CANCELLATION No 19 501 C (INVALIDITY)

Laboratoires La Prairie SA, Industriestrasse 8, 8604 Volketswil, Switzerland (applicant), represented by Bomhard IP S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Beauty Brands Concept Spółka Z Ograniczoną Odpowiedzialnością, ul. Żytnia 19, 05-506 Lesznowola, Poland (EUTM proprietor), represented by Kancelaria Patentowa Aleksandra Marcińska, ul. J. Słowackiego 5/149, 01-592 Warsaw, Poland (professional representative).

On 23/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 17 154 212 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 European Union trade mark No 17 154 212 ‘ROYAL CAVIAR THERAPY’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely: Cosmetics; skincare cosmetics; body cleaning and beauty care preparations; non-medicated beauty preparations; skin care preparations; exfoliants for the care of the skin; cosmetic moisturisers; cosmetics for use in the treatment of wrinkled skin; creams for firming the skin; skin whitening creams; skin conditioners; slimming aids [cosmetic], other than for medical use; lotions for cellulite reduction; creams for cellulite reduction; soaps; soaps for body care; non-medicated toilet soaps; soap free washing emulsions for the body; washing creams; washing liquids; wipes impregnated with a skin cleanser; skin cleansers [cosmetic]; exfoliants; exfoliant creams; body scrub; artificial tanning preparations; after sun moisturisers; make-up preparations; make-up removing preparations; nail polish; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; cuticle oil; nail care preparations; nail varnish removers; cosmetics for the use on the hair; hair preparations and treatments; hair moisturisers; hair preparations and treatments; shampoo; hair nourishers; styling lotions; styling lotions; tooth care preparations; after-sun lotions; sun-tanning gels; after-sun oils [cosmetics]; sun-tanning oils; sun-tanning gels; creams for tanning the skin; douching preparations for personal sanitary or deodorant purposes [toiletries] in Class 3.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The arguments of the parties refer to Article 7(1)(b) and (c) EUTMR. However, as the application will be successful in connection with Article 7(1)(c) EUTMR, the only arguments of the parties listed below will be those in relation to the descriptiveness of the sign.

The applicant argues that the contested mark covers a wide variety of personal care goods in class 3. These goods are mass-produced and intended for general consumption, and the relevant public’s level of attention is average due to their nature. Every one of the terms that compose the sign is descriptive of characteristics of the goods, with the combination of them being equally descriptive. The applicant mentions several signs containing the word ‘CAVIAR’ that have been refused by the Office and files the following documents to support its allegations:

• Enclosure 1: R 2267/2012-4 - decision of the Board of Appeal.

• Enclosure 2: R 0144/2014-4 - decision of the Board of Appeal.

• Enclosure 3: Excerpt from Collins Dictionary of the adjective “ROYAL”.

• Enclosure 4: Extracts from various websites showing caviar as an active ingredient in cosmetic products.

• Enclosure 5: Printouts from websites showing hair care products containing caviar.

• Enclosure 6: Excerpt from Collins Dictionary of the term “THERAPY”.

• Enclosure 7: Extracts from various websites showing that caviar is perceived as a highly expensive and limited good.

The EUTM proprietor argues that there are 30 trade marks registered at the EUIPO containing the word ‘CAVIAR’, eight of which belong to the applicant. Likewise, there are many signs which contain the term ‘THERAPY’, also registered for goods in Class 3.

According to the proprietor, the public concerned is not only that made up of average consumers, but also of specialists who have an increased level of attention given that the choice of products may influence their own professional success. The proprietor also argues that none of the documents filed by the applicant refers to the contested mark, and the applicant has not managed to prove that the mark falls foul of Article 7(1) (c) EUTMR given that the combination of the words is not descriptive, as it is more than the mere sum of its parts. To support its arguments the proprietor files lists with marks containing ‘CAVIAR’ and ‘THERAPY’ and some Internet links in relation to ‘ROYAL CAVIAR THERAPY’, to show that only its company uses the sign on the market.

