DERMAPHARM | Decision 261/2016-5

Date Published: Oct 1, 2017

THE BOARDS OF APPEAL

DECISION of the Fifth Board of Appeal of 6 June 2017

In Case R 1261/2016-5

EVELINE COSMETICS BRAND CONCEPT DEVELOPMENT sp. z o.o. ul. WIERZBOWA, nr 18 90-245 ŁÓDŹ Poland EUTM Proprietor / Appellant represented by KANCELARIA PATENTOWA ALEKSANDRA MARCIŃSKA, ul. J. Słowackiego 5/149, 01-592 Warszawa, Poland

Dermapharm AG Lil-Dagover-Ring 7 82031 Grünwald Germany Cancellation Applicant / Respondent represented by DR. KUNZ-HALLSTEIN RECHTSANWÄLTE, Galeriestr. 6A, 80539 München, Germany

APPEAL relating to Cancellation Proceedings No 10 266 C (European Union trade mark registration No 11 351 368)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), A. Kralik (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Language of the case: English

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Decision

Summary of the facts

1 By an application filed on 16 November 2012, EVELINE COSMETICS

DYSTRYBUCJA sp. z o.o. s.k., sought to register the figurative mark

for the following list of goods and services:

Class 3 - Cosmetics; slimming products (cosmetics), other than for medical purposes; cosmetics for smoothing, softening and exfoliating the skin; creams for reducing cellulite; creams for toning the skin; toning creams [cosmetic]; skin care creams, other than for medical use; body moisturisers; creams for washing; cleansing creams; exfoliant preparations for cleansing the skin (exfoliants); creams for tanning the skin; creams for protecting human skin from external factors (barrier creams); self tanning creams [cosmetic]; aromatherapy creams; skin whitening creams; perfumery; decorative cosmetics;

Class 5 - Creams for medical purposes; medicinal creams for protection of the skin; dietetic health supplements made mainly of vitamins; slimming purposes (medical preparations for -); exfoliants (preparations) for medical purposes;

Class 44 - Slimming salon services; beauty salons; advisory services relating to slimming; slimming salon services; removal of body cellulite; cellulitis treatment services; planning of weight reduction programmes; removal of body cellulite; therapeutic treatment for the body; bodywork therapy; beauty salons.

2 The application was published on 11 January 2013 and the mark was registered

on 22 April 2013.

3 On 30 December 2014, the Dermapharm AG (‘the cancellation applicant’) filed a request for trade mark applied for of the registered mark against trade mark applied for goods and services.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

4 The grounds of the request for trade mark applied for were those laid down in

Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

5 The invalidity request was based on, inter alia, International Registration

No 1 094 750 designating Austria, Bulgaria and Romania of the figurative mark

filed and registered on 8 November 2011 for the following goods and services:

Class 3 - Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soap; perfumery; essential oils, cosmetics, hair lotions; dentifrices;

Class 5 - Pharmaceutical products;

Class 10 - Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; applications for pharmaceutical products; syringes for medical purposes; inhalers;

Class 35 - Advertising; business management; business administration; office functions; wholesale and retail trading services for cosmetics and pharmaceutical products as well as for medical products.

6 By decision of 13 May 2016 (‘the contested decision’), the Cancellation Division trade mark applied for the contested EUTM for all the goods and services. It gave, in particular, the following grounds for its decision:

– The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the cancellation applicant’s International Registration No 1 094 750 designating Bulgaria and Romania.

– The goods in Class 3 are identical and in Class 5 identical and similar. Part of the contested services in Class 44 is similar to the cancellation applicant’s goods and another part has been found to be similar to a low degree.

– Visually, the signs coincide in the verbal element ‘DERMAPHARM’. However, they differ in the letters ‘AG’ of the earlier mark and in the figurative elements of both marks, as described above. Therefore, the signs are visually similar to a low degree.

– Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘DERMAPHARM’, present identically in both signs. The pronunciation differs in the sound of the letters ‘AG’ of the earlier sign, which have no counterparts in the contested sign. Moreover, the public will not describe the figurative devices of the signs. Therefore, the signs are aurally highly similar.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

– Conceptually, the element ‘PHARM’ in both signs alludes to the idea of pharmaceuticals for the relevant public, either on account of their knowledge of English or because there is a similar equivalent word in the relevant language (e.g. ‛farma’ in Romanian). Furthermore, the relevant public will perceive the element ‘Derma’ in both signs as a prefix that indicates skin, either due to its use in Romanian or Bulgarian or on account of their knowledge of English. The relevant public will perceive the depiction of body of a woman in the contested sign as such. The letters ‘AG’ are meaningless for the relevant public. Since the signs will be associated with the same meaning, the signs are conceptually similar to a high degree, as both signs refer to ‛derma’ and ‛pharm’ (in this particular sequence).

