CANCELLATION No 35 743 C (INVALIDITY)

Groupe Léa Nature, Société par actions simplifiée, 23 Avenue Paul Langevin, 17180 Périgny, France (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative)

a g a i n s t

Debonair Trading Internacional LDA, Avenida do Infante 50, 9000 Funchal, Madeira, Portugal (EUTM proprietor), represented by Beck Greener LLP, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative).

On 20/04/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 17 473 513 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 3: Hair care preparations; perfumery; perfumed body spray; eau de toilette; eau de parfum; cosmetics; personal care deodorants; body lotion; shower gel; dry shampoo; hair care shampoo; hair care conditioner; perfumed body mists; body butters.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues in its both observations that the contested trademark lacks distinctive character ab initio. The relevant public is the English‐speaking public, i.e. public from the UK and from the European Union that understands English. Those goods are intended for all consumers, with an average level of attention. The registered trademark is composed of the English word “SO” followed by three dots and a question mark. The punctuation marks are not considered to be distinctive. At the most, the punctuation characters of the registered trademark (three dots and a question mark) reinforce the laudatory function of the word SO that precedes them. The word “SO” is an English word that is mainly used as an intensifier, i.e. it emphasizes the word or the phrase that follows it.

As shown in Annex A, the adverb “SO” is defined by the Oxford online Dictionary as meaning “to such a great extent”, “extremely” or “very much”. Those definitions do not depend on whether “SO” is followed by words or not. Indeed, the consumers will see the word “SO” as emphasizing the quality/qualities of the goods covered even if it is used alone (or, as it is in the present case, even if it is used followed by dotes and a question mark). Thus, the word “SO” will be understood as an intensifier even if it is not followed by words. The element SO is commonly used in the marketing of the goods or services concerned. The cancellation applicant further attempts to draw an analogy between registration of the word “so” with registrations of words such as “smarter”, “top”, “extra” or “plus”.

The laudatory term “SO” is referring to the quality of the goods covered. Thus, the disputed trademark shall be declared invalid since it does not fulfil Article 7(1)(c) EUTMR. The laudatory term “SO” is widely used in the field of cosmetics products. It has therefore become customary in the bona fide and established practices of the trade. Thus, the disputed trademark shall be declared invalid since it does not fulfil Article 7(1)(d) EUTMR. The EUTM proprietor has not proven that the mark has acquired distinctive character through use.

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

Observations of 28/05/2019:

• Annex A: Oxford online Dictionary definition of “so”

• Annexes B to G: Prior decisions rejecting trade marks including “so”:

  • EUTMA 15 908 197 ‘SO DIVINE’.

  • EUTMA 13 718 879 ‘SO MUCH MORE’.

  • EUTMA 13 734 661 ‘SO LONG DAMAGE’.

  • EUTMA 12 302 949 ‘SoBronze’.

  • EUTMA 11 851 623 ‘SO U’.

  • EUTMA 5 417 258 ‘SO ORGANIC’.

• Annex H: Printouts from cosmetic websites in order to demonstrate the use of the word ‘SO’ for cosmetic products in the EU market.

Observations of 12/12/2019:

• Annex I: decision of 10/12/2018, R 1589/2018‐4, ‘Smarter’.

• Annex J: judgement of 13/07/2005 T‐242/02, ‘TOP’.

• Annex K: decision of 19/01/2012, R 891/2011‐1, ‘PLUS’.

• Annex L: judgement 28/02/2019, C 505/17 P, ‘SO'BiO etic’.

• Annex M: Additional printouts from cosmetic websites in order to demonstrate the use of the word ‘SO’ for cosmetic products in the EU market.

The EUTM proprietor argues in both its observations that the word “SO” does not have a function of intensifier within the registered trademark ‘SO…?’ because it is not followed by any words. It is therefore immediately apparent that the word ‘SO’ can have no descriptive or laudatory function in respect of the Class 3 goods at issue.

