DERMAMEDXSOLUTION DERMXS PROFESSIONAL | Decision 2696618
Date Published: Sep 25, 2017
OPPOSITION No B 2 696 618
Beauty International Sylwia Michno, Mlynka 58, 32-064 Rudawa/Cracow, Poland (opponent), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26, 8º dcha, 48009 Bilbao (Vizcaya), Spain (professional representative)
a g a i n s t
Dermamedxsolution Limited, 71-75 Shelton Street Covent Garden, London, London
City of WC2H 9JQ, United Kingdom (applicant), represented by Mapa Trademarks, Alameda San Mamés 43 bis, 3ª planta, dpto 1, 48010 Bilbao (Bizkaia), Spain (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 696 618 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 048 821. The opposition is based on European Union trade mark registrations No 13 614 128 and No 14 960 116. The opponent invoked Article 8(1)(b) EUTMR.
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.
- The goods
The goods on which the opposition is based are the following:
EUTM No 13 614 128:
Class 3: Cosmetics of all meanings for all purposes for face, body and hair.
Class 5: Preparations for pharmaceutical and therapeutic purposes as well as for aesthetic medicine purposes including serums, elixirs, tonics, lotions; preparations for dietetic or pharmaceutical purposes including syrups, pills (also known as dietary supplements) which provide nutrients vitamins, minerals, fiber, fatty acids, or amino acids which are targeted on skin condition improvement; preparations for pharmaceutical and therapeutic purposes as well as for hospital purposes including gels for laser therapies, gels for ultrasonography, gels for EEG/ECG recording, gels for other hospital purposes; anesthetic and analgesics preparations; pharmaceutical preparations to reducing post-surgery scars; preparations for invasive therapies with needles, such as pharmaceutical preparations for the treatment of skin diseases and skin irritation as well as skin care, medical preparations for the hair; homeopathic pharmaceuticals; preparations which are introduced under the skin by needles and also needle-free methods; skincare preparations for treatments with needles and/or with electrodes; pharmaceutical preparations to treating scalp diseases including dandruff and alopecia; antibacterial preparations for skin care including antibiotics; antiseptics.
Class 10: Apparatus and instruments for aesthetic medicine and medical purposes; equipment and instruments to stimulate human skin for cosmetic and medical purposes; apparatus and instruments with needle modules that is used for skin condition improvement; lasers for cosmetic purposes and skin biostimulation; light detectors for medical applications to verify the skin condition during the treatments; equipment for cryotherapy; medical equipment for micropigmentation; medical and/or cosmetic equipment for scars reduction; medical and/or cosmetic equipment for micro-needle mesotherapy; medical and/or cosmetic equipment for biostimulation; medical and/or cosmetic skin-perforating hand tools which use needles and needle modules; medical and/or cosmetic equipment for skin rejuvenation and slimming; medical equipment for epilation; medical and/or cosmetic equipment for photoepilation; medical and/or cosmetic equipment for therapies with ultrasounds; medical and/or cosmetic equipment for physiotherapy; medical and/or cosmetic equipment for iontophoresis; medical and/or cosmetic equipment for therapies with radio frequency and micro-currents; medical and/or cosmetic equipment for therapies with galvanic current; medical and/or cosmetic equipment for mesotherapy (needle mesotherapy, micro-needle mesotherapy and needle-free mesotherapy); machines and instruments targeted on skin condition improvement; hand-operated medical and/or cosmetic equipment targeted on skin condition improvement; as well as the components and accessories to above mentioned apparatuses namely the handpieces, holders, pads, electrodes, disposable and reusable articles which are used in regular and/or additional connections with the equipment.
EUTM No 14 960 116:
Class 3: Cosmetics of all meanings for all purposes for face, body and hair.