– In the present case, the contested goods and services are identical and similar (to varying degrees) to the cancellation applicant’s goods and services. The signs are visually, aurally and conceptually similar by virtue of the verbal element that they have in common, ‘DERMAPHARM’, which constitutes the entire verbal element of the contested mark.

– The marks differ in the letters ‘AG’ of the earlier mark and also in the figurative elements used in both signs. However, these visual and aural differences are not sufficient to exclude a likelihood of confusion, particularly because the marks are aurally highly similar to one another. Therefore, there is a likelihood of confusion on the part of the public.

– It is true that the elements ‘DERMA’ and ‘PHARM’ are either weak or non- distinctive. However, the marks contain an identical combination of these elements, namely ‘DERMAPHARM’. This combination is the only verbal element of the contested sign and the much longer of the two verbal elements of the earlier trade mark, ‘Dermapharm AG’. The figurative elements of the marks are not sufficient to substantially differentiate the marks. In these particular circumstances, the Cancellation Division considers that the coincidence in the word combination ‘DERMAPHARM’ will lead to confusion about the commercial origin of all the contested goods and services.

– Therefore, the application for a declaration of invalidity is well founded on the basis of the cancellation applicant’s International Registration No 1 094 750 designating Bulgaria and Romania. It follows that the contested trade mark must be rejected for all the contested goods and services.

– As earlier right No 1 094 750 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application for a declaration of invalidity was directed, there is no need to examine the other earlier rights invoked by the cancellation applicant and the evidence of use filed.

7 On 11 July 2016, EUTM proprietor filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 13 September 2016.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

8 In its observations in reply, received on 21 November 2016, the cancellation

applicant requests 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:

– The EUTM proprietor did not receive all the evidence and materials and therefore issuing a decision based on evidence where one of the parties could not relate to constitutes an infringement of Article 75 EUTMR.

– The trade mark ‘Dermapharm’ is used for products which can be used only for interval treatment (phase treatment) from all skin diseases which have been treated with corticoids before. This points to a very narrow, specialised circle of potential consumers. Thus the goods in Class 5 of the cancellation applicant and the EUTM proprietor cannot be considered similar.

– The EUTM proprietor has proven long coexistence of the trade marks ‘dermapharm’ on the Polish market. Since 15 April 2016 there has been an examination system in Poland and each and every trade mark which has been registered has not been cancelled and could be used.

– The assumption that the woman’s silhouette has no distinctive character is

incorrect.

– The dominant element in the contested sign is the graphic element depicting a woman’s silhouette. The Office compared the signs only on the basis of the word element, which was previously assessed as having weak or non- distinctive character. Had the Cancellation Division correctly compared these elements: a woman’s silhouette with commercial name ‘Dermapharm AG’, it would have come to the conclusion that there is no risk of misleading the potential consumer.

– Owing to these sufficient differences between the signs, the alleged assumption that on the part of the consumers the EUTM proprietor’s and cancellation applicant’s marks could come from economically-linked undertakings can also be denied. Due to the significant differences between the trade marks visually, the potential relevant public will not assume that the proprietors of the trade marks are economically-linked undertakings. Especially since the goods in Class 3 marked with the trade mark ‘Dermapharm AG’ of the cancellation applicant are not available on the market, despite the obligation to use its trade mark for goods in Classes 3 and 10.

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

– The decision considered the IR designating Bulgaria and Romania and the German trade mark was not the basis for the contested decision. Therefore the EUTM proprietor’s argument about missing material or evidence of use

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

is irrelevant as the decision did not even consider these documents. There has been no infringement of Article 75 EUTMR.

– Any coexistence if ever in Poland is irrelevant as Poland is not the relevant

territory.

– The earlier trade marks are distinctive. DERMAPHARM has been registered as a word mark. All the earlier trade marks are registered at WIPO and have been granted protection.

