CANCELLATION No 25 766 C (INVALIDITY)

Kiriaki Zartaloudi, 3, Koritsas Str., 122 43 Egaleo, Athens, Greece (applicant), represented by Kiortsis & Associates, 136. Solonos Str., 10677 Athens, Greece (professional representative)

a g a i n s t

Infinity Cosmetics, 41, boulevard des Belges, 44300 Nantes, France (EUTM proprietor), represented by Cabinet Langlais Avocats, 33 rue de Strasbourg, 44000 Nantes, France (professional representative).

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 9 752 601 is declared invalid for all the contested goods, namely:

Class 5: Pharmaceutical and veterinary preparations; Chemical preparations for medical or pharmaceutical purposes; Pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; Dermatological preparations including hyaluronic acid for wrinkle filling.

Class 10: Surgical and medical apparatus and instruments; Prostheses; Artificial implants; Surgical and medical apparatus and instruments Syringes for the injection of dermatological products.

3. The European Union trade mark remains registered for all the uncontested goods, namely:

Class 5: Sanitary preparations for medical purposes; Dietetic substances adapted for medical use; Food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Bath preparations, medicated; Sanitary pads and towels and sanitary pants; Herbs for medicinal purposes; Herbal tea; Antiparasitic preparations; Sugar for medical purposes; Alloys of precious metals for dental purposes.

Class 10: Dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Stockings for varices; Feeding bottles; Feeding bottle teats; Clothing especially for operating rooms; Massage apparatus; Esthetic massage apparatus; Chairs for medical or dental purposes; Surgical drapes; Basins for sanitary or medical purposes; Furniture especially made for medical purposes, surgical cutlery, orthopaedic footwear; dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials.

4. 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 9 752 601 ‘dermafill’ (word mark), (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 5: Pharmaceutical and veterinary preparations; Chemical preparations for medical or pharmaceutical purposes; Pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; Dermatological preparations including hyaluronic acid for wrinkle filling.

Class 10: Surgical and medical apparatus and instruments; Prostheses; Artificial implants; Surgical and medical apparatus and instruments Syringes for the injection of dermatological products.

The applicant invoked the absolute grounds of Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(b), (c), (d) and (e) EUTMR and also bad faith under Article 59(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that both the word ‘derma’ and ‘fill’ have meanings in English and are used either alone, or together, in thousands of trade marks for goods in Classes 5 and 10. The applicant states that although these words ‘derma’ and ‘fill’ are not in the correct order which it claims would be ‘fill derma’ it must be viewed as a whole and the entirety of the sign is descriptive and lacks distinctiveness for all of the contested goods. It claims that the term ‘dermafill’, or variations thereof, such as, ‘dermalfillers’, ‘dermal filler’ or ‘dermal fill’ have been used since 1976 by different companies together with their trade marks to indicate ‘dermatological fillers’. The applicant states that there are numerous trade marks registered in Classes 5 and 10 which include the term ‘dermafill’ in different variations, and in all of the trade marks it claims that ‘dermafill’ is descriptive but there are other distinctive indications which allows them to be registered. However, the applicant claims that the contested EUTM is fully descriptive and lacks distinctiveness and there is a public interest that this descriptive term not be registered. It further states that the EUTM must not only be invalidated in relation to the specific dermatological filler products but also in relation to the broader categories as they include specific goods for which the sign is descriptive and quotes the following judgments in support of its claim, 07/06/2001, T‑359/99, EuroHealth, EU:T:2001:151, § 33 and 08/06/2005, T‑315/03, Rockbass, EU:T:2005:211. The applicant claims that the relevant consumer is the medical professional and pharmacists with a high degree of attention but this does not alter the outcome that the sign lacks distinctiveness and is descriptive and will be viewed as such. The applicant quotes numerous judgements in order to back up its arguments. It further argues that the sign has become customary in the current language or in the bona fide and established practices of the trade at the relevant point in time and that its shape or other characteristic resulting from the nature of the goods are an essential technical function or add substantial value. Finally, it also argues that the EUTM proprietor has filed the EUTM in bad faith as the EUTM proprietor has been involved in the pharmaceutical sector and must have known that ‘dermafill’ has been used since at least 1976 in Germany, Europe and worldwide to describe the goods by different companies. The applicant also argues that the EUTM proprietor, having noted the success of the term ‘dermafill’ then registered it for itself and later served formal notice on the other parties to stop using the term which they had already been using. Therefore, the applicant claims that the EUTM proprietor acted in bad faith and requests that the application be fully upheld.

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

• Annexes A and B: Printouts from the online dictionary vocabulary.com concerning the meaning of the words ‘derma’ and ‘fill’.

