CANCELLATION No 11 974 C (INVALIDITY)

Thalgo TCH, Domaine des Châtaigniers, 83540 Roquebrune-sur-Argens, France (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Radoslaw Pielczyk, Gentiaan 11, 7873CZ Odoorn, The Netherlands, (EUTM proprietor).

On 21/03/2017, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 649 324 is declared invalid for some of the contested goods, namely:

Class 3: Soaps; cosmetics, hair lotions; Aloe vera preparations for cosmetic purposes; Shaving stones [astringents]; Antiperspirants [toiletries]; Balms other than for medical purposes; Colorants for toilet purposes; Cosmetic dyes; Lip glosses; Beard dyes; Eyebrow cosmetics; Tissues impregnated with cosmetic lotions; Make-up removing preparations; Depilatories; Deodorants for human beings; Hair dyes; Shaving soap; Shaving preparations; Henna [cosmetic dye]; Decorative transfers for cosmetic purposes; Cosmetic preparations for baths; Adhesives for affixing false hair; Cosmetics; Cosmetic preparations for slimming purposes; Make-up; Cosmetic creams; Skin whitening creams; Nail polish; Varnish-removing preparations; Lotions for cosmetic purposes; Make-up preparations; Beauty masks; Cleansing milk for toilet purposes; Almond milk for cosmetic purposes; Cakes of soap; Soaps; Deodorant soap; Disinfectant soap; Medicated soap; Almond soap; Antiperspirant soap; Soap for foot perspiration; Nail art stickers; Neutralizers for permanent waving; Color-removing preparations; Oils for cosmetic purposes; Oils for toilet purposes; Eyebrow pencils; Cosmetic pencils; Nail care preparations; Hair lotions; After-shave lotions; Pomades for cosmetic purposes; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Adhesives for cosmetic purposes; Make-up powder; Pumice stone; Cosmetic preparations for eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Cosmetic preparations for skin care; Bath salts, not for medical purposes; Dry shampoos; Shampoos; Lipsticks; False nails; Talcum powder, for toilet use; Greases for cosmetic purposes; Toiletries; Astringents for cosmetic purposes; Mascara; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Petroleum jelly for cosmetic purposes; Hair spray; Hair waving preparations; Hydrogen peroxide for cosmetic purposes; Depilatory wax; Mustache wax; Bleaching preparations [decolorants] for cosmetic purposes; Massage gels other than for medical purposes; Cosmetic kits; Lacquer-removing preparations.