– The trade marks are not diluted. The EUTM proprietor failed to show any reference in this respect. A simple extract of the TMView database with the element ‘derm’ and ‘pharm’ respectively is by far not suitable to show any decreased distinctiveness of the earlier trade marks of the cancellation applicant as it does not show any use of the trade marks. Furthermore, these records do not show the goods and services in relation to which the trade marks in question were used.

– The trade marks are identical in their word element DERMAPHARM. The sign DERMAPHARM is prominently disclosed in the contested trade mark. The use of the TM symbol evidences that the EUTM proprietor believes that the part DERMAPHARM is the distinctive element.

– Therefore, considering that DERMAPHARM is the only word element of the contested trade mark, the phonetic identity between the marks is evident.

– There is also a certain visual similarity between the marks as they coincide in the identical word element DERMAPHARM. In this respect it is irrelevant that the contested trade mark contains a design element larger in appearance.

– The part DERMAPHARM does play an independent distinctive role in the

overall impression of the contested mark because of the TM sign.

– The shape of a woman is widely used and will be perceived merely as a decorative element regardless of its size. The image of a woman’s body or shape is quite common for cosmetics and thus indistinctive.

– The EUTM proprietor states that the earlier trade marks are merely commercial names. However, it is common for entities to use their trade name as a house mark especially in the cosmetic field, such as LANCASTER, LANCOME, CLARINS, Mary Kay Cosmetics, Shiseido and others. Also it is common practice in particular in the field of cosmetics and pharmaceuticals to use several trade marks on a product.

– The marks may share the same distribution channels as the cancellation

applicant’s products are also distributed via the Internet.

– When weighing up the relevant criteria, the existence of a likelihood of confusion is evident: there is an identity or high similarity between the goods and services which would require a far distance between them to exclude any confusion. Bearing in mind that the dominant and distinctive

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

parts of the marks are phonetically identical and visually similar, this distance is evidently not maintained.

11 In view of the EUTM proprietorʼs claim that it did not receive all of the attachments to the letter of the cancellation applicant of 24 August 2015, the Board, on 10 February 2017, sent the EUTM proprietor all the annexes and attachments. The EUTM proprietor was given one month period to comment on the attachments and annexes. No comments were filed.

12 On 11 February 2017, the Office, based on the EUTM proprietor’s request, recorded the transfer of the contested EUTM in favour of the assignee EVELINE COSMETICS BRAND CONCEPT DEVELOPMENT sp. z o.o (hereinafter also referred to as ‘the EUTM proprietor’).

Reasons

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

49 CTMIR. It is, therefore, admissible.

Preliminary issue

14 The EUTM proprietor claims in its statement of grounds that it did not have access to the entire file. It requested to make specific items of evidence available and argued that by not providing the entire evidence, the Cancellation Division violated Article 75 EUTMR which stipulates that the decisions of the Office must be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. In view of the EUTM proprietor’s allegations, the Board, on 10 February 2017, sent the EUTM proprietor all the annexes and attachments in order to make sure that both parties had full access to the file. The Board observes that the EUTM proprietor had the opportunity to comment on the entire evidence and hence any potential procedural deficiency had been remedied at the appeal stage.

Article 53(1)(a) in conjunction with Article 8(1)(b) EUTMR

15 Pursuant to Article 53(1)(a) EUTMR, an EU trade mark may be declared invalid on application to the Office where there is an earlier trade mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 1 or paragraph 5 of that article are fulfilled.

16 In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its similarity to the earlier trade mark and the identity or similarity of the goods covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

17 The likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the marks, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

18 The similarity of the marks and the similarity of the goods are interdependent criteria in the sense that a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks, and vice versa (see 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Relevant public and territory 19 It must be recalled that the perception of trade marks in the mind of the average consumer of the type of goods and/or services in question plays a decisive role in the global assessment of the likelihood of confusion.

20 The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for (24/05/2011, T-408/09, ancotel, EU:T:2011:241, § 38 and the case-law cited). Furthermore, the relevant public is identified by means of the nature of the goods and services covered by the conflicting marks.

21 For the purposes of the global appreciation, the average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods or services in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

22 Given the nature of these goods and services, they are likely to be aimed at the public at large as well as professional consumers with specific professional knowledge or expertise. The degree of attention will be relatively high for the goods and services which have medical purposes and can have an impact on health and the human body. On the other hand it will be of an average degree in relation to the everyday goods such as creams for washing, cleansing creams or self-tanning creams.

