Probiotical S.p.A., Via Mattei, 3, 28100 Novara (NO), Italy (applicant), represented by Hoffmann Eitle S.R.L., Piazza Sigmund Freud, 1 – Torre 2 - Piano 22, 20154 Milano, Italy (professional representative)

a g a i n s t

Synergia SAS, Le Poyet, 43 500 Beaune Sur Arzon, France (EUTM Proprietor), represented by Gerard Haas, 32 Rue La Boétie, 75008 Paris, France (professional representative).

On 16/04/2019, the Cancellation Division takes the following


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

2. European Union trade mark No 11 883 816 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.


The applicant filed an application for a declaration of invalidity against European Union trade mark No 11 883 816 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 5: Pharmaceutical preparations; foodstuffs and dietetic substances for medical or veterinary purposes; dietary supplements for humans and animals; food for babies; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; foodstuffs and nutraceutical preparations, namely capsules, powders, ampoules or syrups containing edible oils and fats and/or plant fibres and/or micronutrients including vitamins and/or minerals and/or amino acids and/or fatty acids; nutritional (or food) preparations and supplements containing proteins and/or carbohydrates and/or lipids and/or fibres and/or edible oils and fats and/or micronutrients including vitamins and/or minerals and/or amino acids and/or fatty acids, not for medical purposes.

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


The applicant argues that both word elements composing the contested trade mark are not distinctive and at the same time are descriptive of the goods in Class 5. The word ‘baby’ is not distinctive, in addition, it provides some information on the intended purpose and final consumers of the goods. With respect to ‘flore’, it can be translated as ‘flora’ in English (refering to the microorganisms occurring on or within the human body) and it will be immediately perceived as providing information as to the purpose and destination of the goods. Reference is made to the enclosed pages of Dictionary relating to ‘flora’/‘flore’/‘flore intestinale’ in English and French. Therefore, the final consumer will perceive the products as possibly able to restore and/or maintain the stasis of intestinal flora. Furthermore, the word ‘flore’ can also evoke ‘plant life’ and other characteristics of the goods such as floral, plant, herbal, flavouring or extracts. The font used is normal and the figurative element representing a dummy (pacifier) confirms the descriptiveness of the contested mark. Moreover, the applicant claims that the mark is deceptive for products used in connection with animals.

The EUTM proprietor argues that the applicant has filed the word trade mark ‘FLORBABY’ in Italy on 15/05/2014 for goods in Class 5 (attachment 1) and therefore, the present request for invalidity is dilatory. The EUTM proprietor owns several identical trade marks (attachment 2 to 6). The contested trade mark is probably capable of evoking the function of the products but it cannot be understood as the normal way of designating the product and 20/09/2001, C‑383/99, ‘P BABY DRY’ is quoted (attachment 7). The EUTM proprietor considers that the relevant public is composed of both pharmacists and drugstore managers, and consumers with a degree of attention higher than normal and they would not perceive the expression ‘Baby-Flore’ as a promotional message (attachments 8 and 9 showing a ‘Baby-Flore’ product presentation dated 13/01/2014 and examples of magazine advertisements). Finally, a search with the words ‘Baby-Flore’ in Google demonstrates that all the results are about the EUTM proprietor (attachment 10). It also considers that the graphic element is distinctive per se and points out that the minimum degree of distinctive character is sufficient.

The applicant repeats previously mentioned arguments and replies that the action is not dilatory. The applicant adds that the EUTM proprietor is opposing EUTM Application No 13 449 723 which is distinctive as it is the Italian trade mark ‘FLORBABY’ (word mark). The fact that the EUTM proprietor owns several ‘Baby-Flore’ trade marks around the world is irrelevant. The purpose of the goods is to restore the intestinal flora of children. The contested word ‘flore’ is in its entirety included in the ‘intestinal flora’. As a conclusion, the contested trade mark can be understood and perceived as a normal way of designating this product and presenting its essential purposes, use and destination. The results of the EUTM proprietor’s Google search are in French and cannot be taken into consideration.

In its rejoinder, the EUTM proprietor considers that the arguments given to support the distinctive character of ‘FLORABABY’ can be used for the contested mark as well. The combination ‘Baby-Flore’ is contrary to the French and English grammatical rules and for this reason it is unusual in its structure. The word ‘BABY’ is perceived as referring to a newborn, a newly born child or an infant, while the word ‘FLORE’ refers to a set of plant species in a given environment. Contrary to the assertions made by the applicant, no other competitor uses the phrase ‘Baby-Flore’ on its product. The Office, in its guidelines, considers that there is no reason to assume that a trade mark application has been filed with the intention of deceiving customers. In support of its argument, the EUTM proprietor submits extracts of other trade mark registrations including ‘BABY FLORE’ in different countries.