3. The European Union trade mark remains registered for all the goods in Classes 5 and 8 and the remaining goods in Class 3, namely:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Perfumery, essential oils,; Dentifrices; Ammonia [volatile alkali] [detergent]; Alum stones [astringents]; Non-slipping liquids for floors; Non-slipping wax for floors; Antistatic preparations for household purposes; Badian essence; Cake flavourings [essential oils]; Flavorings for beverages [essential oils]; Aromatics [essential oils]; Bergamot oil; Laundry soaking preparations;; Amber [perfume]; Cleaning preparations; Detergents other than for use in manufacturing operations and for medical purposes; Deodorants for animals; Deodorants for pets; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal essences; Ethereal oils; Paint stripping preparations; Geraniol; Heliotropine; Jasmine oil; Ionone [perfumery]; Polishing rouge; Joss sticks; Incense; Scale removing preparations for household purposes; Smoothing stones; Color-brightening chemicals for household purposes [laundry]; Leather preservatives [polishes]; Corundum [abrasive]; Cosmetics for animals; Cleaning chalk; Whiting; Shoe cream; Laundry starch; Smoothing preparations [starching]; Silicon carbide [abrasive]; Bases for flower perfumes;; Tripoli stone for polishing; Abrasives; Abrasive paper; Potpourris [fragrances]; Mint for perfumery; Mint essence [essential oil]; Soap for brightening textile; Quillaia bark for washing; Breath freshening sprays; Degreasers other than for use in manufacturing processes; Fumigation preparations [perfumes]; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oil of turpentine for degreasing; Oils for perfumes and scents; Essential oils of citron; Essential oils of lemon; Grinding preparations; Sandpaper; Wallpaper cleaning preparations; Pastes for razor strops; Breath freshening strips; Shoe polish; Polish for furniture and flooring; Perfumery; Perfumes; Musk [perfumery]; Sandcloth; Glass cloth; Javelle water; Polishing stones; Polishing creams; Polishing paper; Furbishing preparations; Denture polishes; Polishing preparations; Shining preparations [polish]; Volcanic ash for cleaning; Canned pressurized air for cleaning and dusting purposes; Laundry glaze; Dry-cleaning preparations; Laundry preparations; Preparations to make shiny the leaves of plants; Preparations for cleaning dentures; Rust removing preparations; Safrol; Sachets for perfuming linen; Cloths impregnated with a detergent for cleaning; Leather bleaching preparations; Starch glaze for laundry purposes; Washing soda, for cleaning; Bleaching soda; Soda lye; Bleaching salts; Windscreen cleaning liquids; Dentifrices; Scouring solutions; Air fragrancing preparations; Drying agents for dishwashing machines; Laundry blueing; Shampoos for pets; Shoemakers' wax; Emery; Emery paper; Emery cloth; Floor wax removers [scouring preparations]; Turpentine, for degreasing; Terpenes [essential oils]; Diamantine [abrasive];; Preparations for unblocking drain pipes; Mouth washes, not for medical purposes; Carbides of metal [abrasives]; Gaultheria oil; Eau de Cologne; Lavender water; Toilet water; Scented water; Shoe wax; Floor wax; Waxes for leather; Tailors' wax; Polishing wax; Laundry wax; Cobblers' wax; Laundry bleach; Stain removers; Dental bleaching gels; Fabric softeners for laundry use.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 11 649 324, namely against all the goods in Class 3 and some of the goods in Class 5. The application is based on French trade mark registration No 1 490 856. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that its earlier French trade mark DERMÉPIL (fig.) is highly similar to the contested EUTM DERMAEPIL (fig.). The signs are visually and aurally highly similar as their dominant elements only differ in one letter. Moreover, the signs are overall fanciful terms, although the applicant admits that the prefix ‘DERM’ could be associated with ‘derma’ (related to the skin) and ‘PIL’ with ‘épilation’ (hair removing). In this sense, the signs share the same concepts. As regards the comparison of the goods, the applicant considers that all the contested goods in Class 3 are included in the broad category of ‘perfumery products, cosmetics’ of the earlier French trade mark. It submits evidence from the Internet to the effect that numerous goods fall under the category ‘perfumery products and cosmetics’ (Annex 2). The applicant further claims that the contested goods in Class 5 are similar to the applicant’s goods as they concern hygiene and the care of the skin and body. As a result of the foregoing, the applicant considers that there is a likelihood of confusion between the marks in conflict.

The EUTM proprietor requests the applicant to prove the genuine use of the earlier French trade mark. It invokes the provisions of the French Intellectual Property Law concerning the obligation of use. According to the EUTM proprietor, a ‘brief search’ of the earlier trade mark in Google has not given any result regarding the use of the trade mark (Attachment 1). It further contends that the applicant does not offer products under the figurative trade mark but under a word mark (Attachment 2) or the use is for different trade marks (Attachment 3).

In reply to the EUTM proprietor’s request, the applicant submits evidence of use of the earlier French trade mark (Exhibits 1 to 23). The applicant also refers to the French Intellectual Property Law and concludes that it has proven that the earlier figurative mark has been put to genuine use in France during the relevant period for the relevant goods. In this context, the applicant explains that it has granted a trade mark license agreement to its subsidiary PERRON RIGOT SAS which has been renewed until now. PERRON RIGOT SAS offers its waxing goods on the worldwide market, in particular in France under the earlier trade mark. Finally, in reply to the EUTM proprietor’s argument regarding the Google search hits, it points out that the earlier trade mark had been mistyped (‘dermepil’ instead of ‘dermépil’). It submits the search results with the correct spelling (Exhibit 24). It contests the rest of the EUTM proprietor’s arguments regarding the genuine use of the earlier French trade mark.

