.

42 The contested mark has been applied for in relation with the following goods:

43 The opponent claims to have used the trade names at stake in France in respect of ‘cosmetic products’. The Oxford Dictionary defines ‘cosmetics’ (which amount to ‘cosmetic products’) as preparations applied to the body, especially the face, to improve its appearance.

44 Analysis of the evidence as a whole does show that the opponent used the trade names in France in respect of ‘cosmetic products’. Indeed, the various documents provided by the opponent (particularly Exhibits 10 and 14) indicate that the products in question consist mainly in skin care creams applied to the face and body. For instance, Exhibit 10-e designates the opponent’s products as ‘cosmeceutical treatments’ offering ‘incomparable anti-age revitalisation and body contour definition’. The various invoices bearing the company’s name ‘CELLAP LABORATOIRE SA’ submitted by the opponent as Exhibits 5 and 12 show that these products were delivered in France Therefore, the Board is convinced that the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ have been used in France in respect of ‘cosmetic products’.

45 The contested goods only contain products which are cosmetics or serve cosmetic purposes indicated in the same wording (e.g. ‘shampoos’, ‘skin lotions’, ‘cleansing creams [cosmetic]’, ‘cosmetic kits’, ‘cosmetics’...) which are also applied to the body to improve its appearance.

46 Therefore, the goods listed in the contested mark and the activity for which the alleged trade names have been used for by the opponent must be deemed similar, if not identical.

47 Consequently, in light of the similarity between the two signs and between the activities led by the parties, the Board considers that, congruent to French settled case-law, a risk of confusion exists between the trade names and the contested mark, which is the first condition set by Article L.711-4 c) IPC.

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48 Concerning the second condition set by Article L.711-4 c) IPC, which requires for the trade name to have been used throughout national territory, the Board is not convinced that the evidence submitted by the opponent fulfils the necessary requirements.

49 Indeed, the vast majority of the evidence submitted by the opponent does not prove that the trade names have been used in France. The only documents that do so are the invoices submitted as Exhibits 5 and 12, which reveal that the opponent’s products have been successively sold to three exclusive resellers in France located in Paris and Neuilly-sur-Seine, which is a suburb of Paris, both being located in the Île-de-France region.

50 According to the French case-law mentioned at paragraph 29 of the present decision, a trade name is deemed to be known throughout national territory when it has been used in at least several regions. In the case at hand, following the evidence submitted, the alleged trade names appear to have been used only in the region of Île-de-France and, furthermore, only in two locations.

51 Consequently, it has to be deemed that, according to French national standards, the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ have not been used throughout French national territory.

52 Therefore, the Board deems that the second condition set by Article L.711-4 c) is

not fulfilled, congruently to French settled case-law.

53 To summarise, it has to be considered that the opponent did not benefit of a national right to prohibit the use of the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ as a subsequent trade mark under French national law, thus failing to fulfil the first requirement set by Article 8(4) EUTMR.

54 Therefore, the opposition based on these earlier rights fails.

Earlier company name

55 The assertion made by the opponent regarding the earlier right on the company name ‘CELLAP LABORATOIRE SA’ is based on the same exhibits as those submitted for the trade names ‘CELLAP’ and ‘CELLAP LABORATOIRE SA’ (listed under paragraph 25 and 26). However, it includes additional evidence, which is listed below:

• Exhibit 3: printouts from www.legifrance.gouv.fr of judgments by the Court of Appeal of the Commercial Chamber of 19/11/2002 (Case No H2000/18130, ‘Casa International’) and of 10/07/2012 (Case No V/2008/12010; M20120367, ‘Coeur de Princesse’) (in French with a partial translation into English).

• Exhibit 4: certified extract from the trade register of Vaud with verified translation.

56 Pursuant to Article 8(4) EUTMR, the earlier right alleged by the opponent has to confer upon its proprietor the right to prohibit the use of a subsequent trade mark

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according to national law. The fulfilment of this requirement has to be assessed according to the standards of the national law concerned, which in the present case is France.

Assessment of the existence of an earlier right on the company name ‘CELLAP LABORATOIRE SA’ under French law

57 The opponent relies on Article L.711-4 French IPC, which establishes the following: ‘Signs may not be adopted as marks where they infringe earlier rights, particularly [...] b) The name or style of a company, where there is a risk of confusion in the public mind’.