Class 5: Preparations for pharmaceutical and therapeutic purposes as well as for aesthetic medicine purposes including serums, elixirs, tonics, lotions; preparations for dietetic or pharmaceutical purposes including syrups, pills (also known as dietary supplements) which provide nutrients vitamins, minerals, fiber, fatty acids, or amino acids which are targeted on skin condition improvement; preparations for pharmaceutical and therapeutic purposes as well as for hospital purposes including gels for laser therapies, gels for ultrasonography, gels for EEG/ECG recording, gels for other hospital purposes; anesthetic and analgesics preparations; pharmaceutical preparations to reducing post-surgery scars; preparations for invasive therapies with needles, such as pharmaceutical preparations for the treatment of skin diseases and skin irritation as well as skin care, medical preparations for the hair; homeopathic pharmaceuticals; preparations which are introduced under the skin by needles and also needle-free methods; skincare preparations for treatments with needles and/or with electrodes; pharmaceutical preparations to treating scalp diseases including dandruff and alopecia; antibacterial preparations for skin care including antibiotics; antiseptics.
Class 10: Apparatus and instruments for aesthetic medicine and Medical purposes; equipment and instruments to stimulate human skin for cosmetic and medical purposes; apparatus and instruments with needle modules that is used for skin conditio improvement; lasers for cosmetic purposes and skin biostimulation; light detectors for medical applications to verify the skin condition during the treatments; equipment for cryotherapy; medical equipment for micropigmentation; medical and/or cosmetic equipment for scars reduction; medical and/or cosmetic equipment for micro-needle mesotherapy; Medical and/or cosmetic equipment for biostimulation; medical and/or cosmetic skin-perforating hand tools which use needles and needle modules; medical and/or cosmetic equipment for skin rejuvenation and slimming; medical equipment for epilation; medical and/or cosmetic equipment for photoepilation; Medical and/or cosmetic equipment for therapies with ultrasounds; medical and/or cosmetic equipment for physiotherapy; Medical and/or cosmetic equipment for iontophoresis; medical and/or cosmetic equipment for therapies with radio frequency and micro-currents; medical and/or cosmetic equipment for therapies with galvanic current; medical and/or cosmetic equipment for mesotherapy (needle mesotherapy, micro-needle mesotherapy and needle-free mesotherapy); machines and instruments targeted on skin condition improvement; handoperated medical and/or cosmetic equipment targeted on skin condition improvement; as well as the components and accessories to above mentioned apparatuses namely the handpieces, holders, pads, electrodes, disposable and reusable articles which are used in regular and/or additional connections with the equipment.
The contested goods are the following:
Class 3: Toiletries; Essential oils and aromatic extracts; Tailors' and cobblers' wax; Cleaning and fragrancing preparations; Abrasive preparations; Masks (Beauty -); Beauty masks; Facial beauty masks; Beauty balm creams; Beauty creams; Beauty creams for body care; Beauty lotions; Beauty milks; Beauty serums; Beauty soap; Beauty care cosmetics; Beauty care preparations; Distilled oils for beauty care; Body cleaning and beauty care preparations; Beauty milk; Beauty gels; Cosmetics; Oral hygiene preparations; Perfumery and fragrances; Cosmetic kits; Cosmetic preparations for body care; Cosmetic preparations for nail drying; Cosmetic preparations for slimming purposes; Cosmetic preparations for use as aids to slimming; Cleansing masks; Beauty tonics for application to the body; Beauty tonics for application to the face; Facial masks; Hair masks; Body masks; Facial masks [cosmetic]; Skin masks [cosmetics]; Cosmetic facial masks; Gel eye masks; Skin moisturizer masks; Cleaning masks for the face; Foot masks for skin care; Hand masks for skin care; Facial makeup; Facial preparations; Facial lotions; Facial soaps; Facial packs; Facial concealer; Facial emulsions; Facial scrubs; Facial washes; Facial cleansers; Facial lotion; Facial cream; Facial creams; Facial cleansers [cosmetic]; Facial scrubs [cosmetic]; Facial creams [cosmetic]; Facial washes [cosmetic]; Facial packs [cosmetic]; Facial toners [cosmetic].