23 Like the Cancellation Division, the Board will initially focus its assessment on the earlier International Registration No 1 094 750 designating Bulgaria and Romania.

Comparison of the signs

24 The global appreciation of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarities between the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). 25 The assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components (20/09/2007, C-193/06 P, Quicky, EU:C:2007:539, § 42).

26 The signs to be compared are: 27

The earlier mark is a figurative mark consisting of the verbal elements ʽDermapharm AGʼ accompanied by a curved line with a blue circular element. The contested mark is a figurative mark containing the verbal element ʽdermapharmʼ in turquoise, at the top of the mark and depiction of the side view of a woman’s body from her arms to the upper part of the calf. The buttock area is covered by fabric and the upper body by a brassiere, both turquoise. On the left side of the mark there is a curved turquoise shape.

28 Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, with respect to a verbal element, they will break it down into components which suggest a concrete meaning or which resemble known words (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, the Cancellation Division rightly considered that the word ‘DERMAPHARM’, which is present in both signs, will be understood by the relevant consumer as consisting of two parts, ‘DERMA’ and ‘PHARM’. The element ‘DERMA’ is a term of Greek origin which is widely understood to denote ‘skin’, ‘cutis’ or ‘dermis’. Not only is it a term used in medical circles, it is also known to the population at large. The General Court has also confirmed that ‘DERMA’ is used in the formation of adjectives which describe the skin (21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 44). For example, the root ‘DERMA’ is used to form the word dermatologist

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Earlier marks Contested sign

(дерматолог in Bulgarian and dermatolog in Romanian) or dermatological (дерматологични in Bulgarian and dermatologice in Romanian). The element ‘PHARM’ will be understood by the relevant public as alluding to pharmaceuticals. Bearing in mind that the relevant goods and services relate to health or beauty care, the term ‘DERMAPHARM’ has a low degree of distinctiveness since it alludes to the fact that the goods and services in question relate to skin and are based on pharmaceutical substances. A curved line and the circle in the earlier mark play only a decorative role and have only a low degree of distinctiveness. As regards the figurative element of the contested sign depicting a womanʼs body, it possesses a limited degree of distinctiveness for the relevant goods and services all of which relate to health or beauty care. This element plays an ornamental role in the contested mark considered as a whole and will also be seen as a descriptive reference designating the target public of the goods and services in question.

29 Visually, the marks are similar to the extent that the element ʽDERMAPHARMʼ is present in both signs. On the other hand the marks differ in the letters ʽAGʼ. Furthermore, the marks differ visually in their figurative elements. It must be noted that where the marks consist of both verbal and figurative elements, the verbal elements of the signs have a stronger impact on the visual impression. This is because the public does not tend to analyse signs and will more easily refer to the signs under comparison by their verbal elements rather than by describing their figurative components (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). More importantly, although the figurative elements of the contested sign overshadow the verbal element on account of their size and position, it must also be taken into account that they possess a limited degree of distinctiveness on account of their decorative function and allusion to the public targeted. Therefore, the Board considers that the signs are visually similar to an average degree.

30 Aurally, the pronunciation coincides in the sound of the verbal element ʽDERMAPHARMʼ which is present identically in both signs. The pronunciation differs in the sound of the letters ʽAGʼ of the earlier sign which have no counterparts in the contested sign. The figurative elements of the marks are not likely to be perceived phonetically. Therefore, the signs are aurally highly similar.

31 As indicated above, the element ʽDERMAPHARMʼ composed of elements ‘DERMA’ and ‘PHARM’, will be understood as a reference to the fact that the goods and services in question relate to skin and are based on pharmaceutical substances. The letters ʽAGʼ are meaningless for the relevant public. The figurative element of the contested sign will be seen as the depiction of a woman’s body and hence as a descriptive reference to the target public of the goods and services in question. Therefore, the signs are conceptually similar to the high degree.

32 Having regard to visual, phonetic and conceptual similarities between the signs, the Board finds that the signs are similar to a high degree.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Comparison of the goods and services

33 The assessment of the similarity of the goods and services must take into account all relevant factors, which include their nature, their purpose and method of use, and whether they are in competition with each other or complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T-443/05, Piranam, EU:T:2007:219, § 37).