The applicant puts forward that its marks have been registered due to their inherent distinctiveness, given that ‘(T)he Office Office has a long-standing practice of not registering marks that contain the term CAVIAR as a standalone or in combination with other non-distinctive elements for goods in class 3. This is due to the need to keep this descriptive term free for all competitors in the market. As for the marks that contain ‘THERAPY’ and have been registered, the applicant mentions that these marks feature additional elements, be they denominative or graphic, the combination of which rendered the signs registrable, contrary to the contested mark. The applicant mentions also that ‘actual use at the time of filing the trade mark application is not required for a finding of descriptiveness as Article 7(1)(c) EUTMR only requires that the sign at issue "may serve, in trade, to designate" characteristics of the product. It is therefore settled case law that it is not necessary that a sign has been actually used in a descriptive way at the time of the filing’. The applicant supports its findings on the decision of the General Court of 19 November 2009, Case T-234/06 [CANNABIS] and once again argues that the term ROYAL CAVIAR THERAPY will not be seen by the relevant consumer as an indication of origin, but rather as a descriptive indication for high quality caviar extracts containing personal care therapy products.

In its final reply the EUTM proprietor argues that trade marks are not required to be original or novel or to have an individual character to be registered; they may be simple and trivial; but the contested mark is neither. It is a unitary and self-contained mark which is neither too simple nor too complex or vague and as such impossible to be remembered by the public. The mark is not used as a standard expression in any language and is consequently neither descriptive nor non-distinctive for the goods at issue. ‘ROYAL CAVIAR THERAPY’ requires a prospective customer to engage in a certain mental process and activate associations to infer the message conveyed. Furthermore, the contested sign had not been used by other parties in the bona fide and established practices of the trade before the date of the application of the registration; thus, the mark is not customary in trade. Also, according to the proprietor, a) the applicant has failed to analyse the sign in connection with the relevant public and, therefore, has not realized that part of the designated public covers professionals with an enhanced degree of attention, and b) EUIPO has registered the mark ‘CAVIAR THERAPY DELUXE’.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, if it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, it will be declared invalid only for those goods or services.

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

Considerations common to all the grounds invoked in conjunction with Article 59(1)(a) EUTMR, namely Article 7(1)(b) and (c) EUTMR

The EUTM was applied for on 29/08/2017 and registered on 15/01/2018. It consists solely of the expression ‘ROYAL CAVIAR THERAPY’, and was registered for goods in Class 3: Cosmetics; skincare cosmetics; body cleaning and beauty care preparations; non-medicated beauty preparations; skin care preparations; exfoliants for the care of the skin; cosmetic moisturisers; cosmetics for use in the treatment of wrinkled skin; creams for firming the skin; skin whitening creams; skin conditioners; slimming aids [cosmetic], other than for medical use; lotions for cellulite reduction; creams for cellulite reduction; soaps; soaps for body care; non-medicated toilet soaps; soap free washing emulsions for the body; washing creams; washing liquids; wipes impregnated with a skin cleanser; skin cleansers [cosmetic]; exfoliants; exfoliant creams; body scrub; artificial tanning preparations; after sun moisturisers; make-up preparations; make-up removing preparations; nail polish; nail varnish for cosmetic purposes; nail hardeners [cosmetics]; cuticle oil; nail care preparations; nail varnish removers; cosmetics for the use on the hair; hair preparations and treatments; hair moisturisers; hair preparations and treatments; shampoo; hair nourishers; styling lotions; styling lotions; tooth care preparations; after-sun lotions; sun-tanning gels; after-sun oils [cosmetics]; sun-tanning oils; sun-tanning gels; creams for tanning the skin; douching preparations for personal sanitary or deodorant purposes [toiletries].

Relevant public

Given that the mark is composed of common terms from the English language, the relevant public will consist of English-speaking consumers, and particularly those in Ireland, Malta and the United Kingdom.

The EUTM proprietor argues that the public concerned is not only made up of average consumers with an average degree of attention, but also professionals with an enhanced degree of attention. This assertion is correct. For the purposes of this evaluation what matters is the perception that the public has of the sign. Therefore, the comments made below apply equally to both kinds of public irrespective of the attention displayed, for the reasons that will be explained further on in this decision.

Relevant point in time

The Cancellation Division notes that the relevant point in time in respect of which the assessment on the claimed descriptive character of the contested sign must be made is the filing date. In other words, it must be established whether the mark fell foul of any of the provisions of Article 7(1)(c) EUTMR at the time of its filing date.

