CANCELLATION No 12 215 C (INVALIDITY)

Skincode AG, Seestrasse 59, 8703 Erlenbach, Switzerland (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)

a g a i n s t

Seda Valimaki, 38, rue Servan, Paris, France (EUTM proprietor).

On 19/05/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 14 364 517 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 14 364 517. The application is based on international trade mark registration designating Denmark and Sweden No 510 383. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the goods are identical or similar and that the marks are highly similar, since the earlier mark, ‘SKINCODE’, is fully incorporated in the contested sign, ‘SkinCODE genetic’s’. Therefore, it considers that there is a likelihood of confusion on the part of the public.

The EUTM proprietor, despite having been duly notified of the invalidity application by the Office and invited to comment on it, did not submit any observations in response.

LIKELIHOOD OF CONFUSION – ARTICLE 53(1)(a) EUTMR IN CONJUNCTION 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 goods on which the application is based are the following:

Class 3: Soaps, perfumery; essential oils, cosmetics, hair lotions.

The contested goods are the following:

Class 3: After-sun milk [cosmetics]; after-sun milks [cosmetics]; after-sun oils [cosmetics]; bath powder [cosmetics]; beauty care cosmetics; tanning oils [cosmetics]; tanning milks [cosmetics]; skin fresheners [cosmetics]; cosmetics for suntanning; suntanning oil [cosmetics]; suntan oils [cosmetics]; tanning gels [cosmetics]; tanning preparations [cosmetics]; nail primer [cosmetics]; nail paint [cosmetics]; cosmetics for animals; nail polish removers [cosmetics]; powder compact refills [cosmetics]; nail base coat [cosmetics]; cosmetics for personal use; sun blocking oils [cosmetics]; sun blocking lipsticks [cosmetics]; nail varnish remover [cosmetics]; cosmetics for eye-lashes; tissues impregnated with cosmetics; sun protecting creams [cosmetics]; cosmetics and cosmetic preparations; children’s play cosmetics; self-tanning preparations [cosmetics]; cosmetics for eye-brows; sun blocking preparations [cosmetics]; sun-tanning preparations [cosmetics]; colour cosmetics for the eyes; colour cosmetics for the skin; facial wipes impregnated with cosmetics; solid powder for compacts [cosmetics]; liners [cosmetics] for the eyes; cosmetics in the form of milks; cosmetics for use on the skin; paper hand towels impregnated with cosmetics; cosmetics in the form of powders; cosmetics in the form of lotions; cosmetics in the form of rouge; cosmetics in the form of oils; cosmetics in the form of gels; cosmetics in the form of creams; impregnated cleaning pads impregnated with cosmetics; cosmetics for the treatment of dry skin; cosmetics in the form of eye shadow; cosmetics for protecting the skin from sunburn; cosmetics all for sale in kit form; cosmetics for the use on the hair; temporary tattoo transfers for use as cosmetics; cosmetics for use in the treatment of wrinkled skin; glitter in spray form for use as a cosmetics; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; make-up primer; eye make-up; make up removing preparations; make-up removing gels; chalk for make-up; eyes make-up; powder (make-up -); make-up pads of cotton wool; eye make up remover; skin make-up; make-up remover; powder for make-up; eye make-up removers; foundation make-up; make up foundations; make-up preparations for the face and body; compacts containing make-up; make-up for compacts; make-up bases in the form of pastes; make-up removing creams; make-up removing lotions; make-up for the face; make-up removing milk; make-up foundations; make-up removing preparations; make-up; make-up preparations; tissues impregnated with make-up removing preparations; make-up powder; make-up for the face and body; make-up foundation; make-up pencils; make-up removing milks.