PROOF OF USE

As a preliminary remark, it should be noted that the EUTM proprietor and the applicant’s references to Article L.714-5 of the French Intellectual Property Law are not pertinent in the context of the present proceedings. The applicable law in the present proceedings is the EUTMR and the EUTMIR, and in particular Article 57(2) and (3) EUTMR and Rule 40(6) in conjunction with Rule 22(2) EUTMIR.

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application) if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the French trade mark No 1 490 856:

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 22/10/2015. The contested trade mark was published on 31/10/2013. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in France from 22/10/2010 to 21/10/2015 inclusive. Since the earlier mark was registered more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 31/10/2008 to 30/10/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 3: Perfumery products, cosmetics, including wax for hair removal.

According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 12/02/2016 the applicant was given three months to submit proof of use, extended until 17/07/2016.

On 18/07/2016 the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Exhibit 1: Trade mark Licence agreement (in French) of 20/07/2004 between Thalgo TCH and Perton Rigot;

• Exhibit 2: Statement by Thalgo TCH CEO of 18/07/2016 declaring that Laboratoires EPL Perron Rigot is duly authorised to use the earlier French trade mark;

• Exhibit 3: labelling samples in French of, according to the applicant, waxing products, such as:

• Exhibit 4: invoices from the company Tema Design addressed to Perron Rigot regarding ‘etiquettes escential Monoï, Lavande et Thé vert’ dated 15/01/2009;

• Exhibit 5: labelling sample in French of, according to the applicant, disposable depilatory wax with the following representation of the trade mark:

• Exhibit 6: an advertising poster in French (undated) with the following reference: ‘expert of intimate hair removal’ with the trade mark represented as follows:

• Exhibit 7: 2010 catalogue in French, including in page 13 a reference to waxing products and their prices sold under ‘Dermépil’ trade mark.

• Exhibit 8: 38 invoices dated between 2009 and 2011 to various customers in France for products sold by Perron Rigot under the trade mark ‘dermépil’ (for instance, DERMEPIL FLEUR D’ORANGER or DERMEPIL MONOI). The prices have been deleted.

• Exhibit 9 to 21: supporting documents showing the activities of the customers’ appearing in the invoices of Exhibit 8, mostly beauty salons and spas.

• Exhibit 22: Printout of 13/07/2016 from the webpage www.dermepil.fr showing a number of products sold under the trade mark ‘Dermépil’ represented as follows: for pre-waxing (scrub, lotions), waxing (roll-on, strips, wax), post-waxing (moisturizing, ingrown hairs) and waxing accessories (spatulas, empty-tin, strips, wax heater). According to the applicant, it shows that it is developing its range of waxing products.

• Exhibit 23: printout of 13/07/2016 from the French webpage www.epilation-expert.com and www.1001pharmacies.com showing the online sale of various ‘Dermépil’ products (wax, care for ingrown hairs, moisturizing spray, strip wax, scrub). The trade mark is represented as in Exhibit 22.

The Cancellation Division finds that the abovementioned evidence proves that the earlier trade mark has been genuinely used in the course of trade.

Place of use

The invoices and catalogue show that the place of use is France. This can be inferred from the language of the documents and some addresses in this Member State. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period (in particular, the catalogue and the invoices).

As regards the evidence of use dated outside the relevant period, it should be noted that it is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the applicant’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period (internet printouts dated 2016) confirms use of the applicant’s mark within the relevant period. This is because it confirms the continuous use of the trade mark ‘Dermépil’ by PERRON RIGOT.

