When similarities aren't just skin deep, the differences peel away.......


In a recent appeal decision* the General Court of the European Union held that the registered French trade mark, shown below, was genuinely used in trade by the use of its variations, also shown below. Under European Union trade mark law, a registered proprietor can be asked to prove that a registered trade mark which is more than five years old has been used for the goods for which it was registered. This case is an interesting example of how far removed the trade mark in use could be from the mark actually registered. The law does not require that use in trade be identical to the registered representation. This is with a view to allow the owner to adapt the representation of the mark to the changing marketing and promotion requirements of the goods or services concerned. However, the distinctive features of the registered mark must not get altered in the variation(s) in use.

After assessing genuine use of the earlier trade mark, the Court then considered whether the owner of the French registration could use their trade mark to challenge the later filed European Union trade mark registration. When comparing marks the distinctive and dominant features as well as other non distinctive features of the marks must be taken into account in the context of how these contribute to each of the respective marks as a whole. Where a trade mark contains both word and figurative elements, the words are usually considered more distinctive than figurative elements, because the average consumer more readily refers to the goods in question by citing the name than by describing the figurative element of the mark. Word elements are given more importance especially where the figurative elements are banal or commonly found in marks in the context of the particular goods being compared. Word elements that are easily understood in connection with the goods are usually not considered distinctive.

The distinctive feature of the registered French trade mark was held to be the word ‘dermépil’. The other word and figurative elements were either too small and barely visible or not particularly striking for the products- depilatory products and cosmetics.

As regards the EU registration under challenge, the distinctive element was also considered as the word ‘dermæpil’. The representation of a rose was non-distinctive since many beauty products refer to flowers. The average consumer would more readily refer to the goods in question by quoting the name ‘dermæpil’ rather than by describing the rose. The term ‘sugar epil system’ was generally difficult to read in comparison to ‘dermæpil’, and the term was likely to also be easily understood as referencing some of the goods of the EU registration by the average French consumer.

The basis of the objection was similarity of the later mark and similarity/identity of some of its goods leading to a likelihood of confusion. Overall, the marks were considered similar and some of the goods under the EU registration were identical with and some others similar to the goods of the earlier French registration and the EU registration was cancelled in part.

Though a cursory glance may suggest that two trade marks have many dissimilar features, the similarities may well outweigh the differences. National marks can be used to upset a European Union registration or even an application, and it is always useful to conduct searches to assess risks to the use and/or registration of a trade mark. Searches are usually a fraction of the costs of conducting multiple rounds of appeals.

(*Decision T-398/18)

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Though a cursory glance may suggest that two trade marks have many dissimilar features, the similarities may well outweigh the differences. Small initial investments can often help to save large avoidable costs.

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