Descriptiveness – Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The term ‘CAVIAR’ means ‘(T)he pickled roe of sturgeon or other large fish, eaten as a delicacy’ (Oxford Dictionary online).The applicant argues that this word ‘forms part of some languages spoken in the European Union and exists in very similar form in many others. It adds that ‘the English language word “CAVIAR” is of widespread use in the beauty care sector’ (and therefore) ‘it is clear that the word “CAVIAR” in the mark applied for will be understood by a great many European consumers (03/06/2015, T-448/13 [essence], § 23; 25/11/2008, T-325/07 [SURFCARD], § 46 et seq.; 11/12/2008, T-90/06, [FOCUS/Tomorrow Focus], § 31)’. Be it as it may, what matters is that, at least for the English-speaking public, the term ‘CAVIAR’ will be perceived as an ingredient for cosmetic and hair care products, and also designates, among other characteristics, the purpose of the goods, as confirmed by the decisions from the Board of Appeal of 29/01/2014-R 2267/2012-4 ‘CAVIAR’ and of 24/11/2014- R 144/2014-4 ‘CAVIAR ANTI-AGING’. Furthermore, in its enclosures 4 and 5 the applicant has filed documents that prove that caviar is an active ingredient in cosmetic products and is also used in treatments for hair care products.

According to the applicant, the term ‘ROYAL’ means something that is ‘above the usual or normal in standing, size, quality, etc.’ (Collins Dictionary) and, consequently, the adjective indicates that the goods at issue are personal goods of superior quality. The applicant mentions the decision of the Boards of Appeal 06/06/2013-R-523/2013-1 ‘ROYAL CAVIAR’ that, although related to goods in Class 29 can, according to the party, be also applied to the goods in Class 3.

The applicant states that the term ‘THERAPY’, that means ‘a particular treatment of someone with a particular illness’ (Collins Dictionary), is also descriptive of the goods in Class 3, as it indicates that these goods are intended to be used to treat the human body.

The Cancellation Division concurs with the definitions for the words given by the applicant, and also with its point of view that the whole of the expression is nothing more than the sum of the terms as, in connection with the relevant goods, it is meaningful in respect of their composition and their purpose, namely cosmetics, hair products, etc., made of caviar of very good quality, that are used to treat the body or the hair.

The EUTM proprietor contends that the applicant has artificially dissected the sign to make it look as a mere sum of parts. In its opinion the mark is not used as a standard expression in any language and is consequently neither descriptive nor lacks distinctiveness for the goods at issue. ‘”ROYAL CAVIAR THERAPY” requires a prospective customer to engage in a certain mental process and activate associations to infer the message conveyed’. The Cancellation Division cannot concur with this view as the sign as a whole will be perceived immediately by consumers, without further reflection, with the meaning afore-mentioned; merely bringing the descriptive terms together without introducing unusual variations cannot result in anything other than a descriptive sign. Consequently, it is not merely suggestive or allusive as the EUTM proprietor expresses, but a direct reference to characteristics of the goods.

The EUTM proprietor argues that the applicant did not submit evidence that the contested mark was descriptive at the time of its filing. In this regard it must be noted that, to refuse to register a trade mark under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications of which the mark is comprised need actually to be in use at the time of the application for registration in a way that is descriptive of the goods or services, or of characteristics of those goods or services. It is sufficient, as the wording of Article 7(1)(c) EUTMR indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). For the purposes of clarification, however, it must be noted that the applicant submitted evidence of the use of ‘CAVIAR’ in the composition of cosmetics and goods for the treatment of hair,

The EUTM proprietor lists some European Union Trade Mark registrations which include the words above. The Cancellation Division, however, thinks that, contrary to the contested mark, the marks mentioned by the party do not consist exclusively of signs or indications which may serve in trade to designate characteristics of the goods. In any event, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

Also, the proprietor puts forward that its company is the only one in the market using the sign; in this regard attention must be paid to the fact that the public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms that other traders might wish to use as well. It is not necessary either for the applicant or for the Cancellation Division to show that there is already a descriptive use by several undertakings and, therefore, the number of competitors that could be affected is totally irrelevant.

To sum up: as the link between the sign and the goods in Class 3 is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR, the Cancellation Division must conclude that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods.

Lack of Distinctive Character – Article 7(1)(b) EUTMR

Since Article 7(1) EUTMR makes it clear that it is sufficient that one of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as an European Union trade mark (28/06/2011, T‑487/09, ReValue, EU:T:2011:317, § 80; 17/04/2013, T‑383/10, Continental, EU:T:2013:193, § 71-72; 12/06/2013, T‑598/11, Lean Performance Index, EU:T:2013:311, § 52), it is no longer necessary to consider the applicant’s arguments alleging breach of Article 7(1)(b) EUTMR.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein

The Cancellation Division

Keeva DOHERTY

María Belén IBARRA DE DIEGO

Richard BIANCHI

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.