• Annex C: Pictures of products owned by different companies which include the term ‘dermafill’ in different variations along with other indications.

• Annex D: Printout from TMView to show that a trade mark for the term ‘dermafil’ was filed in Germany in 1976 and registered in 1979.

The EUTM proprietor argues that this application and the application for invalidity 26 321 C, which have been filed against the same EUTM should be joined, as Kiriaki Zartaloudi, the present applicant, is the Director of the company Sandine Zartaux (the applicant in the other application), which it claims is infringing the EUTM. The EUTM proprietor states that it is active in the field of cosmetics, skin care and medical devices and offers a range of preparations (and the related syringes) including hyaluronic acids for wrinkles and lip filllers under the name ‘dermafill’ and that is why it filed the contested EUTM. The EUTM proprietor states that the EUTM must be evaluated to determine if it was descriptive at the time of filing and that the undated evidence submitted by the applicant cannot be taken into account. Moreover, the EUTM proprietor claims that the applicant must submit strong evidence that the usage of the sign was descriptive in the relevant field but has not done so. In this respect the EUTM proprietor relies on the decision of the Cancellation Division of 11/11/2015, 8 159 C, ‘AIR-FLOW’. It argues that the term ‘DERMAFIL’ does not exist in the dictionary and a quick search on google.com shows that this term leads to the EUTM proprietor company. It claims that as Annex C is undated it cannot be taken into consideration and that, for the main part, it refers to signs which differ from the EUTM and which contain the symbol ® so that it does not show descriptive use. It denies that the use of ‘DERMA’ or ‘FILL’ by other companies proves that the EUTM is descriptive and claims that there is no evidence of such. In regards to Annex D of the applicant, the EUTM proprietor claims that it refers to a trade mark ‘DERMAFIL’ for surgical suture and cannot prove that ‘dermafill’ is descriptive or commonly used for the contested goods. Therefore, it claims that the applicant has failed to provide any evidence that the EUTM is descriptive and the mere fact that each of the components is descriptive does not mean that the sign as a whole is descriptive. It relies on the Cancellation Division decision of 14/11/2013, 7 313 C, ‘DRINKFIT’ that the juxtaposition of the words does not follow the rules of English grammar to describe the concept and in the present case ‘dermafill’ would be a neologism meaning ‘a derma which fill something’ but not ‘to fill the skin’. Therefore, the EUTM is not descriptive and Article 7(1)(c) EUTMR does not apply to signs that are only suggestive or allusive, and the term ‘dermafill’ does not go beyond a mere evocation and does not describe directly and immediately the contested goods. It further denies that the sign falls foul contrary to Articles 7(1)(b), (d) or (e) EUTMR. Finally, in regards to the ground of bad faith it denies that the applicant has shown that the EUTM proprietor acted in bad faith at the time of filing. It further argues that the applicant has failed to prove that the sign was descriptive at the time of filing for the contested goods and that this was the applicant’s main argument for bad faith. Therefore, the applicant has not shown that the EUTM proprietor acted in bad faith. Consequently, the EUTM proprietor requests that the application be rejected in its entirety.

In support of its observations, the EUTM proprietor filed the following evidence:

• Annex 1: Printout from the Cambridge, Oxford and Collins Online Dictionaries in which it searched for the term ‘’DERMAFILL’ but no results were found.

• Annex 2: Prinout of a google.com search for the term ‘DERMAFILL’ with most of the results, including the top results, referring to the EUTM proprietor, and also printouts from the related pages.

• Printout from the Companies House showing that Kyriaki Zartaloudi is the Director of the company Sandine Zartaux Holding Ltd., and a printout from Facebook to confirm the aforementioned link.