34 Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. That implies that complementary goods or services can be used together, which presupposes that they are intended for the same public (12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48 and case-law cited therein).

35 The reference point is whether the relevant public will perceive the goods or services concerned as having a commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

36 The goods and services to be compared in the present case are the following:

Earlier goods and services Contested goods and services

Class 5 - Pharmaceutical products;

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

37 The contested decision carried out a detailed comparison of the goods and services in question, finding that they were partly identical and to some extent similar or similar to a low degree. The parties in their submissions have not disputed the conclusions of the Cancellation Division when it comes to the identity or similarity between the earlier goods and services and the contested goods and services. The Board confirms that assessment and refers to its underlying reasoning, as stated in the contested decision.

38 For sake of completeness, the Board notes that as regards the goods in Class 5 covered by the conflicting marks, the EUTM proprietor argues that the Cancellation Division erred in disregarding the fact that the contested mark is used for products which can be used only for interval (phase) treatment for all skin diseases which have been treated with corticoids before. Those skin diseases include eczema, keratoconjunctivitis and psoriasis. However, the Board finds that the use made of the contested sign is irrelevant for the proceedings at hand (28/06/2012, T-133/09, B. Antonio Basile 1952, EU:T:2012:327, § 18). In inter partes proceedings, such as the present one, the Office and indeed the Boards of Appeal must base their procedure on the list of goods and services as registered or applied for (see by analogy 17/01/2012, T-249/10, Kico, EU:T:2012:7, § 23). As such, the arguments set out by the EUTM proprietor with regard to the actual use of the contested sign with respect to the specific medical indications, is irrelevant.

Global assessment of the likelihood of confusion

39 According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1) (b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C- 39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

40 A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

41 In the assessment of likelihood of confusion, one of the factors to be taken into account is the distinctive character of the earlier mark. The more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (27/04/2006, C-235/05 P, Flexi Air, EU:C:2006:271, § 36).

42 The cancellation applicant did not explicitly claim that its earlier mark has acquired reputation or enhanced distinctiveness through intensive use.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Therefore, the assessment of the distinctiveness of the earlier mark will rest on its inherent distinctiveness. As indicated above, due to the link to the relevant goods and services the term ‘DERMAPHARM’ of the contested mark has a low degree of distinctiveness since it alludes to the fact that the goods and services in question relate to the skin and are based on pharmaceutical substances. A curved line and the circle in the earlier mark do not contribute to the distinctiveness of the mark considered as a whole. It must therefore be considered that the earlier mark possesses a less than normal degree of distinctiveness. By the same token, the Board finds that the contested mark must also be considered weak since it also contains the elements ‘DERMAPHARM’ and the figurative elements play an ornamental role and possess a limited degree of distinctiveness for the relevant goods and services all of which relate to health or beauty care.

43 According to the case-law of the Court, when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’ (24/05/2012, C- 196/11, F1-Live, EU:C:2012:314, § 40-41).

44 In that context, it should be noted that, although the distinctive character of the earlier mark must be taken into account for the purposes of assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered. Granting excessive importance to the fact that the earlier mark has only a weak distinctive character would have the effect that the factor of the similarity of the marks at issue would be disregarded in favour of the factor based on the distinctive character of the earlier mark. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs at issue. Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) EUTMR (23/03/2012, T-157/10, Alixir, EU:T:2012:148, § 27-28; 08/05/2012, T-244/10, 7 Seven Fashion Shoes, EU:T:2012:219, § 40 and 22/05/2012, T-273/10, O•live, EU:T:2012:246, § 30).

45 Insofar as the EUTM proprietor refers to the judgment in the case 05/04/2006, T-344/03, Selezione Oro Barilla, EU:T:2006:105, the Board considers that the circumstances of the present case differ from those prevailing in the case reviewed by the Court. Contrary to the present case, the case before the Court involved conflicting marks which apart from descriptive elements contained distinctive and non-descriptive verbal elements which were capable of excluding the likelihood of confusion.