All in all, the Cancellation Division considers that the evidence of use sufficiently indicates the time of use. Admittedly, even if the evidence is mostly dated within the relevant periods, there is hardly any evidence for the last three years of the second relevant period, namely from 2013 to 2015. However, an overall assessment of the evidence shows that used has been made within the two relevant periods of time. In this regard, it should be noted that the use requirement does not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52) but use within the two five-year periods.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the catalogue and the invoices, provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

1. Use as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the representation of the trade mark in the labelling of the products and the advertising material shows that the differences with the registered trade mark, if any, do not alter the distinctive character of the mark. In particular, the use of the trade mark in various colours does not affect its distinctiveness as the main elements are still clearly present and visible (the element DERMEPIL and the silhouette of a woman) and the contrast of shades is respected. Moreover, the stylisation of the dominant element ‘DERMEPIL’ is respected. As a result, the evidence of use sufficiently indicates that the trade mark has been used as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

2. Use for the relevant goods

The earlier mark is registered for perfumery products, cosmetics, including wax for hair removal. However, the evidence does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 57(2) EUTMR, if the earlier trade mark has been used for only some of the goods or services for which it is registered it will, for the purposes of the examination of the application for a declaration of invalidity, be deemed to be registered only for those goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.’

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

In the present case, the evidence proves use only for wax products for depilatory purposes. These goods can be considered to fall into an objective subcategory of perfumery products and cosmetics, namely depilatory preparations. Therefore, the Cancellation Division considers that the evidence shows genuine use of the trade mark only for the following goods:

Class 3: Depilatory preparations.

LIKELIHOOD OF CONFUSION — ARTICLE 53(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 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: Depilatory preparations.