58 However, the evidence submitted by the opponent does not attest that a Swiss company name can benefit from a protection based on French national law. Indeed, settled case-law reveals that, in order for a company name to be protected in France, it is compulsory for the said company to be registered in the ‘Registre du Commerce et des Sociétés’ – ‘Trade and Companies Register’ in English – (e.g. Cour d’appel de Paris, 4ème Chambre, 28 January 2000).

59 After assessing this matter, the Board concludes that it is not clear whether a Swiss company may or may not benefit from a protection of its company name in France. Thus, neither the Paris Convention for the Protection of Industrial Property nor the Agreement on Trade-Related Aspects of Intellectual Property Rights refer to company names, but only to, for instance, trade marks and trade names.

60 As a matter of consequence, it is not obvious that the Swiss company name could benefit from a protection in France; nor has the opponent been able to demonstrate this.

61 Therefore, the Board concludes that the opponent has failed to prove that, at the date of application for registration of the contested mark, it benefitted from an earlier right on the company name ‘CELLAP LABORATOIRE SA’.

62 Thus, the opposition based on this earlier right fails.

Earlier domain names

63 The opponent claims to benefit from earlier rights for the domain names ‘cellap.ch’ and ‘cellap.com’ and that these are valid oppositions to the contested mark. The evidence submitted in support of this claim is as follows:

• Exhibit 8: various printouts of judgements by the Paris Court of appeal.

• Judgement of 22 May 2012 (Case No RG 2011/20442; M20120283) excerpted from PIBD No 966 III –516.

• Summary judgement of 30 January 2013 (Case No 11/07952) extracted from ‘Propriété Industrielle – Revue Mensuelle LexisNexis – Jurisclasseur 2014’

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• Extensive reproduction of the abovementioned judgement.

• Exhibit 9: whois records concerning the domain names ‘cellap.ch’ and ‘cellap.com’. These documents are dated of 29 December 2014.

• Exhibit 16 (claimed as confidential): ‘cellap.ch’ internet statistics covering a period extending from 1 January 2013 to 28 February 2014.

64 On a preliminary note, the Board observes that, regarding the invoked domain name ‘cellap.com’, the second document included in Exhibit 9 contains no data linking it to the opponent, except for the website title, which reads as follows: ‘Cellcosmet and Cellmen: exceptional skin cosmetics devoted to beauty – Cellap Laboratoire S.A. Cellcosmet and Cellmen – Switzerland’. Therefore, the opponent failed to prove its entitlement. None of the other pieces of evidence attest that the opponent is the actual holder of the domain name ‘cellap.com’.

65 Nevertheless, the first document included in Exhibit 9 does confirm that the

domain name ‘cellap.ch’ is held by the opponent.

66 Therefore, the Board will restrict its assessment of the existence of an earlier right

to the domain name ‘cellap.ch’.

67 Pursuant to Article 8(4) EUTMR, the earlier right alleged by the opponent has to confer upon its proprietor the right to prohibit the use of a subsequent trade mark according to national law. The fulfilment of this requirement has to be assessed according to the standards of the national law concerned, which in the present case is France.

a) Assessment of the existence of an earlier right on the domain name ‘cellap.ch’ under French law

68 Also, in this instance, the opponent relies on the provisions of Article L.711-4

IPC, which establishes the following:

‘Signs may not be adopted as marks where they infringe earlier rights, particularly:

a) An earlier mark that has been registered or that is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property;

b) The name or style of a company, where there is a risk of confusion in the

public mind;

c) A trade name or signboard known throughout the national territory, where

there exist a risk of confusion in the public mind;

d) A protected appellation of origin;

e) Authors’ rights;

f) Rights deriving from a protected industrial design;

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g) The personality rights of another person, particularly his surname, pseudonym

or likeness; and

h) The name, image or repute of a local authority.’

69 The word ‘particularly’ used in the first sentence of the legal provision reproduced above implies that the list it contains is not limitative. Therefore, rights not included in the said list may be set forth for the application of Article L.711-4 IPC.

70 Domain names are among such rights, as settled French case-law shows (e.g. Cour d’appel de Paris, 4ème Chambre, 15 September 2004). In order for a domain name to constitute an earlier right valid for opposition purposes, it has to fulfil two conditions:

• It has to have been effectively used at the time of the contested mark’s date of application for registration.

• Its owner has to establish a risk of confusion.

