Елби 70 АД (applicant), represented by Ip Consulting Ltd.,(professional representative) filed a request for a declaration of invalidity against European Union trade mark No 1 755 511 COCOCARE (word mark) (the EUTM), filed on 13/07/2000 and registered on 30/04/2002.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested mark is composed of the basic English words ‘COCO’ (meaning ‘coconut’) and ‘CARE’ (meaning ‘the provision of what is necessary for the health, welfare, maintenance and protection of someone or something’) and that the mark as a whole has a clear meaning, namely ‘care with coconut’ or ‘coconut care’ and is therefore descriptive and non-distinctive in relation to the relevant goods. Both words are according to the applicant widely used in the cosmetic sector and are well known to most of the EU public (i.e. in relation to the word CARE:skin care, eye care, beauty care, lip care, etc.). The applicant also claims that the contested mark falls under the provision of Article 7(1)(d) EUTMR which excludes from registration signs that consist exclusively of words or indications that have become customary in the current language or in the bona fide and established practices of the trade at the relevant point in time. Finally, the applicant also argues that the word combination COCOCARE used for cosmetic products which do not have COCO or COCOS associated ingredients is deceptive with regards to the characteristics of the products and therefore falls under the provision of Article 7(1)(g) EUTMR.
The EUTM proprietor argues the contested mark COCOCARE was inherently distinctive and not deceptive in relation to the goods in Classes 3, 4 and 5 at the filing date of the contested mark. The proprietor further claims the trade mark is imaginative and coined in a way that can easily be remembered thus endowing it with distinctive character as an indication of origin in relation to the registered goods.
ABSOLUTE GROUNDS FOR INVALIDITY
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.
Article 7(1)(c) EUTMR prohibits the registration of ‘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’.
The contested mark is composed of English words. According to the excerpts filed by the applicant, the word ‘COCO’ refers to ‘a coconut’ and the word ‘CARE’ means ‘the provision of what is necessary for the health, welfare, maintenance, and protection of someone or something’. The meaning of the word ‘coco’ has been disputed by the proprietor according to which ‘coco’ refers to ‘chocolate’ in English. As to the word ‘CARE’, one of the possible meanings is ‘responsibility for or attention to health, well-being and safety’.
The two words comprising the contested trade mark will be perceived as indications of the nature of the goods at issue (the goods contain coconut as an ingredient) and of the purpose of the goods (they are designed for keeping the skin, hair, in a good state, condition). This is particularly logical when applied to the goods in Class 3, which are cosmetic products especially aimed at the care of the human skin and hair. Consumers would immediately perceive those products as containing coconut known for its potential benefits for skin.
Article 7(1)(g) EUTMR prohibits the registration of trade marks that could deceive the public with regards to the nature, quality or geographical origin of the goods or services.
The word combination COCOCARE used for cosmetic products which do not have COCO or COCOS associated ingredients is deceptive with regards to the characteristics of the products and therefore falls under the provision of Article 7(1)(g) EUTMR. The trade mark should be restricted only to products from the relevant categories which have coco ingredients.
The contested mark has already been found to be descriptive in relation to the goods in Class 3.
The EUTM proprietor claims that the mark has become distinctive through its long-term and intensive use.
The contested mark was found to be descriptive and non-distinctive pursuant to Article 7(1)(c) and (b) EUTMR in relation to the following goods at the time of its filing:
Class 3: Skin care products, namely, skin cleanser, skin gel, skin cream, skin lotion, skin moisturizers, skin oil, lip balm, antioxidant skin gel, skin conditioner composed of vegetable oils, cold cream, shaving lotion, face and body scrub, peel off facial mask, liquid skin soap and bar soap; sun screen cream and lotion; hair care products, namely shampoo, hair conditioner.
Class 5: Pharmaceutical, veterinary and sanitary preparations; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants
Consequently, the EUTM proprietor has not demonstrated that the EUTM had acquired distinctive character, either before its filing date or before the filing date of the application for invalidity, in relation to those goods.
The contested trademark is descriptive and has no distinctive character.
Therefore, the contested trade mark must be declared invalid for already mentioned contested goods.