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

Non-distinctive character- Article 7(1)(b) 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. Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that signs or indications which may serve, in trade, to designate characteristics of the 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(12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 62).

Under Article 7(1)(b) EUTMR trade marks which are devoid of any distinctive character are not to be registered.

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, the goods or services in respect of which registration is sought (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24). In accordance with the same case-law, for a sign to come under 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/services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods/services in question, or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25).

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 relevant date is the date of the application of the contested trade mark, namely 10/06/2013.

The distinctive character and descriptiveness 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).

In the present case, the contested goods are pharmaceuticals, veterinary, sanitary preparations, foodstuffs and dietetic substances in Class 5.

The contested goods all target the general public, who displays an average level of attention when purchasing the goods, being reasonably well informed and circumspect, and also professionals in the relevant field. In view of the nature of the goods in question, the awareness of the relevant public will be higher than average.

In this respect it is pertinent to point out that even if part of the relevant public has an enhanced level of attentiveness, this does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary; terms which are not (fully) understood by consumers of cheap, mass-consumption goods can be grasped immediately by the specialised public, in particular if the sign is composed of words which relate to the field in which the latter public is active (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27-28).

As follows from Article 7(2) EUTMR, the European Union trade mark shall be declared invalid if it is ineligible for protection with regard to just one Member State or the official language of just one Member State. The applicant has identified the relevant public as consisting of both the English and French consumers and traders with specialised expertise within the EU. The Cancellation Division will focus on the French consumers because the mark applied for is made up of one basic English word, ‘Baby’ that has become part of the French language, and by a French word ‘Flore’.

The legal issue in the case in question is whether the expression ‘Baby-Flore’ directly refers to the goods at issue in Class 5 with sufficient clarity that the relevant consumers are likely to apprehend the meaning of such expression instead of viewing it as a trade mark.

The applicant did not give any definition of ‘baby’, probably because it is obvious, but it mentioned that the word provides information on the intended purpose and final consumers of the goods concerned. It is common knowledge that the English word ‘baby’, as such, has entered the French vocabulary with the same meaning as in English and, in addition, it is used in the common expressions ‘baby boom’, ‘baby blues’, ‘babysitter’, etc.

The definitions of Flore intestinale provided in the applicant’s observations in French (microbes du système digestif) correspond in English to ‘flora’, namely microorganisms occurring on or within the human body.

The EUTM proprietor stated that at least part of the goods are precisely used in relation to children’s flora.

Taken as a whole, the meaning of the expression ʽBaby-Flore’ is clear to any French-speaking consumer who will immediately and without any difficulty understand its meaning: a pharmaceutical or supplement to help a child’s intestinal flora. Even if ‘flore’ is not flore intestinale, it is immediately understood that the purpose of the product is in relation to the digestive system because ‘flore’ is the first word of the complete French expression and it is easy to mentally complete the expression. ‘Baby-Flore’ is not the same as ‘Baby-Flore Intestinale’ but it is well known that in commerce, a short version of the proper terminology is frequently used. The expression is more than allusive to the purpose of the goods, it is directly descriptive.

The contested trade mark is figurative . Nevertheless, as correctly mentioned by the applicant, the expression itself is written in normal font. The addition of a figurative element representing a pacifier (dummy) only reinforces the descriptive meaning of the word ‘Baby’. The fact that the sign includes the symbol ® means that the mark is registered and it is not relevant at the moment of assessing whether the trade mark is distinctive or not.

Taken as a whole, the meaning of the terms ‘Baby-Flore’ is clear to any French-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the contested goods in respect of which registration is sought, namely that they are products that are intended for use in relation to infants’/very young children’s intestinal flora. It is, therefore, the Cancellation Division’s view that the term ‘Baby-Flore’ is readily intelligible when taken in conjunction with the goods applied for and viewed by the relevant consumer, who will see the term ‘Baby-Flore’ merely as a descriptor of a characteristic of the goods being provided rather than an indication of trade origin.

