CANCELLATION No 10884 C (INVALIDITY)

LG HOUSEHOLD & HEALTH CARE Ltd., 58, Saemunan-ro, Jongno-gu, Republic of Korea (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Amorepacific Corporation, 181, 2-ga, Hangang-ro, Yongsan-gu, Republic of Korea, represented by Novagraaf France, Bâtiment O2-2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur-Seine, France (professional representative).

On 11/11/2015, the Cancellation Division takes the following

DECISION

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

2. Community trade mark No 12 769 411 is declared invalid for some of the contested goods namely:

Class 3: Cosmetics; Cosmetic preparations for skin care; Make-up; Balms other than for medical purposes; Cotton wool for cosmetic purposes; Lipsticks; Eye shadows; Eyeliners.

3. The Community trade mark remains registered for all the remaining goods, namely:

Class 3: Nail art stickers; Badian essence; Shaving stones; Hair gel; Perfumes; Lavender oils; False eyelashes; Cosmetic preparations for baths; Cosmetic soaps; Shampoo; Dentifrices; Nail varnish for cosmetic purposes.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against Community trade mark No 12 769 411 CC CUSHION (word mark) (the CTM). The request is directed against all the goods covered by the CTM, namely:

Class 3: Nail art stickers; Badian essence; Cosmetics; Cosmetic preparations for skin care; Make-up; Shaving stones; Cosmetic preparations for baths; Balms other than for medical purposes; Hair gel; Perfumes; Lavender oils; False eyelashes; Cotton wool for cosmetic purposes; Shampoo; Dentifrices; Nail varnish for cosmetic purposes; Lipsticks; Eye shadows; Eyeliners; Cosmetic soaps.

The applicant invoked Article 52(1)(a) CTMR in conjunction with Article  7(1)(b) and (c) CTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark at issue is descriptive and devoid of distinctive character. The term cushion is defined as a cloth bag filled with soft material or feathers, for example to make a seat more comfortable. In the field of cosmetics, a cushion is a sponge-like device used to apply make-up. Several on-line articles refer to the topic of “cushion makeup”. The abbreviation “CC” is descriptive for cosmetic products, especially the term “CC cream” is a generic type of cosmetic product.

On the website of the well-established cosmetic trade “SEPHORA” “BB cream & CC cream” are listed as a category of products. Furthermore descriptive use can be inferred from the internet e.g. from the article “What is a CC Cushion (and Why I have one in my makeup bag) and the further article “BB/CC Cushion v. BB/CC Cream: What is the difference?”.

Furthermore the applicant indicates that the trade mark application No 13 020 094 “CC CUSHION” had been refused for cosmetics; cosmetic creams, beauty care preparations in class 3 on 16/07/2014

In support of its observations, the applicant filed inter alia the following evidence:

• Screenshot from Search engine Google regarding “cushion make up” dated 12/055/2015

• Website www. Kikocosmetics.de titled “Foundation zur Perfektionierung des Tons – CC Cream Cusion System” dated 12/05/2015

• Website www.douglas.de showing a product from LANCÔME called “Teint Miracle Cushion” dated 12/05/2015

• Article “What is a CC Cushion (and Why I have one in my makeup bag) and the further article “BB/CC Cushion v. BB/CC Cream: What is the difference?” from the website www.allure.com dated 12/05/2015

• Website http://intothegloss/com titled “Next Big Thing: Cushion Compacts” dated 12/05/2015

• Website of the well-established cosmetic trade “SEPHORA” “BB cream & CC cream

• Website GCI Magazine.com “Air Cushion Makeup: The Next Big Beauty Trend?” indication that the Article had been posted on 07/04/2014

The CTM proprietor did not submit any reply.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) IN CONJUNCTION WITH ARTICLE 7 CTMR

According to Article 52(1)(a) and (3) CTMR, a Community trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 CTMR. Where the grounds for invalidity apply for only some of the goods or services for which the Community trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) CTMR that Article 7(1) CTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Community.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 CTMR, which were the subject of the ex officio examination prior to registration of the CTM the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the Community trade mark application was filed facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (see order of 23/04/2010, C332/09 P, ‘Frosch Touristik’, paragraphs 41 and 43).

Descriptiveness – Article 7(1)(c) CTMR

As a preliminary remark, it should be recalled that, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (OHIM v Erpo Möbelwerk, paragraph 45, and OHIM v BORCO Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725,paragraph 62).’ The foregoing applies mutatis mutandum for marks, that have been already registered.

The Court of Justice has consistently held that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (e.g. judgment in the Case T-79/00, ‘LITE’).

For the purpose of Article 7(1)(c) CTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and/or services in respect of which registration is sought (e.g. judgment of 20/03/2002, T-356/00, ‘Carcard’). For assessing descriptiveness under Article 7(1)(c) CTMR, it is sufficient to establish that the mark consists exclusively of a sign or an indication that may serve, in trade, to designate the nature, intended purpose and/or other characteristics of the goods (e.g. judgment of 30/11/2004, T‑173/03, ‘Nurseryroom’).