The EUTM proprietor adds that prior decisions cited by the applicant rejecting applications to register marks of the form ‘SO XXX’ for being devoid of distinctive character are not relevant because none of these trademarks were rejected as a result of the word “SO” taken alone considered to be devoid of distinctive character. In the contested mark, the word “SO” is not used with any following word. In relation to those marks mentioned by the applicant, it was the combination of the word “SO” followed by a descriptive or laudatory word or words that was considered, as a whole, to be devoid of distinctive character.

The situation in the registration of the word “so” taken alone is also different from the situation of “smarter”, “top”, “extra” or “plus” in that “smarter”, “top”, “extra” or “plus” as all are stand alone descriptive or laudatory elements that would be immediately understood as such by the relevant consumer. There is no such laudatory or descriptive meaning for the word “so” taken alone.

Finally, there is nothing that has been submitted by the applicant that can possibly indicate that the word “so” has a descriptive connotation with respect to the relevant goods, has a laudatory connotation with respect to the contested goods, or has become customary in the bona fide and established practices of the trade. Thus, the invalidity action brought by the cancellation applicant must fail, as the trade mark ‘SO…?’ has distinctive character inherently. However, even if the sign is not found to be inherently distinctive, it has acquired enhanced distinctiveness through its extensive and longstanding use in a significant part of the European Union in the period from 1994 to the present day.

In support of its observations, the EUTM proprietor filed the following evidence listed below. The EUTM proprietor indicated that the observations of 18/02/2020 were ‘confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties.

On 24/02/2020, the Office considered that the special interest has not been sufficiently justified and elaborated upon and gave a deadline up to 31/03/2020 to explain why this document should be kept confidential. Article 1 of Decision No EX-20-3 of the Executive Director of the Office of 16/03/2020 extends until 01/05/2020 (in practice 4 May, since 1 May is a public holiday, followed by a weekend) ‘all time limits expiring between 09/03/2020 30/04/2020 inclusive that affect all parties in proceedings before the Office. In any event, the Cancellation Division will describe the content of those documents in general terms, without disclosing commercially potentially sensitive information.

Therefore, the Cancellation Division will describe the content of those documents in general terms, without disclosing commercially potentially sensitive information.

Observations of 31/07/2019:

• First Witness Statement dated 24/07/2019 of the director of Inco Limited, exclusive licensee of the EUTM proprietor and its exhibits (exhibits KG-1 to KG-15).

Observations of 18/02/2020:

• Second Witness Statement dated 17/02/2020 of the director of Inco Limited, exclusive licensee of the EUTM proprietor and its exhibits (exhibits KG-16 to KG-19).

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, where 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, the latter 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 obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, 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 European Union 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 (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43), namely 14/11/2017.

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

Relevant point in time

The distinctive character, descriptiveness and customary character of a trade mark must be proven at the relevant point in time, that is, the time of filing of the contested mark (14/11/2017).

Relevant public

The distinctive character, descriptiveness and customary character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29).

The goods covered by the sign at issue in Class 3 namely hair care preparations; perfumery; perfumed body spray; eau de toilette; eau de parfum; cosmetics; personal care deodorants; body lotion; shower gel; dry shampoo; hair care shampoo; hair care conditioner; perfumed body mists; body butters are everyday products which target the public at large and the public consists of the average consumer, who is reasonably well informed and reasonably observant and circumspect.

As the contested figurative mark contains an English word and the evidence submitted by the applicant refers to English-speaking public, the relevant public is to be found primarily amongst English-speaking consumers in the European Union, that is, at least the public in the United Kingdom, Ireland and Malta.

Meaning of the contested mark

The adverb “SO” is defined by the Oxford online Dictionary as meaning “to such a great extent”, “extremely” or “very much” (see Annex A of the applicant).