The EUTM proprietor does not dispute this definition but argues that the expression does not describe or provide the relevant public with any information regarding the type of goods concerned. The Cancellation Division disagrees for the following reasons: the relevant goods are all in Class 5 and are pharmaceuticals, veterinary, sanitary preparations, foodstuffs and dietetic substances. The fact that the expression combines an English and a French word is not per se fanciful as the English word has become part of the French language. The fact that the expression ‘flore intestinale’ is designated only by its first component ‘flore’ and that ‘intestinale’ is omitted does not allow the mark to reach the minimum of distinctive character required, as the relevant public would immediately understand that the products are to be used in relation to intestinal flora.

As to the extent of the refusal, the Cancellation Division considers that the expression ‘Baby’ can be used for humans but also for veterinary preparations as baby can also refer to animals (baby dog, etc.) and there are also pharmaceuticals or sanitary preparations for helping animals’ flora. This is common knowledge although not argued by the applicant. In fact, veterinary preparations are included in pharmaceutical preparations (defined as chemical substances intended for human or veterinary use and serving a medical purpose). Therefore, the mark is found descriptive for all goods.

The parties argue that ‘Flore’ might be understood with other meanings (in particular, a set of plants species). It must be noted that even if other possible meanings may exist, the fact that an expression may have several meanings does not exclude the absence of distinctive character (17/01/2012, T‑513/10, Atrium, EU:T:2012:8, § 22).

A word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 30-31; 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

According to case-law, for this provision to apply, it is sufficient that the sign is capable of designating a characteristic of the goods applied for (in this case, the goods objected to in Class 5), that is ‘a property, easily recognisable by the relevant class of persons, of these goods or the services’ (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 50).

Therefore, the sign can fall under the prohibition of Article 7(1)(c) EUTMR if it conveys a message about the characteristics of those goods. In this regard, it must be stated that the legislature’s choice of the word ‘characteristic’ highlights the fact that the signs referred to in that provision are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods in respect of which registration is sought. Therefore, a sign may be refused registration on the basis of Article 7(1)(c) EUTMR only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (11/03/2011, C‑51/10, 1000, EU:C:2011:139, § 50 ; 27/04/2016, T‑89/15, Niagara, EU:T:2016:244, § 14).

The EUTM proprietor quotes 20/09/2001, C‑383/99, ‘P BABY DRY’ in order to demonstrate that the contested trade mark is not descriptive because the syntactically unusual juxtaposition of words is not a familiar expression in the English language. The correct expression would be ‘DRY BABY’. However, this case-law has been rapidly given a stricter interpretation with the decision in the case of 23/10/2003, C‑191/01 P, ‘Doublemint’, where the Court interpreted Article 7(1)(c) EUTMR as precluding from registration any mark consisting exclusively of a sign or indication where ‘at least one of (the) possible meanings (of such sign or indication is to) designate a characteristic of the goods or services concerned’. In addition, it is mentioned in attachment 8 of the EUTM proprietor that: ‘Baby-Flore is intended for children in addition to food, to restore the balance of intestinal flora …’, and there is a direct link with the purpose of the goods while in ‘Baby dry’, the link with baby nappies is not so direct.

As such, the contested mark considered as a whole, has a clear meaning and will immediately inform consumers without further reflection that the contested goods and related products are intended for use in relation to infants’, very young children’s, and/ or animals’ intestinal flora.

No analysis or mental leap is required to ascertain the possible meaning of the expression as a whole, since it simply consists of the combination of the two words. The expression is not unusual, nor is it grammatically incorrect, and neither does it amount to a lexical invention. The combination of ‘Baby’ with ‘Flore’, namely the first part of the meaningful expression ‘flore intestinale’ does not produce an unusual combination.

The fact that searches in Google for ‘Baby-Flore’ do not provide results is not sufficient to consider that the trade mark reaches the minimum distinctive character as it suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which protection is sought, or a characteristic of the goods and services (17/09/2008, T‑226/07, Pranahaus, EU:T:2008:381, § 36; 18/11/2015, T‑558/14, TRILOBULAR, EU:T:2015:858, § 50).

According to case-law, a mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of distinctive character too. It follows that the sign is also devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR.

Since Article 7(1) EUTMR makes it clear that it is sufficient that one (two in the present case) of the absolute grounds for refusal listed in that provision applies for the sign at issue not to be registrable as a 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).

Since the contested trade mark is totally cancelled based on Article 7(1)(b) and (c) EUTMR, it is not necessary to examine the remaining ground.


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


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


Jessica LEWIS

Frédérique SULPICE

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.

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