71 As regards the first condition, the evidence submitted by the opponent establishes that the domain name ‘cellap.ch’ has been put to use before the date of application for registration of the contested mark, which is to say before 2 September 2014. Indeed, Exhibit 9 shows that the domain name ‘cellap.ch’ has been registered on 24 February 1997, while Exhibit 16 attests that the sign was continuously used at least from 1 January 2013 to 28 February 2014.

72 Therefore, the Board deems that the domain name ‘cellap.ch’ has been effectively used at the time of the contested mark’s date of application for registration, thus satisfying the first condition set for the existence of a national right based on a domain name under French law.

73 As regards the second condition, settled French case-law shows that there is a risk of confusion where, first, the domain name and the contested mark are similar and, second, the activities led by the domain name’s proprietor and the contested mark are similar.

Cellapy cellap.ch

Contested mark Earlier domain name

74 Both of the signs are composed of words, consisting of ‘Cellapy’ and ‘cellap.ch’,

respectively.

75 The Board notices that the alleged earlier right is a domain name including the element ‘.ch’, which will be perceived as indicating a domain address on the internet for a Swiss website. Given that the element ‘ch’ is a technical element

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present in the normal structure of an address of a Swiss website, it is non- distinctive and must therefore be considered as secondary in the earlier sign. Thus, the element ‘cellap’ has to be deemed as dominant in the domain name ‘cellap.ch’.

76 Visually, the conflicting signs coincide in the first six letters of the contested sign. Thus, the earlier sign is partly included in the contested sign. However, the contested sign only consists in the reproduction of the earlier sign’s dominant element, to which the letter ‘y’ is appended.

77 Therefore, the Board deems the signs in conflict to be visually highly similar.

78 Phonetically, the conflicting signs coincide in the first two syllables of the contested sign, out of its three syllables in total. Meanwhile, the earlier sign consists of five syllables – [se]-[læp]-[dot]-[siː]-[eɪtʃ]. However, the earlier sign’s dominant element accounts only for the first two syllables and will be pronounced [se]-[læp]. The contested sign consists of three syllables: [se]-[læ]-[piː]. Therefore, the earlier sign’s dominant element is fully included in the contested sign. The only difference consists in the fact that the last syllable of the contested sign will be pronounced [piː] while the one of the earlier sign’s dominant element will be pronounced [læp] (‘lap’). Thus, the addition of the letter ‘y’ at the end of the contested sign modifies the rhythm and the sound of the contested sign.

79 However, taking into account that the alleged earlier sign’s element ‘.ch’ is secondary and that its dominant element is fully reproduced in the contested mark, the Board considers that the aural differences between the two signs are minor and that these should therefore be deemed as phonetically similar.

80 Conceptually, it could be argued that the two signs at stake share the same meaning, even though it is denied by the applicant. In this regard, the element ‘cell’, which is common to both signs, could refer to the biological cells composing the substances sold by the opponent. On the other hand, the Board has not been provided with information enabling it to appreciate whether or not the applicant’s products include such biological cells. However, the Board considers that, should the above statement be true, the relevant public, which is the public in France, would not understand the concept, given that the word ‘cell’ is an English word. Even if the French word ‘cellule’ exists, the Board doubts that the English word ‘cell’ will be immediately grasped as the synonym of ‘cellule’ 0or the abbreviation of cellule.

81 Therefore, should the concepts of the conflicting signs be different or similar, this fact shall not be taken into account for the assessment of similarity between the signs.

82 Overall, the Board considers that the signs under comparison are visually and

phonetically similar.

83 As established at paragraphs 42 to 46 of the present decision, the activities led by

the applicant and the opponent are highly similar, if not identical.

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84 Taking into account the similarity between the signs and between the activities led by their respective proprietors, the Board considers that a risk of confusion exists between the domain name ‘cellap.ch’ and the contested mark. Therefore, the conditions set by French case-law for an earlier right based on a domain name to exist on the ground of Article L.711-4 IPC are met.

85 The Board thus deems that the opponent benefitted from an earlier right based on the domain name ‘cellap.ch’ at the date of application for registration of the contested mark.

b) Assessment of the use of the domain name ‘cellap.ch’ in the course of trade of more than mere local significance

86 Pursuant to Article 8(4) EUTMR, the alleged earlier right must relate to a sign that has been used in the course of trade of more than mere local significance. This point must be assessed not according to national standards, but according to those set by the European Union.