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 cosmetics are identical to the opponent’s cosmetics of all meanings for all purposes for face, body and hair.
The contested toiletries are any of various articles, cosmetics, or products used in personal grooming, washing or dressing etc. Thus they overlap with and are identical to the opponent’s cosmetics of all meanings for all purposes for face, body and hair.
The contested masks (beauty -); beauty masks; facial beauty masks; beauty balm creams; beauty creams; beauty creams for body care; beauty lotions; beauty milks; beauty serums; beauty care cosmetics; beauty care preparations; body cleaning and beauty care preparations; beauty milk; beauty gels; cosmetic kits; cosmetic preparations for body care; cosmetic preparations for nail drying; cosmetic preparations for slimming purposes; cosmetic preparations for use as aids to slimming; cleansing masks; beauty tonics for application to the body; beauty tonics for application to the face; facial masks; hair masks; body masks; facial masks [cosmetic]; skin masks [cosmetics]; cosmetic facial masks; gel eye masks; skin moisturizer masks; cleaning masks for the face; foot masks for skin care; hand masks for skin care; facial makeup; facial preparations; facial lotions; facial packs; facial concealer; facial emulsions; facial scrubs; facial washes; facial cleansers; facial lotion; facial cream; facial creams; facial cleansers [cosmetic]; facial scrubs [cosmetic]; facial creams [cosmetic]; facial washes [cosmetic]; facial packs [cosmetic]; facial toners [cosmetic] are all different kinds of cosmetics and thus they are included in the broad category of the opponent’s cosmetics of all meanings for all purposes for face, body and hair. Therefore, they are identical.
The contested fragrancing preparations; perfumery and fragrances are similar to a high degree to the opponent’s cosmetics of all meanings for all purposes for face, body and hair. The goods have the same purpose and are directed at the same consumers. They have the same manufacturers and distribution channels.
The contested distilled oils for beauty care are similar to a high degree to the opponent’s cosmetics of all meanings for all purposes for face, body and hair. The goods have the same purpose and are directed at the same consumers. They have the same manufacturers and distribution channels.
The contested cleaning preparations are considered similar to the opponent’s cosmetics of all meanings for all purposes for face, body and hair as they can coincide in producer, end user and distribution channels.
The contested beauty soap; facial soaps are similar to the opponent’s cosmetics of all meanings for all purposes for face, body and hair as the goods can coincide in producer, end user and distribution channels.
The contested essential oils and aromatic extracts are considered similar to the opponent’s cosmetics of all meanings for all purposes for face, body and hair. The goods have the same purpose, relevant public and distribution channels.
The contested oral hygiene preparations are similar to a low degree to the opponent’s cosmetics of all meanings for all purposes for face, body and hair as they can coincide in end user and distribution channels.
The contested tailors' and cobblers' wax; abrasive preparations are dissimilar to the opponent’s goods in Classes 3, 5 and 10. Their natures, purposes and methods of use are different. They are provided by different manufacturers, distributed through different channels, and directed at different consumers. They are neither complementary nor in competition.
- 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 is average.
- The signs
As a preliminary remark it should be noted that the Opposition Division assesses the similarity of the signs based on how they appear in the register, i.e.:
| |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
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).
The contested mark is a figurative mark containing the stylised word elements ‘DERMXS’, ‘DERMAMEDXSOLUTION’ and the word ‘professional’ with two horizontal lines on its sides, as well as the figurative element of a circle with a pyramid/triangles inside of it. It should be noted, that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, the elements ‘DERM’ and ‘DERMA’ in the contested sign will be understood as referring to skin. The Boards of Appeal on numerous occasions have established that ‘DERM(A)’ is a term widely understood throughout the European Union to denote ‘skin’, ‘cutis’ or ‘dermis’. It forms words in English and equivalent words in other languages, such as ‘dermatologist’, ‘dermatoid’, ‘dermatitis’, ‘dermatosis’ or ‘dermabrasion’. Not only is it a term used in medical circles, it is also known to the population a large. Thus it is a ‘generally known fact’ that ‘DERM(A)’ is a term interchangeable with ‘skin’ (18/03/2016, R 1399/2015-2 DERMAL MEDICAL VISION, § 22). Thus, in relation to the goods concerned, it is of weak distinctiveness.