The applicant in its reply contests the EUTM proprietor’s arguments. It insists that the meaning of the term is immediately apparent to consumers to which goods they are addressed and that it derives from the phrase ‘derma fill’ or ‘dermal filler’. It submits evidence that third party companies describe their identical products as ‘dermal fillers’. Moreover, the term ‘dermal filler’ is in dictionaries. The applicant relies on the decision of the Board of Appeal of 03/06/2013, R 1595/2012-1, ‘ULTRAPROTECT’ and also the judgment of 06/03/2012, T-565/10, Highprotect, EU:T:2012:107 to claim that even though the term ‘dermafill’ does not follow the usual grammatical rules it can be considered to be descriptive. It denies that the cases ‘DRINKFIT’ and ‘AIR-FLOW’ cited by the applicant (Ibid) are relevant to the present proceedings as it was a meaningless imaginary combination of words or the juxtaposition of the words ‘air’ and ‘flow’ lead to the incomprehensible phrase ‘flow the air’. The applicant claims that the fact that both words ‘derma’ and ‘fill’ are used in thousands of marks, and that ‘derma’ is used by the EUIPO as an example of descriptive/non-distinctive elements in its Guidelines only enforces the fact that the words are descriptive. In relation to the Google search submitted by the EUTM proprietor, the applicant claims that it did its own search and that the EUTM proprietor’s goods were only one such product among other companies. It denies that use of the word ‘DERMAFIL’ with the symbol ® shows trade mark use as it is a descriptive element alongside a distinctive element which permitted the mark to be registered. The applicant further states that the term ‘derma fill’ had the same meaning at the time of filing of the EUTM as it does now and as such the evidence relating to its meaning now is sufficient to prove that it was descriptive at the time of filing. It insists that the EUTM is descriptive and lacks distinctiveness, that it has become customary in the course of trade and describes the technical attributes of the product. Moreover, it insists that the EUTM was filed in bad faith.

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

• Annex 2A: Printout from the website of the company Gana R&D which shows use of ‘dermal filler’ on page 1.

• Annexes 2B1 – 2B5: Printouts from online dictionaries concerning the term ‘dermal filler’.

• Annex 2C: Printout from a google.com search for ‘dermafill’ which shows the products of different companies.

• Annex 2D: Printout from the website of Knockoutbeauty which shows a product marked ‘dermafill’ which does not belong to the EUTM proprietor.

• Annexes 2E1-2E14: Printouts from the webpages of different companies showing use of the common term ‘dermafill’ or variations thereof.

• Annex 2F1: Printout of electronic publications concerning ‘dermafills’ which it claims shows use of the term since 1996 and that ‘More than 10 million (dermafill) treatments have been performed since 1996’.

• Annex 2G: Extract from TMView which shows the filing and registration of the trade mark ‘DERMOFIL REMEK’ in 1968 and use of the term since 1996.

• Annexes 2H1-2H18: Printouts from various websites which shows the use of the term ‘dermafill’ to describe the kind, nature, method of use and intended purpose of the products.

In its rejoinder the EUTM proprietor repeats its previous arguments and denies that the applicant, either in its first or second submissions, provided sufficient evidence or arguments to prove that the sign was descriptive, lacking distinctiveness, that it had become customary in the course of trade or described the technical attributes of the product, nor does it show any bad faith on the part of the EUTM proprietor. The EUTM proprietor goes through the evidence and attempts to refute each piece. In particular it denies that the evidence relates, in the main part, to the sign ‘DERMAFILL’. It insists that the symbol ® is placed beside the large word ‘DERMAFIL’ and does not apply to the other words as claimed by the applicant. The EUTM proprietor denies the relevance of the argument that the EUIPO Guidelines denote ‘DERMA’ as descriptive as in the present case it is incorporated into the sign ‘DERMAFILL’. It denies that the sign is descriptive or that it describes directly and immediately the contested goods or that it lacks distinctiveness. Therefore, it concludes that the application must be rejected.

Preliminary remark

The EUTM proprietor requested that this application and the application for invalidity 26 321 C, which have been filed against the same EUTM should be joined, as Kiriaki Zartaloudi, the present applicant, is the Director of the company Sandine Zartaux (the applicant in the other application), which it claims is infringing the EUTM.

On 19/11/2018 the Office notified its intention to the parties to join the proceedings 25 766 C (the present application) and 26 321 C together and the applicant was requested to appoint one single representative to deal with both proceedings. However, the Office also stated that if the applicant did not reply, or did not nominate one single representative for both proceedings then they would be dealt with separately. The applicant did not appoint one representative or comment on this issue. Therefore, the proceedings cannot be joined together and each will be dealt with separately.

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).

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 underlying 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 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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

In the present case the contested EUTM is a word mark consisting of the term ‘dermafill’.

The contested EUTM is registered, inter alia, for the following contested goods:

Class 5: Pharmaceutical and veterinary preparations; Chemical preparations for medical or pharmaceutical purposes; Pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; Dermatological preparations including hyaluronic acid for wrinkle filling.

Class 10: Surgical and medical apparatus and instruments; Prostheses; Artificial implants; Syringes for the injection of dermatological products.

In accordance with 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).

In the present case, the contested goods are types of pharmaceutical, veterinary, dermatological or medical goods, medical or surgical apparatus, instruments, implants, prosthesis or syringes. At least part of the relevant public is the professional consumer in the medical or pharmaceutical fields and therefore the level of attentiveness of this group is assumed to be high.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). The goods are, at least in part, also directed at the average consumer who will also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

As the contested mark contains English words, the relevant public is the English-speaking consumer in the European Union.