The contested goods 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; Ammonia [volatile alkali] [detergent]; Aloe vera preparations for cosmetic purposes; Alum stones [astringents]; Shaving stones [astringents]; Antiperspirants [toiletries]; Non-slipping liquids for floors; Non-slipping wax for floors; Antistatic preparations for household purposes; Badian essence; Cake flavourings [essential oils]; Flavorings for beverages [essential oils]; Aromatics [essential oils]; Balms other than for medical purposes; Colorants for toilet purposes; Cosmetic dyes; Bergamot oil; Laundry soaking preparations; Lip glosses; Beard dyes; Eyebrow cosmetics; Amber [perfume]; Tissues impregnated with cosmetic lotions; Cleaning preparations; Make-up removing preparations; Depilatories; Detergents other than for use in manufacturing operations and for medical purposes; Deodorants for human beings or for animals; Deodorants for pets; Scented wood; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal essences; Ethereal oils; Hair dyes; Paint stripping preparations; Geraniol; Shaving soap; Shaving preparations; Heliotropine; Henna [cosmetic dye]; Jasmine oil; Ionone [perfumery]; Polishing rouge; Joss sticks; Incense; Decorative transfers for cosmetic purposes; Scale removing preparations for household purposes; Smoothing stones; Cosmetic preparations for baths; Adhesives for affixing false hair; Color-brightening chemicals for household purposes [laundry]; Leather preservatives [polishes]; Corundum [abrasive]; Cosmetics; Cosmetics for animals; Cosmetic preparations for slimming purposes; Make-up; Cleaning chalk; Whiting; Shoe cream; Cosmetic creams; Skin whitening creams; Laundry starch; Smoothing preparations [starching]; Silicon carbide [abrasive]; Bases for flower perfumes; Nail polish; Varnish-removing preparations; Lotions for cosmetic purposes; Tripoli stone for polishing; Make-up preparations; Beauty masks; Abrasives; Abrasive paper; Potpourris [fragrances]; Mint for perfumery; Mint essence [essential oil]; Cleansing milk for toilet purposes; Almond milk for cosmetic purposes; Cakes of soap; Soaps; Deodorant soap; Disinfectant soap; Soap for brightening textile; Medicated soap; Almond soap; Antiperspirant soap; Soap for foot perspiration; Quillaia bark for washing; Nail art stickers; Neutralizers for permanent waving; Color-removing preparations; Breath freshening sprays; Degreasers other than for use in manufacturing processes; Fumigation preparations [perfumes]; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oil of turpentine for degreasing; Oils for cosmetic purposes; Oils for perfumes and scents; Essential oils of citron; Essential oils of lemon; Oils for toilet purposes; Eyebrow pencils; Cosmetic pencils; Grinding preparations; Sandpaper; Wallpaper cleaning preparations; Pastes for razor strops; Breath freshening strips; Shoe polish; Polish for furniture and flooring; Nail care preparations; Perfumery; Perfumes; Musk [perfumery]; Sandcloth; Glass cloth; Hair lotions; After-shave lotions; Javelle water; Polishing stones; Polishing creams; Polishing paper; Furbishing preparations; Denture polishes; Polishing preparations; Shining preparations [polish]; Pomades for cosmetic purposes; Volcanic ash for cleaning; Canned pressurized air for cleaning and dusting purposes; Laundry glaze; Dry-cleaning preparations; Laundry preparations; Preparations to make shiny the leaves of plants; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Preparations for cleaning dentures; Adhesives for cosmetic purposes; Make-up powder; Pumice stone; Rust removing preparations; Cosmetic preparations for eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Safrol; Sachets for perfuming linen; Cloths impregnated with a detergent for cleaning; Leather bleaching preparations; Cosmetic preparations for skin care; Starch glaze for laundry purposes; Washing soda, for cleaning; Bleaching soda; Soda lye; Bath salts, not for medical purposes; Bleaching salts; Windscreen cleaning liquids; Dentifrices; Scouring solutions; Air fragrancing preparations; Drying agents for dishwashing machines; Laundry blueing; Dry shampoos; Shampoos; Shampoos for pets; Shoemakers' wax; Emery; Emery paper; Emery cloth; Lipsticks; Floor wax removers [scouring preparations]; False nails; Talcum powder, for toilet use; Turpentine, for degreasing; Terpenes [essential oils]; Diamantine [abrasive]; Greases for cosmetic purposes; Toiletries; Astringents for cosmetic purposes; Mascara; Preparations for unblocking drain pipes; Mouth washes, not for medical purposes; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Petroleum jelly for cosmetic purposes; Carbides of metal [abrasives]; Gaultheria oil; Hair spray; Hair waving preparations; Eau de Cologne; Lavender water; Toilet water; Hydrogen peroxide for cosmetic purposes; Scented water; Shoe wax; Depilatory wax; Floor wax; Waxes for leather; Mustache wax; Tailors' wax; Polishing wax; Laundry wax; Cobblers' wax; Bleaching preparations [decolorants] for cosmetic purposes; Laundry bleach; Stain removers; Massage gels other than for medical purposes; Dental bleaching gels; Cosmetic kits; Fabric softeners for laundry use; Lacquer-removing preparations.

Class 5: Aloe vera preparations for pharmaceutical purposes; Bath salts for medical purposes; Bath preparations, medicated; Therapeutic preparations for the bath; Oxygen baths; Deodorants for clothing and textiles; Medicinal oils; Oil of turpentine for pharmaceutical purposes; Mouthwashes for medical purposes; Remedies for perspirations; Vaginal washes; Air deodorising reparations; Air purifying preparations; Pharmaceutical preparations for skin care; Remedies for foot perspiration; Serums; Medicinal hair growth preparations; Sea water for medicinal bathing; Animal washes.

Contested goods in Class 3

The applicant’s depilatory preparations consist of cosmetic products intended for hair removal. The most common types of preparations include wax and creams.

The contested depilatories; depilatory wax and mustache wax are identical to the applicant’s goods, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the contested goods.

The contested cosmetics and toiletries include, as broader category the applicant’s depilatory preparations. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested shaving stones [astringents]; Shaving soap; Shaving preparations; Pumice stone; After-shave lotions are similar to a high degree to the applicant’s depilatory preparations, as they have the same purpose, namely to remove unwanted hair from the body, and the same producers, end users and distribution channels. Furthermore, they are in competition.