46 While it is true that the conflicting goods are items generally bought on sight and hence the visual aspects are more important, it remains that they may also be ordered orally, for example when asking the shop assistant or pharmacist for a specific brand or making telephone inquiries at different shops. In addition the

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

consumers may be prompted to choose from categories of the goods and services in question in response to television or radio advertisements or because they have heard of them being spoken about, in which case they might retain the phonetic impression of the mark in question, as well as the visual aspect. However, the Board considers that the consumers might seek professional advice for a number goods such as ʽslimming products (cosmetics), other than for medical purposes; creams for reducing celluliteʼ in Class 3 and the goods designated by the contested mark in Class 5. In any case, as indicated above the visual similarity is not negligible in the present case and hence the high degree of aural similarity cannot be neutralised by importance visual aspect.

47 The differences between the signs have been fully analysed previously, where an average degree of visual similarity as well as a high degree of aural and conceptual similarity were found mainly on the basis of the presence of the verbal element ʽDERMAPHARMʼ in both marks. The remaining differences between the signs, namely the letter ʽAGʼ in the earlier mark and the figurative elements are not sufficient to counteract the similarities so as to safely exclude likelihood of confusion. As indicated above, figurative elements in the marks have less impact on the consumer than the verbal elements. The relevant consumers will more easily refer to the signs in question by their verbal element than by describing their figurative elements. Moreover, the main figurative element of the contested sign, namely the depiction of a woman’s body does not possess a full degree of distinctiveness on account of its decorative function and allusion to the targeted public as well as to the goods and services in question which relate to health and beauty.

48 The relevant public rarely has a chance to make a direct comparison between the signs but must place his or her trust in the imperfect recollection of the marks in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26). Having regard to the identity and similarity (to varying degrees) between the goods and services and the high degree of similarity found to exist between the signs, the relevant consumers are likely to confuse the marks or believe that the goods and services originate from the same undertaking or from economically- related undertakings.

49 That conclusion cannot be invalidated by the EUTM proprietor’s argument that the earlier mark corresponds to the commercial name of the cancellation applicant. The mere coincidence of a trade markʼs element with the name of the cancellation applicant cannot be ipso facto to the detriment of the markʼs distinctiveness. The assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions, whether implemented or not, which are by their very nature subjective for the proprietors of the marks (see, by analogy, 21/01/2016, T-846/14, SPOKeY, EU:T:2016:24, § 26 and 15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59).

Partial use of the earlier mark(s)

50 The EUTM proprietor further argues that the cancellation applicant, despite having registered its earlier mark for goods in Class 3 and 10 does not have any cosmetic products in its assortment and the earlier mark is used exclusively for products which can be used only for interval treatment (phase treatment) for all skin diseases which have been treated with corticoids before. It must be

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

mentioned from the outset, that the EUTM proprietor requested the cancellation applicant to submit proof of use regarding the earlier German registration No 2 072 507 which is outside the scope of examination for the purposes of the present decision.

51 According to Article 57(2) and (3) EUTMR, if the EUTM proprietor so requests, the proprietor of earlier national mark, being party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the EU in connection with the goods or services in respect of which it is registered and which it cites as justification for its application, or that there are proper reasons for non-use. If, at the date on which the contested EUTM application was published, the earlier mark had been registered for not less than five years, the [cancellation] applicant must submit proof that, in addition, the conditions contained in Article 42(2) EUTMR were satisfied at that date. According to the same provision, in the absence of such proof, the application for a declaration of invalidity will be rejected.

52 In the present case the application for a declaration of invalidity was filed on 30 December 2014. The earlier international registration designating, inter alia, Romania and Bulgaria was registered on 8 November 2011 that is less than five years at the date of the application for a declaration of invalidity. It follows that the Cancellation Division did not err in disregarding the fact that the cancellation applicant allegedly used the earlier mark only with regard to a narrow list of goods.

Co-existence of the marks

53 Furthermore, the EUTM proprietor argues that several trade marks containing the element ʽDERMAPHARMʼ coexisted with the earlier mark at least since 2008 in Poland after the examination by the Polish Patent Office and without any objection being raised by the cancellation applicant.

54 The Board notes that the EUTM proprietor has submitted no evidence to show that the cited trade marks have co-existed with the earlier mark in the relevant territory, namely in Romania and Bulgaria. Therefore, this argument is not well founded.