87 The rationale of the condition relating to the use of a sign of more than mere local significance in the course of trade pursuant to Article 8(4) EUTMR is to restrict the number of conflicts between signs by preventing an earlier right which is not sufficiently prominent, i.e. important and significant in the course of trade, from being able to stand in the way of a European Union trade mark.

88 Thus, rights falling under Article 8(4) EUTMR may only be invoked if their use is of more than mere local significance. The proprietors of rights the use of which is of mere local significance retain their exclusive rights under the applicable national law pursuant to Article 111 EUTMR. The question whether the use of a non-registered sign is of more than mere local significance will be answered by applying a uniform European standard (18/04/2013, T-506/11 and T-507/11, Peek & Cloppenburg, EU:T:2013:197, § 19, 47-48).

89 The General Court held that the significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, firstly, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37 and 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

90 Therefore, as indicated in page 14 of the Office’s guidelines (PART C OPPOSITION SECTION 4 RIGHTS UNDER ARTICLE 8(4) and 8(4a) EUTMR), the criterion of ‘more than mere local significance’ is more than just a

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geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the following elements:

a) the intensity of use (sales made under the sign);

b) the length of use;

c) the spread of the goods (location of the customers); and

d) the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

91 The analysis of the evidence submitted by the opponent reveals that, according to European Union standards, the intensity of use, the geographical spread of the goods and the advertising under the signs were proven to be insufficient to conclude that the use of the domain name ‘cellap.ch’ in the course of trade was of more than mere local significance in France. In accordance with the opponent’s wishes, the precise data relating to the intensity of use and the spread of goods that led the Board to this conclusion shall remain confidential.

92 However, it can be said that, even though they have not been specifically explained by the opponent, the internet statistics included in Exhibit 16 can be taken into account.

93 The evidence submitted by the opponent provides no information related to the

advertising under the sign and the media used for that advertising.

94 As regards the length of use, Exhibit 16 only attests that the sign was used in the

period from 1 January 2013 to 28 February 2014.

95 The same exhibit also provides information concerning the intensity of the sign’s use. As the document is claimed as confidential the Board cannot reveal the concrete figures. However, it can establish that the statistics are related to a period of 14 months set before the contested mark’s application for registration. According to this document, the domain name ‘cellap.ch’ received less than four thousand individual French visitors throughout the whole 14 month period.

96 In light of these statistics, the Board considers that, compared to the approximate 66 million population of France, the total number of French visitors to the domain name ‘cellap.ch’ is not sufficient to consider that the said domain name was used in the course of trade of more than mere local significance, which is required for the application of Article 8(4) EUTMR. Indeed, the ratio legis of the requirement set by the said article is to prevent minor rights from standing in the way of a European Union trade mark. In the case at hand, the Board strongly believes that a domain name cannot be deemed as anything else than minor when it has only been visited by a few thousand visitors over a 14 month period. The Board maintains this position even where the said domain name is related to luxury products and intervenes in a very narrow sector of the economy because of the products’ high unitary costs.

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97 Thus, this earlier right fails too.

Earlier signboard

98 The opponent claims it possesses an earlier right for the signboard ‘CELLAP SHOP FR’, which it considers to be a valid opposition to the contested mark.

99 In support of its allegations, the opponent submitted the same evidence as for the

trade names (listed under paragraph 26 of the present decision).

100 Pursuant to Article 8(4) EUTMR, the earlier right alleged by the opponent has to confer upon its proprietor the right to prohibit the use of a subsequent trade mark according to national law. The fulfilment of this requirement has to be assessed according to the standards of the national law concerned, which in the present case is France.

a) Assessment of the existence of an earlier right on the signboard ‘CELLAP SHOP FR’ under French law

101 The opponent relies on Article L.711-4 French IPC, which establishes the following: ‘Signs may not be adopted as marks where they infringe earlier rights, particularly [...] c) A trade name or signboard known throughout the national territory, where there exists a risk of confusion in the public mind’.

102 Thus, this particular provision allows the user of a signboard to prohibit its use as a subsequent trade mark. However, it contains two elements that need to be construed in line with settled French case-law:

• Firstly, it is necessary to underline that, under French law, a risk of confusion between a signboard and a subsequent trade mark exists where the signs are similar and where the activities led by the company using the signboard and the goods and services listed in the trade mark are similar (see Cour d’appel de Paris, 4 January 2012, No 09/08240 and Cour de cassation, Chambre commerciale, 25 mars 2014, No 13-13.690).