The contested soaps; hair lotions; Aloe vera preparations for cosmetic purposes; Antiperspirants [toiletries]; Balms other than for medical purposes; Colorants for toilet purposes; Cosmetic dyes; Lip glosses; Beard dyes; Eyebrow cosmetics; Tissues impregnated with cosmetic lotions; Make-up removing preparations; Deodorants for human beings; Hair dyes; Henna [cosmetic dye]; Decorative transfers for cosmetic purposes; Cosmetic preparations for baths; Adhesives for affixing false hair; Cosmetic preparations for slimming purposes; Make-up; Cosmetic creams; Skin whitening creams; Nail polish; Varnish-removing preparations; Lotions for cosmetic purposes; Make-up preparations; Beauty masks; Cleansing milk for toilet purposes; Almond milk for cosmetic purposes; Cakes of soap; Soaps; Deodorant soap; Disinfectant soap; Medicated soap; Almond soap; Antiperspirant soap; Soap for foot perspiration; Nail art stickers; Neutralizers for permanent waving; Color-removing preparations; Oils for cosmetic purposes; Oils for toilet purposes; Eyebrow pencils; Cosmetic pencils; Nail care preparations; Hair lotions; Pomades for cosmetic purposes; Sunscreen preparations; Sun-tanning preparations [cosmetics]; Douching preparations for personal sanitary or deodorant purposes [toiletries]; Adhesives for cosmetic purposes; Make-up powder; Cosmetic preparations for eyelashes; False eyelashes; Adhesives for affixing false eyelashes; Cosmetic preparations for skin care; Bath salts, not for medical purposes; Dry shampoos; Shampoos; Lipsticks; False nails; Talcum powder, for toilet use; Greases for cosmetic purposes; Astringents for cosmetic purposes; Mascara; Cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Petroleum jelly for cosmetic purposes; Hair spray; Hair waving preparations; Hydrogen peroxide for cosmetic purpose; Bleaching preparations [decolorants] for cosmetic purposes; Massage gels other than for medical purposes; Cosmetic kits; Lacquer-removing preparations are beauty and body care products. The goods on which the opposition is based, depilatory preparations, are also used for personal hygiene, and especially for removing unwanted hair from the body. Despite the specific purpose of the applicant’s goods, all these goods still have the same broad purposes, namely taking care of, and improving, one’s personal appearance, hygiene and attractiveness. They have the same distribution channels, they may be found in the same sections of department stores or in specialised shops by the same type of consumer and they are often manufactured by the same companies. Therefore, they are similar.