The applicant has submitted extract from the Vocabulary.com Online Dictionary in regards to the words ‘derma’ and ‘fill which provides the following definition:

Derma:

• The deep vascular inner layer of the skin.

Fill:

• Make full, also in a metaphorical sense, fill or meet a want or need.

The applicant also submitted a copy an extract from a medical dictionary from online-medical-dictionary.org for the term ‘Dermal Fillers’ which lists a number of synonyms like: ‘Dermal filler’, ‘Skin filler’, etc. and which contains the description:

• Materials such as COLLAGEN or HYALURONIC ACID that are injected or deposited into the DERMIS for the purpose of skin augmentation.

The applicant also provides a printout from the Collins Online Dictionary for the entry ‘dermal filler’ which states:

• A non-toxic substance that is injected under the skin for the purpose of ‘plumping out’ lines, wrinkles, and loss of facial volume due to disease (HIV) or age. Additional information: There are many brands made by many different companies. Juvederm, Radiesse, Restylane, Sculptra, and many more.

The applicant provides a printout from the MacMillan Dictionary for the word ‘filler’ which states, inter alia, the following:

• (also dermal filler) a substance injected into the face to remove wrinkles.

The applicant also provides a printout from the Merriam-Webster Online Dictionary for the word ‘dermal’ which states:

• Of or relating to the skin and especially the dermis: cutaneous…examples of dermal in a sentence ‘The most popular type of dermal filler is made of hyaluronic acid…’.

Therefore, from the above, it can be seen that the word ‘derma’ refers to the skin and ‘fill’ refers, inter alia, to something that fills and therefore, the term ‘dermafill’ will be clearly understood as referring to something that ‘fills the skin’. Moreover, the term ‘dermal filler’ is in the dictionaries and refers to something which is injected into the face to remove wrinkles. The term ‘dermafill’ when applied to the contested goods immediately informs the professional public that the goods are dermal fillers aimed to plump and smooth the skin or have some form of dermal filling effect. As such, the expression ‘dermafill’ conveys obvious and direct information regarding the kind, function and intended purposes of the goods in question, particularly in relation to pharmaceutical and dermatological preparations injected into or under the skin for wrinkle filling; Dermatological preparations including hyaluronic acid for wrinkle filling.

Some of the goods are not dermal fillers per se, namely, pharmaceutical and veterinary preparations, chemical preparations for medical or pharmaceutical purposes, in Class 5 or surgical and medical apparatus and instruments; prostheses; artificial implants; syringes for the injection of dermatological products, in Class 10. However, these goods include the specific goods for which the sign is descriptive, for example, the implants, including breast implants, are placed under the skin and fill the skin. The surgical and medical apparatus and instruments include the syringes used to inject the fillers into the skin and the pharmaceutical and veterinary preparations can include dermal fillers.

This term will immediately inform consumers without further reflection that these goods are used for dermal filling, it conveys obvious and direct information regarding a characteristic of the claimed goods, namely their intended nature or purpose.

Therefore, this term is descriptive and laudatory in relation to the contested goods as it would immediately and clearly describe the purpose of the goods and how the consumer will perceive them.

Therefore, the sign as a whole does not contain any element which can be considered to be distinctive or that would result in it becoming memorable to the customer. The consumers will immediately and clearly perceive the term as describing the nature of the goods or how the goods are to be used and not as indicating the commercial origin of the goods.

The EUTM proprietor argues that the term does not follow normal rules of English grammar and due to this unusual juxtaposition the sign is distinctive. However, the Cancellation Division cannot agree with this assertion, although the juxtaposition of the words in the EUTM is mildly unusual, the term is easily understood. It should be emphasized in this respect that the fact that the term ‘dermafill’ is endowed with a grammatically incorrect structure does not create an impression sufficiently far removed from that produced by the simple combination of the indications brought by the words ‘derma’ and ‘fill’, so that it would take precedence over the sum of these two words and thus exclude the existence of a descriptive character (see judgment of 06/03/2012, T-565/10, Highprotect, EU:T:2012:107). Moreover, the made-up term ‘dermafill’ hardly differs from the generic term ‘dermalfill’.

A trade mark consisting of an expression which merely conveys information about how to use the goods on which it is found is unlikely to serve as a badge of trade origin. Such a mark leaves no imprint on the consumer’s consciousness after the purchase has taken place and the expression soon sinks back into the anonymity of ordinary promotional language. The mark will not stand out as an indicator of origin, unless through exposure and use, the public has been educated to perceive it as indicator of origin, and the EUTM proprietor did not prove this.