The Cancellation Division agrees with the applicant that the three dots and question mark, which are simple punctuation marks, are not decisive elements nor is the graphic depiction of the mark as it does not significantly depart from standard characters.

Therefore the core issue is whether the meaningful English word “SO” used alone is capable of distinguishing goods in Class 3 for the average consumer.

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

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T 79/00, Lite, EU:T:2002:42, § 26).

The English-speaking part of the public uses the common term ‘SO’ as an adverb but also as a conjunction. The word ‘so’ alone does not provide any factual information as such. Therefore, although the word 'SO' is a simple and common English word, it is a distinctive word in relation to goods in Class 3. The term may in fact have various meanings but without any further context, it will most likely be seen as an introduction, a beginning of a phrase, and therefore creates certain suspense or expectations. Whether or not it is followed by suspension points, the word 'SO' normally requires an accompanying word or the continuation of the phrase. However, the term as such has no relationship with the goods at issue, it does not allude to their nature or qualities. Therefore, it is distinctive in relation to the goods concerned (15/02/2007, R 951/2005-1, (et al.) / SO SOLID para 14; 04/06/2012, R 1033/2011-4, 'SÔ:UNIC / SO...? et al.', para. 28).

As mentioned by the EUTM proprietor, it should be noted that, in its assessment relating to the distinctiveness of the earlier marks, the Board of Appeal observed that the English word ‘so’ may have various meanings, but that, without any further context, it created hesitation, a question or a certain suspense, whether or not it is followed by punctuation marks. It might therefore be understood by English speaking consumers, out of context, as meaning ‘then’, ‘thus’ or ‘therefore’, whereas, accompanied by another word, it would have a laudatory function or would refer to the concept ‘so’, indicating importance or a degree (26/03/2013, R203/2011-1, SO' BiO etic (FIG. MARK) / SO...? et al., paragraph 54). The decision of the Board of Appeal in this case was subsequently appealed to the General Court (T-341/13), subsequently to the CJEU (C537/14 P) which overturned that first decision of the General Court due to a failure to state consistent reasons for the decision, was redecided in a second General Court decision of 08/06/2017, T-341/13 RENV, and was subsequently upheld in a CJEU decision of 28/02/2019, C-505/17 P. (Exhibit KG-1 to the Witness Statement).

Arguments of the applicant

The invalidity applicant cites a number of prior decisions rejecting applications to register marks of the form ‘SO XXX’ for being devoid of distinctive character. As mentioned by the EUTM proprietor, it is to be noted that none of these marks were rejected as a result of the word “SO” taken alone being considered to be devoid of distinctive character. It was the combination of the word “SO” followed by a descriptive or laudatory word or words that was considered, as a whole, to be devoid of distinctive character. The Annexes B – G provided by the invalidity applicant are therefore very far from demonstrating that the word “SO” alone could be considered to be devoid of distinctive character, and does not even show that all marks of the form ‘SO XXX’ would be considered to be devoid of distinctive character.

The applicant argues that the term 'SO' is often used and registered in connection with cosmetic products and provided extracts from the internet showing use of the word ‘SO’ in relation to such products (annexes H and M). The consumers would be used to the element in connection with the goods at hand. As mentioned by the EUTM proprietor, first of all most of the evidence provided by the applicant does not show use of the element 'SO' as a trade mark but as a word in a text related to the products. In some examples, the use of the word “so” is not in a trade mark sense but rather in a descriptive sense in association with other words (‘so long’, ‘so good’, ‘so shiny’, ‘so perfect’, ‘so chic’…). Second, the fact that there are further registered trade marks containing the element 'SO' does not indicate per se that it is not distinctive. Thirdly, the listing of alleged ‘SO’ trade marks used for Class 3 goods in the EU does not demonstrate that these products are all available on the EU market and that EU consumers had been exposed to their use in relation to cosmetic products. Some are even proposed with the consent of the brand owner. Finally, the vast majority of these trade marks containing the element 'SO' are accompanied by a clear brand indication of origin.