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 contested after-sun milk [cosmetics]; after-sun milks [cosmetics]; after-sun oils [cosmetics]; bath powder [cosmetics]; beauty care cosmetics; tanning oils [cosmetics]; tanning milks [cosmetics]; skin fresheners [cosmetics]; cosmetics for suntanning; suntanning oil [cosmetics]; suntan oils [cosmetics]; tanning gels [cosmetics]; tanning preparations [cosmetics]; nail primer [cosmetics]; nail paint [cosmetics]; cosmetics for animals; nail polish removers [cosmetics]; powder compact refills [cosmetics]; nail base coat [cosmetics]; cosmetics for personal use; sun blocking oils [cosmetics]; sun blocking lipsticks [cosmetics]; nail varnish remover [cosmetics]; cosmetics for eye-lashes; tissues impregnated with cosmetics; sun protecting creams [cosmetics]; cosmetics and cosmetic preparations; children’s play cosmetics; self-tanning preparations [cosmetics]; cosmetics for eye-brows; sun blocking preparations [cosmetics]; sun-tanning preparations [cosmetics]; colour cosmetics for the eyes; colour cosmetics for the skin; facial wipes impregnated with cosmetics; solid powder for compacts [cosmetics]; liners [cosmetics] for the eyes; cosmetics in the form of milks; cosmetics for use on the skin; paper hand towels impregnated with cosmetics; cosmetics in the form of powders; cosmetics in the form of lotions; cosmetics in the form of rouge; cosmetics in the form of oils; cosmetics in the form of gels; cosmetics in the form of creams; impregnated cleaning pads impregnated with cosmetics; cosmetics for the treatment of dry skin; cosmetics in the form of eye shadow; cosmetics for protecting the skin from sunburn; cosmetics all for sale in kit form; cosmetics for the use on the hair; temporary tattoo transfers for use as cosmetics; cosmetics for use in the treatment of wrinkled skin; glitter in spray form for use as a cosmetics; teeth whitening strips impregnated with teeth whitening preparations [cosmetics]; make-up primer; eye make-up; make up removing preparations; make-up removing gels; chalk for make-up; eyes make-up; powder (make-up -); eye make up remover; skin make-up; make-up remover; powder for make-up; eye make-up removers; foundation make-up; make up foundations; make-up preparations for the face and body; compacts containing make-up; make-up for compacts; make-up bases in the form of pastes; make-up removing creams; make-up removing lotions; make-up for the face; make-up removing milk; make-up foundations; make-up removing preparations; make-up; make-up preparations; tissues impregnated with make-up removing preparations; make-up powder; make-up for the face and body; make-up foundation; make-up pencils; make-up removing milks are included in the broad category of, or overlap with, the applicant’s cosmetics. Therefore, they are identical.

The contested make-up pads of cotton wool and the applicant’s cosmetics may have the same producers, distribution channels and relevant consumers. Therefore, they are similar.

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. The degree of attention is deemed to be average.

3. The signs

SKINCODE	SkinCODE genetic’s
Earlier trade mark	Contested trade mark

The relevant territories are Denmark and Sweden.

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 the word mark ‘SKINCODE’ and the contested sign is the word mark ‘SkinCODE genetic’s’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

The word ‘SKINCODE’, constituting the entire earlier mark and present identically in the contested sign, has no meaning for the relevant public and does not exist in common parlance in Danish or Swedish. The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). It is reasonable to assume that the Danish and Swedish public will perceive the element ‘SKINCODE’ as the sum of its parts, thus splitting it into the English words ‘SKIN’ and ‘CODE’, because the general public in these countries has at least a basic understanding of English, and, moreover, these words are similar to their equivalents in the respective languages (i.e. ‘skin’ is similar to ‘skind’ in Danish and ‘skinn’ in Swedish, and ‘code’ is similar to ‘kode’ in Danish and ‘kod’ in Swedish).

Consequently, the word ‘SKIN’ may be understood by the relevant public as ‘the thin layer of tissue forming the natural outer covering of the body of a person or animal’. The word ‘CODE’ may be perceived as meaning ‘a system of words, letters, figures, or symbols used to represent others, especially for the purposes of secrecy’. The compound ‘SKINCODE’ as a whole does not form a logical and conceptual unit and each of its elements will be understood separately with the meanings mentioned above. Bearing in mind that all the relevant goods are cosmetic products, it is considered that the word ‘SKIN’ is weak for all the goods at issue, as it refers to their purpose and field of application (intended for use on the skin). Therefore, the impact of this element is limited when assessing the similarity between the marks.

The element ‘genetic’s’, included in the contested sign, will be understood as ‘relating to genes or heredity’, ‘relating to genetics’, as it is very close to the equivalents of the word ‘genetic’ in Danish (‘genetiske’) and Swedish (‘genetisk’). Bearing in mind that the relevant goods are cosmetic products, it is considered that this element is also weak for the goods at issue, as it may be perceived as associating the goods with some kind of scientific credentials, without necessarily meaning that those credentials or qualifications are objectively verifiable. Therefore, the impact of this element is also limited when assessing the similarity between the marks.