For the absolute ground for refusal laid down by Article 7(1)(c) CTMR to apply, it is sufficient that there exists, from the perspective of the intended public, a direct and specific association between the sign and the categories of goods and services in respect of which registration is sought (e.g. judgment of 27/02/2002, T‑106/00, ‘Streamserve’; confirmed by order of the Court of Justice of 05/02/2004 in Case C‑150/02).

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (e.g. judgment ‘Streamserve’). Further, in accordance with Article 7(1)(c) CTMR, in order to reject a trade mark application, it is not necessary whether or not the word is used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

For a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (judgments of 27.02.2002, T-106/00, Streamserve, EU:T:2002:43, § 40, upheld on appeal by 05.02.2004, C-150/02 P, Streamserve, EU:C:2004:75; and of 22.06.2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (judgments of 30.11.2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26, and of 27.02.2002, T-34/00, Eurocool, EU:T:2002:41, § 38). Moreover, account must be taken not only of the explicit and direct meaning of the word, but also of the connotation it can evoke.

The relevant public

In the present case, the goods target consumers in general as well as professionals from the beauty sector. The public’s level of attentiveness may be heightened insofar as the professional consumers are concerned.

In terms of language, since the mark applied for is composed of English terms, its distinctiveness must be assessed with respect to, in particular, the English-speaking public in the European Union.

The sign’s descriptive character

In fact as the cancellation applicant demonstrated cushions are used in the relevant field of make-up in order to apply beauty products. Several articles of the evidence corroborate this, e.g. “Air Cushion Makeup: The Next Big Beauty Trend?” It is also undisputed that the consumer in the field of beauty, at least as far as professionals are concerned are aware of the term “CC Cream”, meaning “colour control cream/colour correcting cream). The products are sold e.g. under the trade marks “Clinique”, “Olay”, “Chanel” or “L’Oréal” as can be inferred from the website of Vogue.co.uk on the file.

The expression is used in order to distinguish creams from other types like “BB” or “DD” creams. See e.g. enclosure 8 on file:

Consumers who use skin creams and the like have thus encountered the term “CC” by various producers which is purely informative. The documents on file largely document this. Also for cushions the term is already in use (the article refers to 15/07/2014, thus predates the filing date of the contested mark):

The mark applied for can therefore be understood in the sense of a beauty product in form of a cushion or which is applied together with a cushion or sponge.

The Cancellation Division is of the view that the relevant consumer, who encounters the term “CC CUSHION” together with the relevant goods, is unlikely to infer from such a term that the goods in question come from a specific undertaking. Its intended trade mark significance will not be received. It is more likely that the consumer will give the expression ‘CC CUSHION a meaning that is consistent with the context in which it will be used.

As regards the following group of goods absolute grounds of refusal apply:

Cosmetics; Cosmetic preparations for skin care; Make-up; Balms other than for medical purposes; Cotton wool for cosmetic purposes; Lipsticks; Eye shadows; Eyeliners.

All those products are either CC Cushions themselves as in the case of cosmetics; cosmetic preparations for skin care; make-up or can at least be applied in a similar way or closely used together. They may be applied with the help of a cushion or they represent the material of the cushions (cotton wool for cosmetic purposes)

As regards the further group of goods, namely Nail art stickers; Badian essence; Shaving stones; Hair gel; Perfumes; Lavender oils; False eyelashes; Shampoo; Dentifrices; Nail varnish for cosmetic purposes; Cosmetic preparations for baths; Cosmetic soaps those goods show considerable differences as they are either not typically applied on the skin in the area of the face or serve special cleaning purposes e.g. to shave (shaving stones).

Non-distinctiveness – Article 7(1)(b) CTMR

Article 7(1)(b) CTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (e.g. judgment of 16/09/2004, C-329/02 P, ‘SAT.2’).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (e.g. judgment of 05/12/2002, T-130/01, ‘Real People, Real Solutions’; judgment of 09/07/2008, T-58/07, ‘Substance for Success’; and consistent case-law on absolute grounds for refusal).

Although it is clear from Article 7(1) CTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1) CTMR. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b). A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (see, to that effect, judgment of 12/02/2004, C-265/00, ‘Biomild’).

The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) CTMR is not conditioned by a finding that the term concerned is commonly used (see, to that effect, judgment of 12/02/2004, C-265/00, ‘Biomild’).

Article 7(2) CTMR states that paragraph 7(1)(b) and (c) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the Community.

In the present case also all goods, which have been found descriptive have to be considered also non-distinctive.

The Cancellation Division has not examined any further grounds as the application had invoked Article 7(1)(b) and (c) CTMR.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is partially successful and the Community trade mark should be declared invalid for part of the contested goods, namely:

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Dorothee SCHLIEPHAKE Wolfgang SCHRAMEK Peter SCHYDLOWSKI

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.