CANCELLATION No 35 908 C (INVALIDITY)

Galenia Biotecnologie SRL, Via Berengario, 11 20149 Milano, Italy (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative)

a g a i n s t

Laboratoires Noreva-Led (SASU), 66, avenue des Champs Elysées, 75008 Paris, France (EUTM proprietor), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative).

On 21/01/2020, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 9 978 305 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR  1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 9 978 305 for the word mark ‘KERAPIL’ . The application is based on Italian trade mark registration No 1 101 771 for the trade mark (type non defined). The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are identical and that the goods are identical or similar, from which it concludes that there is a likelihood of confusion and that the contested trade mark registration should be declared invalid in its entirety.

The EUTM proprietor did not submit any reply.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The signs

	KERAPIL
Earlier trade mark	Contested trade mark

The relevant territory is Italy

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

However, in this particular case, the issue of the distinctiveness of elements has no bearing on the comparison and on the conclusion below, as the verbal elements of the sign are the same and as neither includes additional elements.

The type of the earlier mark is described as ‘other’ in the invalidity application and as ‘undefined’ in the evidence submitted by the applicant in support of the earlier mark as well as in the Italian’s office database accessible through the tool TMview (the applicant has accepted that the information for the trade mark be imported from the relevant official database). However, this does not prevent the Cancellation Division from comparing the signs considering that the comparison concerns the signs as registered and that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since both types of mark have a graphic form capable of creating a visual impression (04/05/2005, T‑359/02, EU:T:2005:156, STAR TV, § 43).

The contested mark is the word ‘KERAPIL’ and the earlier mark consists of the same word in very moderately stylized, bold, upper case letters. This purely decorative feature of the earlier mark has barely any impact on the visual comparison of the signs and no impact whatsoever on the aural and conceptual comparisons.

Therefore, the signs are considered to be quasi-identical. This holds true irrespective of the distinctive character of the verbal element ‘KERAPIL’.

As the requirement that the signs be similar is fulfilled, the examination of the likelihood of conclusion may proceed.

2. The goods

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.

The contested goods are the following:

Class 3: Cosmetics, creams, gels, lotions, pomades, preparations for skin care, except make-up preparations; Soaps, Perfumes, Cosmetic preparations for baths, Hair lotions, Shampoos.

Class 5: Pharmaceutical preparations for skin care, namely dermatological preparations for the treatment of keratosis pilaris.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’ is used in the EUTM proprietor’s list. This term indicates a restrictive relationship between a broad category of goods/services and individual goods/services in the sense that it restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 3

The following goods are identically mentioned in both lists of goods (including synonyms): cosmetics, soaps, perfumes, hair lotions.

The contested creams, gels, lotions, pomades, preparations for skin care, except make-up preparations; cosmetic preparations for baths, shampoos are included in, or overlap with the applicant’s cosmetics and are also identical.

Contested goods in Class 5

The contested pharmaceutical preparations for skin care, namely dermatological preparations for the treatment of keratosis pilaris and the applicant’s cosmetics may be found in the same points of sales namely pharmacies. The contested goods are intended for treatment of keratosis pilaris which is a common, harmless skin condition that causes dry, rough patches. The applicant’s cosmetics include cosmetics to improve or protect the appearance of the skin. Therefore, the goods at issue also share links in terms of their purposes and target the same public. Additionally, they are often manufactured by the same companies. Therefore, these goods are similar.

3. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and/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).

The contested goods are identical or similar to the applicant’s goods and the signs are quasi-identical.

This implies that consumers will not be able to distinguish between the trade marks in dispute.

Therefore, there is a likelihood of confusion on the part of the public.

This conclusion would hold true even if the distinctiveness of the coinciding element and the earlier mark as a whole was very low and irrespective of the degree of attention and the specialisation of the relevant public. Therefore, these factors need not be assessed.

Consequently, the application is well founded on the basis of the applicant’s Italian trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Richard BIANCHI

Catherine MEDINA

Jessica LEWIS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds 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.