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The Court of Justice of the European Union (CJEU) has referred five trademark appeals from cosmetics company L’Oréal back to the EU General Court after cancelling that court’s decisions.
The CJEU delivered its decision (in French) today, May 30.
In 2013, L’Oréal applied to register a range of word marks with the European Union Intellectual Property Office: ‘Master Clear’, ‘Master Smoky’, ‘Master Shape’, ‘Master Drama’, and ‘Master Duo’.
L’Oréal applied to register the marks in class 3, covering eye makeup products.
French beauty brand Guinot filed an opposition to the marks on the basis of its earlier registered figurative mark (French trademark number 103,790,207). The red square mark features the words ‘Masters Colors Paris’ and covers cosmetics and other treatments in class 3.
In 2015 the Opposition Division of the EUIPO upheld Guinot’s opposition to the marks. It said the similarities between the earlier mark and the applied-for marks outweigh the differences, so a likelihood of confusion would occur if L’Oréal’s marks were registered.
L’Oréal appealed against the decision, but the Fifth Board of Appeal rejected the appeal.
The board held ‘Master' or 'Masters’ to be the dominant element of the applied-for marks as well as the earlier registered mark and said that a likelihood of confusion would occur due to this similarity.
L’Oréal again appealed against the EUIPO’s decision. In the EU General Court it argued that the EUIPO erred in finding that ‘Master' or 'Masters’ was the dominant element of the marks in question.
The cosmetics company said that the correct assessment of the earlier mark would find that it was dominated by a large red square bordered with gold. The dominant element of Guinot's mark is not the word ‘Masters’, L’Oréal argued.
Case law of the EU courts dictates that all visual elements of a complex mark must be considered, according to L’Oréal, and the EUIPO’s finding was inconsistent with this precedent.
L’Oréal also argued that, for the French public, ‘Masters’, ‘Colors’, and ‘Paris’ are descriptive terms, so the earlier mark lacks distinctiveness.
As noted by the EUIPO, L’Oréal said cosmetic products are generally obtained following a visual examination of the items available. This reinforces the importance of the visual aspects, and the applied-for marks are visually different to Guinot’s earlier registered mark, L’Oréal claimed.
In 2017 the EU General Court found L’Oréal’s appeal to be “manifestly unfounded”.
L’Oréal appealed against the decision. At the CJEU, the cosmetics company presented the same arguments as it had previously put forward, and also asked the court to reverse the costs awarded against L’Oréal by the EU General Court.
The CJEU said the EU General Court “reproduced” the argument of the EUIPO to support its decision but failed to specify, or explain, why that was the case. The decision was “ambiguous” in its wording, and the court failed to share the reasons behind its ruling with L’Oréal, the CJEU noted.
As a result, the CJEU said “it is necessary” to return the cases to the EU General Court.
The CJEU cancelled the EU General Court’s rulings which were given in L’Oréal’s appeal against the EUIPO’s decisions, and referred the cases back to be heard again. Costs are reserved until this point.
L’Oréal, Guinot, EUIPO, Court of Justice of the European Union, Master makeup, cosmetics trademark, trademark opposition