• Secondly, ‘known throughout the national territory’ must not be understood as setting a criteria based on renown or fame for the signboard but as setting a criteria of use of the said sign throughout the national territory. Therefore, the signboard’s influence needs not to be geographically limited (see Cour de cassation, Chambre commerciale, 20 October 1975 and Cour d’appel de Paris, 12 May 1982).

103 Therefore, under French law, a signboard may allow its user to prohibit the use of a subsequent trade mark provided that, firstly, the signs are similar, secondly, the activities of the company using the trade name and the goods and services applied for by the trade mark are similar and, finally, the said trade name has been used throughout France.

104 After analysing the evidence submitted, the Board observes that only the website ‘fr.cellcosmet-cellmen.com’ includes – in a very discreet manner – the alleged

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signboard, as Exhibits 7 and 11 show. Even though these exhibits should be disregarded because they are dated after the relevant period, for the sake of completeness the Board has chosen to take them into account to assess the existence of an earlier right on the signboard ‘CELLAP SHOP FR’.

105 On a preliminary note, the Board notices that the website bearing the said signboard is one belonging to one of the opponent’s resellers in France; it is not owned by the opponent.

106 However, the Board will assess the existence of an earlier right on the signboard ‘CELLAP SHOP FR’ congruent to Article L.711-4 IPC by analysing the signs’ similarity, the activities’ similarity and the signboard’s influence throughout France.

107 As regards the first condition set by Article L.711-4, the Board has to assess the

similarity of the following signs:

Cellapy CELLAP SHOP FR

Contested mark Earlier signboard

108 They are both composed of words; the signboard consists of the words ‘CELLAP

SHOP FR’ while the contested mark consists of the word ‘Cellapy’.

109 The Board notices that the alleged earlier right is a signboard including the word ‘SHOP’ and the element ‘FR’. The word ‘SHOP’ has a weak distinctive power when referring to an online or physical store, just like ‘FR’ which merely indicates that the said shop is located in France. Therefore, these two elements suffer from weak distinctiveness and must be considered as secondary in the earlier sign. Thus, the element ‘CELLAP’ has to be deemed as dominant in the signboard ‘CELLAP SHOP FR’.

110 Visually, the conflicting signs coincide in the first six letters of the contested sign. Thus, the earlier sign is partly included in the contested sign. However, the contested sign only consists of the reproduction of the earlier sign’s dominant element, to which the letter ‘y’ is appended.

111 Therefore, the Board deems the signs in conflict to be visually highly similar.

112 Phonetically, the conflicting signs coincide in the first two syllables of the contested sign, out of its three syllables in total. Meanwhile, the earlier sign consists of five syllables – [se]-[læp]-[ʃɒp]-[eɪf]-[eɪr]. However, its dominant element accounts only for the first two syllables and will be pronounced [se]-[læp]. The contested sign consists of three syllables: [se]-[læ]-[piː]. Therefore, the earlier sign’s dominant element is fully included in the contested sign. The only difference consists in the fact that the last syllable of the contested

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sign will be pronounced [piː] while the one of the earlier sign’s dominant element will be pronounced [læp]. Thus, the addition of the letter ‘y’ at the end of the contested sign modifies the rhythm and the sound of the contested sign.

113 However, taking into account that the alleged earlier sign’s element ‘CELLAP’ is dominant, the Board considers that the phonetic differences between the two signs are minor and that these should therefore be deemed as phonetically similar.

114 Conceptually, it could be argued that the two signs at stake share the same meaning, even though it is denied by the applicant. In this regard, the element ‘cell’, which is common to both signs, could refer to the biological cells composing the substances sold by the opponent. On the other hand, the Board has not been provided with information enabling it to appreciate whether or not the applicant’s products include such biological cells. However, the Board considers that, should the above statement be true, the relevant public, which is the public in France, would not understand the concept, given that the word ‘cell’ is an English word. Even if the French word ‘cellule’ exists, the Board doubts that the English word ‘cell’ will be immediately grasped as the synonym or the abbreviation of ‘cellule’.

115 Therefore, should the concepts of the conflicting signs be different or similar, this fact shall not be taken into account for the assessment of similarity between the signs.

116 Overall, because of their visual and phonetic similarities, the Board considers that

the signs under comparison are similar.

117 Further to the first condition set by Article L.711-4 c) IPC, it has been established at paragraph 42 to 46 of the present decision that the activities led by the applicant and the opponent are highly similar, if not identical.

