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12 September 2018Trademarks

EU General Court upholds L’Occitane trademark

French cosmetics company L’Occitane en Provence has today prevailed against a trademark cancellation action at the EU General Court.

In 2011, Laboratories M&D (known as L’Occitane) applied to register ‘Nuit Précieuse’ (Precious Night) as a figurative trademark covering soaps, perfumes, and other cosmetics in class 3.

The European Union Intellectual Property Office (EUIPO) registered the trademark in 2014.

However, shortly after the mark’s registration, Dublin-based Chefaro Ireland, a subsidiary of consumer healthcare company Perrigo, asked the EUIPO to invalidate the mark.

Chefaro relied on its earlier-registered French word mark ‘Eau Précieuse’ (Precious Water), registered in 1983 for perfume and beauty products in class 3.

In 2015, the EUIPO’s Cancellation Division upheld Chefaro’s application for a declaration of invalidity, finding that the goods covered by ‘Nuit Précieuse’ and ‘Eau Précieuse’ are identical and the marks themselves are similar, resulting in a likelihood of confusion between the two.

L’Occitane appealed against the decision and, in 2016, the EUIPO’s Fourth Board of Appeal annulled the previous ruling.

The board said that no likelihood of confusion exists and evidence of the earlier mark’s distinctiveness was insufficient to show that the public recognised it.

It added that the common word ‘précieuse’ is not distinctive, but is rather understood as an adjective to qualify the first word of the respective marks. The two marks have “clear and memorable differences” as well as this shared element, the board said.

Chefaro appealed against the decision, arguing that the common word ‘précieuse’ is the dominant element of both marks, that it is distinctive, and that it will be remembered by consumers.

In today’s ruling, the General Court noted that L’Occitane’s mark is a figurative sign comprised of written words in a standard typeface, whereas Chefaro’s mark is a word mark.

The court said that the two words in each mark are linked and will be “perceived as a complete phrase which is read and understood in its entirety”.

The court affirmed the board’s finding that the marks are similar only so far as they share “a laudatory adjective” as a second word. It said the board did not err in its consideration of the marks’ similarities.

Even though the common word is the longer word in both marks, this similarity is offset by the different first words of each mark, the court said, so the common element of ‘précieuse’ is not dominant.

The court reiterated the board’s finding that the existence of the common word ‘précieuse’ is “insufficient to result in a likelihood of confusion”, even though the marks cover identical goods.

“The signs are clearly and memorably differentiated,” the court concluded.

Dismissing the appeal, the General Court ordered Chefaro to pay the costs of the EUIPO and L’Occitane.

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