The contested Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Perfumery, essential oils, Dentifrices; Ammonia [volatile alkali] [detergent]; Alum stones [astringents]; Non-slipping liquids for floors; Non-slipping wax for floors; Antistatic preparations for household purposes; Badian essence; Cake flavourings [essential oils]; Flavorings for beverages [essential oils]; Aromatics [essential oils]; Bergamot oil; Laundry soaking preparations; Amber [perfume]; Cleaning preparations; Detergents other than for use in manufacturing operations and for medical purposes; Deodorants for for animals; Deodorants for pets; Scented wood; Essential oils of cedarwood; Extracts of flowers [perfumes]; Ethereal essences; Ethereal oils; Paint stripping preparations; Geraniol; Jasmine oil; Ionone [perfumery]; Polishing rouge; Joss sticks; Incense; Scale removing preparations for household purposes; Smoothing stones; Color-brightening chemicals for household purposes [laundry]; Leather preservatives [polishes]; Corundum [abrasive]; Cosmetics for animals; Cleaning chalk; Whiting; Shoe cream; Laundry starch; Smoothing preparations [starching]; Silicon carbide [abrasive]; Bases for flower perfumes; Tripoli stone for polishing; Abrasives; Abrasive paper; Mint essence [essential oil]; Soap for brightening textile; Quillaia bark for washing; Breath freshening sprays; Degreasers other than for use in manufacturing processes; Fumigation preparations [perfumes]; Oils for cleaning purposes; Lavender oil; Almond oil; Rose oil; Oil of turpentine for degreasing; Oils for perfumes and scents; Essential oils of citron; Essential oils of lemon; Grinding preparations; Sandpaper; Wallpaper cleaning preparations; Pastes for razor strops; Breath freshening strips; Shoe polish; Polish for furniture and flooring; Perfumery; Perfumes; Musk [perfumery]; Sandcloth; Glass cloth; Javelle water; Polishing stones; Polishing creams; Polishing paper; Furbishing preparations; Denture polishes; Polishing preparations; Shining preparations [polish]; Volcanic ash for cleaning; Canned pressurized air for cleaning and dusting purposes; Laundry glaze; Dry-cleaning preparations; Laundry preparations; Preparations to make shiny the leaves of plants; Preparations for cleaning dentures; Rust removing preparations; Safrol; Sachets for perfuming linen; Cloths impregnated with a detergent for cleaning; Leather bleaching preparations; Starch glaze for laundry purposes; Washing soda, for cleaning; Bleaching soda; Soda lye; Bleaching salts; Windscreen cleaning liquids; Dentifrices; Scouring solutions; Air fragrancing preparations; Drying agents for dishwashing machines; Laundry blueing; Shoemakers' wax; Emery; Emery paper; Emery cloth; Floor wax removers [scouring preparations]; Turpentine, for degreasing; Terpenes [essential oils]; Diamantine [abrasive]; Preparations for unblocking drain pipes; Mouth washes, not for medical purposes; Carbides of metal [abrasives]; Gaultheria oil; Eau de Cologne; Lavender water; Toilet water; Scented water; Shampoos for pets; Shoe wax; Floor wax; Waxes for leather; Tailors' wax; Polishing wax; Laundry wax; Cobblers' wax; Laundry bleach; Stain removers; Dental bleaching gels; Fabric softeners for laundry use are considered dissimilar to the applicant’s depilatory preparations. These goods are largely intended for different purposes, have a different nature and method of use. Moreover, they are normally manufactured by different producers and are located in different sections of retail outlets. Moreover, the goods are not in competition or complementary.

Contested goods in Class 5

The contested aloe vera preparations for pharmaceutical purposes; Bath salts for medical purposes; Bath preparations, medicated; Therapeutic preparations for the bath; Oxygen baths; Deodorants for clothing and textiles; Medicinal oils; Oil of turpentine for pharmaceutical purposes; Mouthwashes for medical purposes; Remedies for perspirations; Vaginal washes; Air deodorising reparations; Air purifying preparations; Pharmaceutical preparations for skin care; Remedies for foot perspiration; Serums; Medicinal hair growth preparations; Sea water for medicinal bathing; Animal washes have nothing in common with the applicant’s depilatory preparations. Some of the contested goods may have a similar method of use as the applicant’s depilatory preparations to the extent that they are applied on the human body. However, the goods under comparison have a different nature and purpose. In particular, the applicant’s goods are intended for removing hair from the body whereas the contested goods are intended for medical purposes. Moreover, they do not normally have the same commercial origin or distribution channels. The contested goods are normally sold in specialized outlets such as pharmacies whereas the applicant’s goods can easily be found in mass consumption outlets such as supermarkets and drugstores. Finally, the goods under comparison are neither used in combination nor are they in competition. Therefore, since none of the relevant Canon criteria is applicable, the goods at issue are found to be dissimilar.

2. 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 or similar are directed at the public at large. Considering that they are mass consumptions goods, the degree of attention of the public will be average.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is France.

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).

The earlier mark is a figurative mark consisting of a grey rounded form which contains, as an upfront element, the term ‘dermépil’ written in standard black typeface superimposed to the silhouette of a woman in lighter grey. In the bottom part of the logo, the terms ‘Perron Rigot’ appear in black handwritten form. However, they are hardly legible due to their size.