The applicant also argues that the element 'SO' was declared as being weak by the Board of Appeal decisions 03/10/2007, R 664/2007-2, ‘SO ORGANIC’ and 15/02/2007, R 951/2005-1, ‘SO SOLID’. However, as mentioned by the EUTM proprietor, decision  R  664/2007-2 ‘SO ORGANIC’ dealt with the distinctiveness of the word mark ‘SO ORGANIC’ but not with the sign 'SO... ? ' or 'SO' standing alone. Furthermore, decision R  951/2005- 1, ‘SO SOLID’  confirmed that the element 'SO' has no meaning in relation to the goods at hand.

The cancellation applicant further attempts to draw an analogy between registration of the word “so” with registrations of words such as “smarter”, “top”, “extra” or “plus”. As mentioned by the EUTM proprietor, clearly, the situation in the registration of the word “so” taken alone is different from the situation of “smarter”, “top”, “extra” or “plus” in that “smarter”, “top”, “extra” or “plus” all are stand alone descriptive or laudatory elements that would be immediately understood as such by the relevant consumer. There is no such laudatory or descriptive meaning for the word “so” taken alone.

Lastly, it must be concluded that even a weak trade mark can remain in the Register.

Consequently, the application must be rejected also insofar as it was based on Article 7(1)(b) EUTMR.

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as EU 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).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested EUTM is registered (22/06/2005, T 19/04, Paperlab, EU:T:2005:247, § 24).

In accordance with the same case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (PAPERLAB, loc. cit., paragraph 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (11/04/2008, C 344/07 P, Focus, EU:C:2008:222, § 21).

The existence of such a relationship must be assessed, firstly, in relation to the goods covered by the contested EUTM and, secondly, in relation to the perception of the relevant public (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 30).

The applicant’s arguments regarding descriptive character of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is not distinctive. However, as has been seen above, descriptiveness of the contested sign for the goods mentioned above cannot be concluded. The evidence provided as for the lack of distinctiveness of the contested EUTM is not relevant as it does not deal with trade marks composed of ‘SO’ and not followed by another term.

Consequently, the application must be rejected also insofar as it was based on Article 7(1)(c) EUTMR.

Customary character – Article 7(1)(d) EUTMR

The applicant claims that the contested EUTM consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade, within the meaning of Article 7(1)(d) EUTMR.

The assessment of the alleged customary use of a sign must also be carried out in relation to the goods or services in respect of which the trade mark is registered and in relation to the perception of the sign by the relevant public (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 49)

In addition, actual customary use, not mere potential use as in the case of descriptive character, must be established (see, by analogy, 21/04/2004, C-64/02 P, OHIM / Erpo Möbelwerk, EU:C:2004:645, § 29). In other terms, a finding that a sign has become a customary designation should be corroborated by evidence of actual customary use of the sign, unless this fact is likely to be known by anyone or may be learnt from generally accessible sources (22/06/2006, C-25/05 P, Storck / OHIM, EU:C:2006:422, § 50-51).

Furthermore, customary use must be proven not to be sporadic but must be associated with the sign by the majority of those who are concerned by such use (Weisse Seiten, loc. cit., § 33).

In the present case, the evidence submitted by the applicant does not show that the term of which the mark consists was used alone in the field of cosmetics products as detailed above. Therefore, it cannot be established that the mark, at the time of filing, consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established practices of the trade.

Consequently, this ground for invalidity must also be rejected.

Acquired distinctiveness

Given that there has been no finding, under Article 59(1)(a) EUTMR, that the trade mark has been registered in breach of Article 7 EUTMR, the Office has not proceeded to scrutinise the evidence of acquired distinctiveness provided for the purpose of Article 59(2) EUTMR since to do so would be otiose.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

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

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

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Jessica LEWIS

Carmen SÁNCHEZ PALOMRES

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.