Similarly, the consumer will also recognise the element ‘MED’ in the contested sign as an allusion to such terms as ‘medical’, or ‘medicine’ throughout the European Union (26/06/2009, R 1616/2007-2 – deramed, § 25). Though it is true that the goods at hand are not directly linked to the medical or pharmaceutical sector, the Opposition Division notes that they all belong to the cosmetic and skin care sector for which the allusion to ‘medicine’ appears as a reference to the fact that these goods enjoy the approval of the medical sector, or incorporate medical substances. Thus, in relation to the goods concerned, ‘MED’ is of weak distinctiveness.
As regards the word ‘SOLUTION’ it will be understood by English-speaking consumers as dealing with something so the difficulty is removed or the problem is answered. The word ‘PROFESSIONAL’ will be understood by English-speaking consumers as referring to something of a high standard. For this part of the relevant public the words ‘SOLUTION’ and ‘PROFESSIONAL’ are non-distinctive because they only indicate that the goods at hand, i.e. cosmetics in general, are intended to solve skin, hair etc. problems, and that they are of high quality. They are distinctive for the remaining part of the relevant public.
The element ‘DERMXS’ and the figurative element of a circle with a pyramid/triangles are the dominant elements as they are the most eye-catching.
As regards the earlier figurative mark, it consists of stylised word elements ‘DERMEDICS’, ‘SKIN CARE SYSTEM’, as well as ‘REAL RESULTS’ and ‘RESULTATS REELS’ separated by vertical line and placed on a red background. The consumer throughout the European Union will perceive the coalesced elements ‘DER(M)’ and ‘(M)ED’ which will be considered weak for the relevant goods as explained above. The element ‘SKIN CARE SYSTEM’ will be understood by English-speaking consumers as a set or combination for good condition of skin and as such it is non-distinctive for this part of the relevant public and for the goods at hand because it describes their purpose. It is distinctive for the remaining part of the relevant public. As far as the elements ‘REAL RESULTS’ (in English) and ‘RESULTATS REELS’ (in French) are concerned, they both refer to a consequence or an outcome that exists and is not only theoretical or invented and will be understood as such and considered non-distinctive by English- and French-speaking consumers respectively. They are distinctive for the remaining part of the relevant public. The cross over the letter ‘I’ forms part of the stylisation of the word element and is considered weak.
The element ‘DERMEDICS’ is the dominant element as it is the most eye-catching.
As regards the earlier word mark ‘DERMEDICS SKIN CARE SYSTEM - YOUTH EXPERT - YOUTH GENE ACTIVATOR - EXCELLENCE IN SKIN CARE - REAL RESULTS’ and for the reasons explained above, the coalesced elements ‘DER(M)’ and ‘(M)ED’ are considered weak throughout the European Union.
The elements ‘SKIN CARE SYSTEM’ and ‘REAL RESULTS’ are considered non-distinctive for English-speaking consumers. They are distinctive for the remaining part of the relevant public.
The element ‘YOUTH EXPERT’ will be understood by English-speaking consumers as somebody that is knowledgeable about being young. As such it is weak for the goods at hand and for this part of the relevant public as it informs that the goods come from experts and are intended to make the skin, hair etc. look young. It is distinctive for the remaining part of the relevant public.