118 Taking into account the similarity between the signs and between the activities led by their respective proprietors, the Board considers that a risk of confusion exists between the signboard ‘CELLAP SHOP FR’ and the contested mark.

119 As regards the second condition set by the abovementioned French law provision, the Board will base its assessment on Exhibit 17 – which shall remain confidential. Indeed, this document indicates the geographic provenance of the ‘fr.cellcosmet-cellmen.com’ website’s visitors. Even though it shows that the number of French visitors is trivial, it establishes that these are spread throughout all of France, across 30 cities and scattered over ten of the thirteen ‘régions’ that comprise the metropolitan French territory.

120 According to French case-law (as presented above) a signboard is deemed to have been used – and therefore known – throughout national territory when it has been used in at least several regions. In the case at hand, following the evidence submitted, the Board deems that the alleged signboard has indeed been used throughout the whole of France.

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121 Taking into consideration, firstly, the established existence of a risk of confusion between the signs and, secondly, the signboard’s use throughout France, the Board concludes that the conditions set by Article L.711-4 IPC for an earlier right based on a signboard to exist are met.

122 The Board thus deems that the opponent benefitted from an earlier right based on the signboard ‘CELLAP SHOP FR’ at the date of application for registration of the contested mark.

b) Assessment of the use of the signboard ‘CELLAP SHOP FR’ in the course of trade of more than mere local significance

123 Pursuant to Article 8(4) EUTMR, the alleged earlier right must relate to a sign that has been used in the course of trade of more than mere local significance. This point must be assessed not according to national standards, but according to those set by the European Union.

124 As presented above the under Article 8(4) and 8(4a) EUTMR, the criterion of ‘more than mere local significance’ is more than just a geographical examination. The economic impact of the use of the sign must also be evaluated. Consideration must be given, and the evidence must relate, to the following elements:

a) the intensity of use (sales made under the sign);

b) the length of use;

c) the spread of the goods (location of the customers); and

d) the advertising under the sign and the media used for that advertising, including the distribution of the advertising.

125 The analysis of the evidence submitted by the opponent reveals that, according to European Union standards, the intensity of use, the geographical spread of the goods and the advertising under the signs were proven to be insufficient to conclude that the use of the signboard ‘CELLAP SHOP FR’ in the course of trade was of more than mere local significance in France. In accordance with the opponent’s wishes, the precise data relating to the intensity of use and the spread of goods that led the Board to this conclusion shall remain confidential.

126 However, it can be said that, even though they have not been specifically explained by the opponent, the internet statistics included in Exhibit 17 can be taken into account by the Board.

127 As regards the advertising under the sign and the media used for that advertising, the evidence submitted by the opponent provides no information. Neither does it provide any data related to the length of use that can be taken into account, given that all evidence showing use of the signboard is dated later than the date of the contested mark’s application for registration.

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128 However, Exhibit 17 shows the intensity of use in France through the number of

French visitors and the ‘spread of the goods’ via these visitors’ location.

129 As the document is claimed as confidential, the Board cannot reveal the concrete figures. However, it can establish that even though the French visitors are spread throughout all of France as established above, the final number of French visitors does not account for more than a few hundreds.

130 Therefore, the Board considers that the signboard ‘CELLAP SHOP FR’ was not used in the course of trade of more than mere local significance, which is required for the application of Article 8(4) EUTMR.

131 Accordingly, the Board considers that, at the date of application for registration of the contested mark, the opponent did not benefit from any earlier right for the signboard ‘CELLAP SHOP FR’.

132 Thus, this earlier right fails too.

133 In light of the foregoing, the appeal is dismissed.

Costs

134 Since the appeal is dismissed and the opponent is the losing party, it must bear the fees and costs of the applicant in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.

135 Pursuant to Article 85(6) EUTMR, the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 93(1) EUTMR, which amount to EUR 550 for the appeal proceedings as specified in Rule 94(2) and (7)(d) CTMIR, irrespective if they have actually been incurred. The opposition decision is not altered... Any final decision fixing the amount of costs shall be enforceable pursuant to Article 96 EUTMR.

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Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the opponent to bear the costs of the appeal proceedings;

3. Fixes the amount of the costs to be reimbursed by the opponent to the

applicant for the appeal proceedings at EUR 550.

Signed

G. Humphreys

Signed

V. Melgar

Signed

A. Pohlmann

Registrar:

Signed

H.Dijkema

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Cellapy | Decision 581/2016-5

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