The contested mark is a figurative mark in light brown consisting of verbal and figurative elements. The figurative element represents a flower, probably a rose. Underneath this device, the term ‘DERMAEPIL’ appears written in standard block characters. The vowels ‘A’ and ‘E’ slightly overlap. Below ‘DERMAEPIL’, the terms ‘SUGAR EPIL SYSTEM’ appear in smaller standard typeface and lighter colour.

Considering that the silhouette of a woman in the earlier mark is allusive to the fact that the relevant goods are intended for women and that the element ‘Perron Rigot’ is hardly legible, the Cancellation Division considers that the term ‘dermépil’ is the most distinctive element of the mark. Admittedly, it cannot be excluded that this element will be perceived as the combination of the prefix ‘DERM’ in an allusion to ‘skin’ and ‘épil’ in an allusion to the terms ‘épilation’ or ‘épiler’ (to remove hair, to shave, to wax). However, taking into account all the elements of the mark and the fact that ‘dermépil’ as a whole does not have any meaning, it is considered the most distinctive element. Moreover, this element is considered more dominant (visually eye-catching) than other elements.

As regards the contested mark, even if the term ‘DERMAEPIL’ may have the same allusive connotations as pointed above for ‘dermépil’, it is more distinctive than the other elements. In particular, the terms ‘SUGAR EPIL SYSTEM’ are likely to be disregarded by the public in the overall context of the trade mark. With regards to the distinctiveness of the flower device, the Cancellation Division notes that representations of flowers are frequently used in connection with cosmetic products for decorative purposes. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Finally, considering the size and position of the flower device and the term ‘DERMAEPIL’, these two elements are considered co-dominant in the overall impression created by the sign.

Visually, the signs coincide in the practical totality of their distinctive and dominant element ‘dermépil’ and ‘DERMAEPIL’, which only differs in their middle letters ‘é’ and ‘AE’ and their different albeit slight, stylization. However, they differ in their colors (scale of greys for the earlier mark and brown for the contested mark) and the remaining less distinctive elements: the figurative elements (the silhouette of a woman in the earlier mark and the flower device in the contested mark) and the verbal elements (‘Perron Rigot’ in the earlier mark and ‘SUGAR EPIL SYSTEM’ in the contested mark).

Despite the similarities of their distinctive and dominant elements, the Cancellation Division considers that the signs are only similar to an average degree in view of the presence of other elements which show a number of differences in the composition of the signs.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛D-E-R-M-E-P-I-L’, present identically in the distinctive and dominant element of both signs. The pronunciation differs in the sound of the middle letter ‘A’ of the contested mark, which has no counterpart in the earlier sign and in the differing verbal elements ‘Perron Rigot’ (in the earlier mark) and ‘SUGAR EPIL SYSTEM’ (in the contested mark), in case they will be pronounced by the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, it cannot be excluded, as mentioned above, that the elements ‘dermépil’ and ‘DERMAEPIL’ will be perceived as the combination of the prefix ‘DERM’ in an allusion to ‘skin’ and ‘épil’ in an allusion to the terms ‘épilation’ or ‘épiler’ (to remove hair, to shave, to wax). The element ‘Perron Rigot’ in the earlier mark, if read, may be associated with two family names. The terms ‘SUGAR EPIL SYSTEM’ in the contested mark constitute a combination of English terms where ‘SUGAR’ (‘sucre’ in French) is unlikely to be understood by the relevant public. However, the terms ‘EPIL SYSTEM’ could be associated with the expression ‘système d’épilation’. In this sense, it would reinforce the allusion to ‘épilation’. To that extent, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the allusiveness of the elements ‘derm’ and ‘épil’ in the mark as stated above in section c) of this decision.

5. 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 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).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods have been found to be partially identical, partially similar to various degrees and partially dissimilar. These goods are mass consumption goods where the relevant public enjoys an average degree of attention. In addition, the most distinctive elements of the signs, which also enjoy a dominant position, are nearly identical (‘dermépil’ vs ‘DERMAEPIL’). The differences are mostly confined to secondary or decorative elements.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s French trade mark registration No 1 490 856.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

José Antonio GARRIDO OTAOLA

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.