The element ‘YOUTH’ will be understood by English-speaking consumers as referring to the state of being young; ‘GENE’, in English, means a part of a cell in a living thing which controls its physical characteristics, growth, and development; ‘ACTIVATOR’ will be understood by English-speaking consumers as causing something to start working. Thus, the term ‘YOUTH GENE ACTIVATOR’ taken as a whole and in relation to the goods at hand alludes, for English-speaking consumers, to something that causes the gene that is responsible for young look to start working. As such it is weak for the goods at hand, and for this part of the relevant public. It is distinctive for the remaining part of the relevant public.
The term ‘EXCELLENCE IN SKIN CARE’ will be understood by English-speaking consumers as meaning something of high quality for the good condition of skin. Being only laudatory term, it is considered non-distinctive for the goods at hand and for this part of the relevant public. It is distinctive for the remaining part of the relevant public.
Visually and aurally, the signs coincide in ‘DER(M)’ of the first verbal elements of the signs, and visually the dominant elements of the figurative signs. The term ’DERM’ appears also at the beginning of the second word element of the contested mark but is written in a smaller font and thus of limited visual impact. The signs coincide also in ‘(M)ED’ which appears in the first word element of the earlier signs, but only in the middle of the second word element of the contested sign which is written in a smaller font and thus play visually a secondary role. The signs share also some additional letters but as they appear in different positions and do not constitute independent elements within the signs, such coincidence cannot influence the assessment of similarity between the signs: since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them. Thus, the signs differ in additional elements of the signs: ‘ICS’, ‘SKIN CARE SYSTEM’, ‘REAL RESULTS’ and ‘RESULTATS REELS’ of the earlier figurative mark, and ‘ICS’ and ‘SKIN CARE SYSTEM’, ‘YOUTH EXPERT’, ‘YOUTH GENE ACTIVATOR’, ‘EXCELLENCE IN SKIN CARE’ and ‘REAL RESULTS’ of the earlier word mark as compared to ‘XS’, ‘DERMA’, ‘XSOLUTION’ and ‘PROFESSIONAL’ of the contested sign. They additionally differ visually in the figurative elements of the marks.
While it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks. Indeed, the aforementioned general rule is not applicable in all cases and depends on the specific characteristics of the signs.
In the present case, the coinciding elements are considered weak for all the goods at hand as explained above and therefore their impact on the comparison of the signs is limited. Moreover, although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters/words, identifying the amount of identical letters/words and comparing their order in the respective marks, can provide certain guidance. In the present case, the coinciding elements constitute only a small part of the signs taken as whole and the differentiating elements are thus longer and occupy more space and this makes them visually and aurally relevant: the additional elements contribute to a different visual and aural perception of the marks in dispute.
Therefore, the signs are visually and aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will evoke the concepts of ‘skin’ and ‘medicine’ which however have weak distinctiveness in relation to the goods. To that extent the signs are similar to a low degree (whether the relevant public perceives other meanings in the signs or not).
- Distinctiveness of the earlier marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some weak/non-distinctive elements in the marks as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
It has been concluded in previous sections of this decision that the contested goods are partly identical and similar to various degrees to the opponent’s goods, and partly dissimilar. It has also been concluded that the signs under comparison are only similar to a low degree to the extent that they coincide in ‘DER(M)’ and ‘(M)ED’ but differ in the remaining elements of the marks.
In this respect, the opponent relies on the concept of imperfect recollection. However, the Opposition Division considers that, in this case, although the elements ‘DER(M)’ and ‘(M)ED’ of the earlier marks are reproduced in the contested sign, the fact that they are considered to have weak distinctiveness, and, as it is a case of the element ‘MED’ in the contested sign, play a secondary role within the overall impression given by a sign, is decisive. Moreover, there exists further important differences between the signs in their remaining parts (especially for the part of the relevant public for which the non-coinciding elements are distinctive), which allow the consumers to distinguish between the marks. Therefore, the similarities are not sufficient to lead to a likelihood of confusion or likelihood of association on the part of the public.
The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Katarzyna ZANIECKA | Anna BAKALARZ | Frédérique SULPICE |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.