Cross-litigation on BIODERMA: different perspectives in national and Community proceedings

BIODERMA: products for almost all sorts
of skin -- but not furry skin ...

Earlier this week, an interesting cross-litigation saga involving the French BIODERMA marks bounced around the social networks: a trade mark battle which ended with the Court of Appeal of Rouen’s judgment, released in September last year, for which I send my warmest katpat to our former guest Kat Marie-Andrée Weiss. This dispute caught my attention since the competent Community and national authorities reached opposite conclusions in assessing the distinctive character of the BIODERMA mark, given different relevant publics and, to some extent, the different goods and services concerned.

Factual background

The parties involved in the French and Community proceedings were the French company Laboratoire Bioderma and a competitors, Cabinet Continental.

Bioderma owned several trade mark registrations for the Bioderma sign, including the following word marks:

-          a 1963 International Registration designating France for “cosmetics” in class 3;

-          a 1986 French mark for “soaps, essential oils, cosmetics” in class 3, giving seniority to

-          a Community trade mark (CTM) registered in 2007 for numerous goods and services in classes 3, 5 and 44.

In 1995 Bioderma brought an action for trade mark infringement and unfair competition in France against Cabinet Continental, alleging unlawful use of the BIODERMA  mark. As in law school problems, Cabinet Continental filed an invalidity counterclaim, seeking cancellation of the French and the International Registrations for lack of distinctiveness. In 2003, pending the cancellation proceedings, Bioderma filed the CTM application which received its registration in 2007.

In 2005, the District Court of Rouen upheld Cabinet Continental’s plea in law: BIODERMA lacked distinctive character, being deriving from a neologism formed from the word elements “bio” (abbreviation of “biology” or “biologic”) and ”derma” (abbreviation of ”dermatologic” or ”dermatology”). The Court concluded that the mark as a whole evoked “the technique of science for the skin treatment”. Bioderma predictably appealed the District Court’s decision.  In December 2007, Cabinet Continental secured the cancellation of the BIODERMA CTM following a partial invalidity action before OHIM, based on the absolute grounds under Article 7 of Regulation 209/2007. Following communication with the parties, the Court of Appeal of Rouen decided to stay the proceedings pending the outcome of the CTM dispute which, following Bioderma’s appeal to the Board of Appeal, reached the General Court in Case T-427/11 (judgment, available only in French).

General Court’s assessment of BIODERMA’s distinctiveness

It is common ground that the descriptiveness of a mark must be assessed in relation to the perception of the relevant public and with reference to the goods and services for which protection is sought. The General Court accordingly held that the Board of Appeal had correctly taken into account the perception of the Greek and Cypriot public of the BIODERMA sign when assessing its descriptiveness. It found that the word “bioderma” was a neologism or the result of the combination of the Greek word elements “bio” (life) and “derma” (skin), whose meanings were well understood by the Greek and Cypriot publics, even though the mark was written in Latin characters.

Thus, recalling that it is sufficient that a sign be descriptive in a part of the Community and in any of the official languages for its registration to be refused or cancelled (Article 7.2 of Regulation 207/2009), the Court emphasized that a mark is descriptive according to Article 7.1(c) when, from the perspective of the relevant public, it designates either directly or by reference an essential feature of the goods or services the mark covers.

BIODERMA was registered not only for goods in class 3, under the umbrella of cosmetics, but also for pharmaceutical products, implying that the relevant public comprised both professionals and end-users. This being so, the Court applied the settled case-law, stating that for neologisms and word marks comprising a combination of word elements, descriptive character must be assessed in relation to the neologism or the word mark as a whole, since it is not sufficient to establish the descriptiveness of each element. Likewise, if each word element of the mark were descriptive of the products' and services' essential features, the neologism would be descriptive too — unless it could create a sufficiently different overall impression to that produced by the simple combination of its elements in relation to the relevant goods and services.

That said, the Court held that “derma” was an element often used in adjectives describing the texture, colour or other characteristics of the skin and that “bio” could either indicate life, living creatures and their study or, in compliance with current commercial practice, could be evocative of products and services related to environmental sustainability, ecological production and the use of natural resources.

The Court concluded that BIODERMA would be perceived by the relevant public as descriptive of the natural origin of products for the skin and of related services of natural care. This neologism could not create a sufficient disruptive impression from that provided by the combination of its elements, given the total respect of traditional lexical rules in the choice of the prefix “bio-“ and the suffix “-derma” which composed the sign.

Bioderma’s argument that the neologism was not present in Greek dictionaries was completely disregarded, and the General Court appreciated the descriptiveness of the BIODERMA mark in relation to all goods and services for which partial invalidity had been claimed except for “dietetic substances for medical use” in class 5. In respect to these latter goods, the Court undertook an examination of the absolute grounds provided by Article 7.1(b), namely lack of distinctive character. It concluded that the BIODERMA mark was distinctive and could serve its essential function of origin identifier in that the DERMA element conveyed an unusual impression in relation to dietetic substances for medical use.

Court of Appeal of Rouen’s assessment of BIODERMA’s distinctiveness

After the General Court gave judgment in Case T-427/11, the Court of Appeal of Rouen continued the French proceedings, pronouncing on the distinctiveness of the national BIODERMA mark and an international registration designating France.   Unlike the CTM, the distinctiveness of these marks had to be assessed with reference to the perception of the average French consumer at the time of filing of the marks.

It was apparent from the outset that circumstances had changed and that, since those French marks were filed back in 1963 and 1986, the Court of Appeal first identified the French trade mark law of 1964 as the legal text applicable to the dispute.

Article 3 of that law provided a narrow definition of the lack of distinctiveness with reference to descriptive marks, these being signs “exclusively composed of terms indicating the essential quality of a product or service or the composition of a product”. This wording left less room to invalidate a mark than the corresponding provision of the Community law on descriptive marks:

“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”

Thus the French Court held that “bio” could only be found when it was included in other word (i.e. “biology”) in the dictionaries of the time and it was defined as a prefix deriving from Greek and meaning life. It added that, at the relevant points in time, “bio” was not perceived as indicating products manufactured with natural resources or in respect of environmental sustainability. The Court concluded that, when the BIODERMA marks were applied for, the “bio” prefix did not designate the use of the products identified by those marks or their essential qualities.

In regard to the “-derma” element the Court of Appeal recognised that, although that suffix was usually deployed within other words, its definition referred to the skin and was therefore evocative of skin products.

In the end, the Court of Rouen affirmed the distinctiveness of the BIODERMA mark and dismissed the cancellation action, in that the combination of the “bio” and “derma” elements was sufficient for to enable BIODERMA to be considered a distinctive sign.

To the extent that cosmetic products are usually made of plant or organic ingredients, it is worth mentioning Regulation 834/2007 on organic production and labelling of organic products, which is aimed at protecting consumers against misleading advertisement of non-biological products. Should cosmetics which are intended to be BIO-logical not be subject to similar labelling rules?