55 Insofar as the EUTM proprietor relies in this respect on the decision of the First Board of Appeal in Case R 415/1999-1, SHIELD/GOLDSHIELD, the Board notes that the cited case involved the peaceful co-existence of an earlier United Kingdom mark and two United Kingdom registrations based on which the applicant claimed seniority when filing the EUTM application. Contrary to the present case, the applicant succeeded in demonstrating the peaceful co-existence in the relevant territory, namely in the United Kingdom. Therefore, no analogy can be made as regards the contested EUTM registration since the alleged peaceful coexistence in Poland cannot serve to exclude the likelihood of confusion in Romania and Bulgaria.

Bad faith

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

56 The EUTM proprietor argues that lack of real use of the earlier trade mark for goods in Class 3 and 10 for five years from the registration exclusively shows that the cancellation applicant filed the earlier German and international registration in bad faith and despite the lack of a real intention to use the trade mark ʽDermapharm AGʼ for goods in Class 3 and 10, the cancellation applicant effectively prevented third parties, including the EUTM proprietor, from seeking legal protection for the mark ʽDermapharmʼ. These arguments must be rejected on two grounds.

57 Firstly, the bad faith argument must be dismissed because what is at issue in the present proceedings is not the validity of the earlier right but that of the later right, i.e. the EUTM registration. The application for a declaration of invalidity is based on Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR which delineate the scope of the present proceedings. Bad faith can only be raised as a ground during invalidity proceedings against a registered EUTM. Bad faith does not fall within the relative grounds of invalidity and can only be invoked in order to obtain a declaration of invalidity of a mark under absolute grounds pursuant to Article 52(1)(b) EUTMR. It follows that this claim has to be rejected as ineffective in proceedings under 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR (see by analogy 04/07/2014, T-1/13, Glamour, EU:T:2014:615, § 16).

58 Secondly, as indicated above as well as in the contested decision, both the Cancellation Division and the Board, for reasons of procedural economy, decided to focus their assessment on the earlier International Registration No 1 094 750 designating Bulgaria and Romania. There is no reason why lack of real use of the German registration No 302 011 015 854 in Germany should have an impact on the validity and the scope of protection of the international registration designating Bulgaria and Romania which in any case do not fall into the scope of the present proceedings.

Priority of use in Class 3

59 The EUTM proprietor criticizes the Cancellation Division for not taking into account that the EUTM proprietor was first to use the sign ʽDERMAPHARMʼ in Class 3. In that respect the EUTM proprietor refers to the Polish trade mark No R.237626 ʽeveline dermapharmʼ and to EUTM No 10 427 607. The Board notes that in cancellation proceedings based on Article 53(1)(a) EUTMR the Office should take into consideration only the European Union trade mark, as filed, and compare it with the earlier trade marks on which the cancellation is based. Therefore, in absence of the earlier priority date pertaining to the contested EUTM, the prior applications or use of trade marks containing the word ʽDERMAPHARMʼ, may result in an action for invalidity against the cancellation applicant’s trade marks, but are irrelevant in the context of the present proceedings.

Conclusion

60 Consequently, the Board finds that the contested decision rightly found there to be a likelihood of confusion in the minds of the relevant public in Romania and

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Bulgaria, in accordance with Article 8(1)(b) EUTMR and on that ground the contested mark was rightly declared invalid in its entirety in accordance with Article 53(1)(a) EUTMR.

61 Since the application for a declaration of invalidity is successful in its entirety based on earlier International Registration No 1 094 750 designating Bulgaria and Romania, the Board finds it unnecessary to examine the other earlier rights (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

62 For these reasons, and contrary to the EUTM proprietor’s assertions, the appeal

is dismissed and the contested decision is upheld in full.

Costs

63 Since the appeal is dismissed and the EUTM proprietor is the losing party, it must bear the cancellation applicant’s fees and costs in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.

64 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 as specified in Rule 94(2) and (7)(d) CTMIR, irrespective of whether they have actually been incurred. With respect to the costs of the cancellation proceedings, the contested decision already contains a decision allocating the costs; this remains unchanged. Any final decision fixing the amount of costs shall be enforceable pursuant to Article 86 EUTMR.

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the EUTM proprietor to bear the cancellation applicant’s costs in

the appeal proceedings, which are fixed at EUR 550.

Signed

G. Humphreys

Signed

A. Kralik

Signed

A. Szanyi Felkl

Registrar:

Signed

H.Dijkema

6/6/2017, R 1261/2016-5, dermapharm (fig.) / Dermapharm AG (fig.) et al.

DERMAPHARM | Decision 261/2016-5

Start your Trademark Study today!