No rose without a thorn: L’Oréal could not prove fame of its LANCÔME rose device

Many famous brands do not only use word marks but also figurative marks. The question often is: How famous is the figurative mark on its own? This can be challenging to prove as the following case concerning LANCÔME’s rose device shows.

Background

On 21 April 2022, Guangzhou Ya Ti Ao Jia Cosmetics Co., Ltd filed for registration of EU trade mark no. 018689867

covering various cosmetic products in Nice class 3.

L’Oréal filed an opposition on the basis of four EU trade marks:

· EU trade mark no. 002494557 (‘earlier mark 1’):

· EU trade mark no. 017972324 (‘earlier mark 2’):

· EU trade mark no. 017972718 (‘earlier mark 3’):

· EU trade mark no. 016872971 (‘earlier mark 4’):

All earlier trade marks were registered in class 3 for various cosmetic products.

L’Oréal invoked a likelihood of confusion (Art. 8(1)(b) EUTMR) and detriment to the reputation of its trade marks (Art. 8(5) EUTMR). The Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) rejected the Opposition. L’Oréal appealed to the Board of Appeal of the EUIPO (‘BoA’).

The Board of Appeal’s decision

The BoA dismissed the appeal (case R1839/2023-5).

The relevant public was held to be that of the EU with an average level of attention. The goods were considered to be identical or similar.

Similarity of the signs

The BoA limited its detailed assessment of the similarity of the signs to the earlier marks 1 and 2 as they were most similar to the contested application:

The word element ‘ARTÍSCARE’ in the contested trade mark was considered to be more dominant due to its size and to have an average degree of distinctiveness because it had no meaning.

The BoA found that earlier mark 1 consisted of a single device, which did not have distinctive or dominant elements.

In earlier mark 2, the word ‘LANCÔME’ was meaningless and therefore distinctive. The words ‘ROSE JELLY MASK’ were deemed to be non-distinctive or weakly distinctive for the English-speaking public.

The BoA found the common element of a rose to be weakly distinctive, as it would be perceived as a reference to the smell, the colour or an ingredient of the relevant goods. Rose blossom scent is used frequently as a smell for perfumes, cosmetics and beauty care products. Rose is also a shade of colour, which some cosmetics and beauty care products might have.

Further, the BoA applied the principle that words usually have a stronger impact on consumers than figurative elements.

Due to the weak distinctiveness of the rose devices and the different words, the BoA found that the contested application was visually similar to a low degree to earlier mark 1 and to a very low degree to earlier mark 2.

An aural comparison was not possible with respect to earlier mark 1 as it did not contain verbal elements. Earlier mark 2 and the contested application were deemed to be aurally dissimilar because they had no word in common.

Conceptually, both marks would be associated with the concept of a rose. Due to the weakly distinctive character of this concept for the goods, the BoA found a low degree of conceptual similarity to exist.

Distinctiveness/reputation

The decisive question was whether L’Oréal’s rose device enjoyed an increased degree of distinctiveness on account of its intensive use.

L’Oréal submitted, inter alia, the following items of evidence:

• Several rankings of the most valuable brands in the world for various years, showing that ‘Lancôme’ was in the top 100 overall and among the top 10 in the cosmetics sector.

The BoA did not find this convincing because the rankings depicted word and figurative marks for several brands, e.g. as follows,

but only showed the word mark ‘Lancôme’ and not the rose device.

The BoA also excluded that the rose device benefited from the reputation of the word mark because of the former’s weak distinctiveness.

• Several awards won by L’Oréal or ‘Lancôme’, which, however, did not show the rose device.

• A declaration of a legal counsel from the L’Oréal group with information on sales was disregarded by the BoA because it did not make reference to the earlier mark 1 and the information was not broken down by the different products sold with the rose device.

• Online articles, articles from magazines and Wikipedia were rejected because they did not show the rose either but only referred to L’Oréal or ‘Lancôme’. Additionally, the articles did not describe the rose device as a trade mark belonging to L’Oréal.

• Articles reporting that the rose has been an emblematic symbol of ‘Lancôme’ showed different representations of roses, such as:

They were not considered to be sufficient to establish enhanced distinctiveness of the earlier mark 1 as they either contain the word ‘Lancôme’ or show different rose symbols.

• Online searches for ‘LOGO ROSA LANCOME’ and similar terms were disregarded because the search for ‘LANCOME’ limited the results to those from L’Oréal.

The BoA concluded that the evidence showed some use of the earlier mark 1 but was not sufficient to establish an increased level of distinctiveness or reputation.

The BoA applied similar considerations to earlier mark 2. Most of the evidence referred to ‘LANCÔME’ and it was not clear whether that word was always used together with the rose device, or to which extent that combination was present on the market.

Likelihood of confusion

Turning to the determination of the likelihood of confusion, the BoA recalled that overprotection of inherently weak marks and weak elements of marks should be avoided. Excessive protection of signs with a weak distinctive character could adversely affect the objectives pursued by trade mark law, if the mere presence of weak elements led to a finding of a likelihood of confusion.

For this reason, the BoA found that a likelihood of confusion cannot be based on the rose device as it is weakly distinctive or even non-distinctive, also taking into account the distinctive word element ‘ArtÍscare’ in the contested application. A similar reasoning was applied to the assessment of the likelihood of confusion vis-à-vis earlier marks 3 and 4.

No series of marks

L’Oréal relied on a series (also called a family) of trade marks.

The BoA accepted that several earlier marks can be regarded as a single series, which may give rise to a likelihood of confusion by creating the possibility of association between the contested trade mark and the series. This requires:

(1) Proof of use of at least three marks belonging to a series of marks.

(2) The contested trade mark need not only be similar to the series, but must also display characteristics capable of associating it with the series. This association must lead the public to believe that the contested trade mark is also part of the series.

Due to the weak distinctive character of the rose device and the differing words ‘ARTÍSCARE’ in the contested trade mark and ‘LANCÔME’ in earlier marks 2 and 3, the BoA found that the characteristics of the contested sign are not capable of associating it with any of the four earlier marks.

Trade mark with a reputation

While the BoA found that the word ‘LANCÔME’ enjoys a certain reputation, it did not deem the evidence submitted by L’Oréal to be sufficient to establish a reputation of any of the four earlier trade marks.

Even accepting a very low degree of reputation of the earlier marks 2 and 3 (which contain the word ‘LANCÔME’), the BoA excluded that the public would establish a link between the marks because of the weak distinctiveness of the rose device and the lack of a likelihood of confusion.

For the sake of completeness, the BoA explained that the contested application did not cause detriment to earlier marks 2 and 3. The low degree of (a presumed) reputation, the low degree of inherent distinctiveness of the rose device, the (very) low degree of similarity between the signs and the absence of a likelihood of confusion spoke against unfair advantage being taken of, or detriment caused to the distinctive character or repute of the earlier marks.

Comment

The decision shows how difficult it can be to establish an increased level of distinctiveness of a descriptive sign. Even using it in combination with a well-known trade mark is not sufficient.

The most important piece of evidence to convince the EUIPO of increased distinctiveness might be a properly conducted survey concerning the public’s perception of the sign as a source indicator. It would be sufficient to conduct the survey in one Member State of the EU (e.g. France) because an opposition will be successful if a likelihood of confusion exists in a (non-insignificant) part of the EU, such as a single Member State. Likewise, for an EU trade mark to enjoy a reputation in the entire EU, it is enough to establish the reputation in a substantial part, which can also mean a single Member State (see the Iron & Smith judgment, IPKat here).