Furthermore, although the word combination ‘SkinCODE genetic’s’, constituting the contested mark, does not exist as a grammatically correct expression, some of the relevant consumers may perceive the element ‘SkinCODE’ as being conceptually related to the element ‘genetic’s’, and may, therefore, perceive the sign, as a whole, as having an additional concept, namely as being related to genetic coding of the skin or the skin cells. The genetic code (‘genetiske kode’ in Danish and ‘genetisk kod’ in Swedish) is the set of rules by which information encoded within genetic material (DNA or mRNA sequences) is translated into proteins by living cells. To the extent that the mark ‘SkinCODE genetic’s’ may be perceived by part of the public as relating to genetic coding, the relevant public may perceive the expression as alluding to the fact that the goods at issue have been subject to genetic research related to the skin.

Visually, the signs coincide in the word ‘SKINCODE’, which constitutes the entire earlier mark and plays an independent and distinctive role, as a whole, in the contested sign. They differ in the additional verbal element ‘genetic’s’ of the contested sign.

As discussed above, the impact of the element ‘SKIN’, present in both signs, is limited due to its weak distinctive character. Nevertheless, the visual commonalities between the marks are not limited to this element, but relate to the entire word combination ‘SKINCODE’, which is contained identically in both marks and is distinctive as a whole.

Therefore, the Cancellation Division considers it decisive that the earlier mark, ‘SKINCODE’, is reproduced in its entirety at the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.

The additional verbal element of the contested sign, ‘genetic’s’, is also not particularly distinctive and may, therefore, receive less attention from the relevant public due to its secondary position and limited distinctiveness.

Therefore, the marks are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘SKINCODE’, constituting the earlier mark and present identically at the beginning of the contested sign. This word combination, although containing a weak element, ‘SKIN’, plays an independent and distinctive role, as a whole, in both marks. The pronunciation differs in the sound of the additional verbal element, ‘genetic’s’, of the contested sign, which is placed at the end of the mark and is of weaker than average distinctiveness.

Therefore, the signs are aurally similar to a high degree.

Conceptually, as seen above, the compound ‘SKINCODE’, included in both marks, will be understood with the meanings of the words constituting it, namely ‘SKIN’ and ‘CODE’, the definitions of which are given above. Although, as seen above, the impact of the element ‘SKIN’ of the marks is limited due to its weak distinctive character, the word combination ‘SKINCODE’, contained in both marks, is distinctive as a whole.

Due to the presence of the element ‘genetic’s’ in the contested sign, the mark, as a whole, may be seen as having an additional concept related to genetic coding of the skin cells. Consequently, the presence of this element in addition to the word ‘SKINCODE’ in the mark introduces a scientific touch to the concept conveyed by the mark. The element ‘genetic’s’ may be understood as indicating that the goods have some kind of scientific credentials related to genetics and may be perceived as a weak element in relation to the relevant goods. Therefore, it will play a less important role in the overall impressions conveyed by the marks.

The presence of an additional concept in the contested mark does not undermine the finding that the marks are conceptually similar to an average degree on account of the element that the signs have in common, ‘SKINCODE’, which is identically contained in both marks and introduces the concepts of ‘SKIN’ and ‘CODE’ to them.

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.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the 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 presence of a weak element in the mark as stated above in section c).

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical or similar. The signs are visually and aurally similar to a high degree and conceptually similar to an average degree on account of the verbal element ‘SKINCODE’, which is the only element of the earlier mark and has an independent and distinctive role in the contested sign. The presence of an additional concept in the contested sign as a whole does not undermine this finding. The additional verbal element, ‘genetic’s’, in the contested sign is of limited distinctiveness and is not sufficient to differentiate the marks effectively.

All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.

Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, the Cancellation Division considers that there is a likelihood of confusion, including a likelihood of association, on the part of the public in relation to identical and similar goods.

Therefore, the application is well founded on the basis of the applicant’s international trade mark registration designating Denmark and Sweden No 510 383. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) 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

Martina GALLE

Alexandra APOSTOLAKIS

Frédérique SULPICE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.