The EUTM proprietor states that the EUTM must be evaluated to determine if it was descriptive at the time of filing and that the undated evidence submitted by the applicant cannot be taken into account. In this respect the EUTM proprietor relies on the decision of the Cancellation Division of 11/11/2015, 8 159 C, ‘AIR-FLOW’. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Cancellation Division are to some extent factually similar to the present case, the outcome may not be the same.

The above mentioned case contains different words and term to the one at issue in the present case and different circumstances when related to the contested goods and therefore can be distinguished from the present case. Moreover, as mentioned above, each case must be examined on its own merits and the Cancellation Division distinguishes the present sign from the above mentioned signs and for the reasons outlined above determines that the sign is descriptive of the purpose of the goods.

Indeed it is true that the evidence must relate to the time of filing, however, in relation to a term made up of two descriptive words, which had the same meaning at the time of filing as they do now, the fact that some of the evidence is undated is irrelevant. The words were equally descriptive at the time of filing as they are now. Moreover, the applicant has submitted evidence prior to and around the time of filing. Therefore, this argument must be rejected.

The EUTM proprietor also argues that the mere fact that each of the components of the sign is descriptive does not mean that the sign as a whole is descriptive. It relies on the Cancellation Division decision of 14/11/2013, 7 313 C, ‘DRINKFIT’ that the juxtaposition of the words does not follow the rules of English grammar to describe the concept and in the present case ‘dermafill’ would be a neologism meaning ‘a derma which fill something’ but not ‘to fill the skin’. Therefore, the EUTM is not descriptive and Article 7(1)(c) EUTMR does not apply to signs that are only suggestive or allusive, and the term ‘dermafill’ does not go beyond a mere evocation and does not describe directly and immediately the contested goods. Again, the Cancellation Division must consider each case on its own merits. However, it notes that the due to the different words and their fanciful juxtaposition in the sign DRINKFIT’ the sign is far enough removed and requires additional mental steps to determine what it is referring to and thus can be distinguished from the present case.

The EUTM proprietor also argues that the term ‘DERMAFIL’ does not exist in the dictionary and a quick search on google.com shows that this term leads to the EUTM proprietor company. However, as mentioned above, the terms ‘derma’ and ‘fill’ are in the dictionary, as is the term ‘dermal fill’. Moreover, the applicant has also provided a search from google.com which shows the goods of other companies appearing under the search for ‘DERMAFIL’. Therefore, these arguments must be rejected.

As regards the EUTM proprietor’s argument that the symbol ® which appears after the term ‘DERMAFIL’ in some of the evidence of the applicant to show that it is distinctive, this argument must also be rejected. The mere insertion of the symbol ® does not make the word distinctive and there may be other reasons for the sign being registered, namely, the language of the country in which it is registered or further elements in the sign etc. Therefore, this argument is set aside.

The applicant states that ‘derma’ is used by the EUIPO as an example of descriptive/non-distinctive elements in its Guidelines only reinforces the fact that the words are descriptive. The EUTM proprietor denies the relevance of this argument as in the present case it is incorporated into the sign ‘DERMAFILL’. It denies that the sign is descriptive or that it describes directly and immediately the contested goods or that it lacks distinctiveness. The Cancellation Division notes, as discussed above, that indeed the word ‘derma’ in relation to the contested goods is descriptive and the mere inclusion of the word ‘fill’ does not provide the sign with any distinctive character for the reasons already mentioned above.

The EUTM proprietor also denies that the use of ‘DERMA’ or ‘FILL’ by other companies proves that the EUTM is descriptive and claims that there is no evidence of such. The Cancellation Division makes reference to the above findings in relation to these words and also notes that the fact that other companies are using this word along with the other elements is not decisive but does suggest indeed that the words describe the goods, but as seen above, the term itself has been considered to be descriptive and therefore this argument must also be rejected.

Conclusion

In light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared partially invalid for all the contested goods.

As the application is fully upheld in respect of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR there is no need to examine the request in relation to the remaining grounds. However, for the sake of completeness, the Cancellation Division notes that according to the case-law of the European Courts, a mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods and services for the purposes of Article7(1)(b) EUTMR (12/06/2007, T - 190/05, TWIST & POUR’, para.39). Therefore, the application would also be successful as based on this ground.

The Cancellation Division will not proceed to examine the request in relation to the remaining grounds of invalidity Article 59(1)(a) EUTMR in conjunction with Articles 7(1)(d) and (e) EUTMR or bad faith under Article 59(1)(b) EUTMR as said examination will not affect the outcome of the present decision.

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

Rhys MORGAN

Nicole CLARKE

Michaela SIMANDLOVA

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.