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The importance of the proof of use in the recognition of the risk of confusion

  • The EUIPO found that there was a likelihood of confusion between BIOVENE BARCELONA and the earlier mark BIORENE for certain goods in Class 3

  • The court dismissed the argument that, because the evidence of use referred only to some of the goods, such evidence was thus insufficient

  • In order to assess whether the goods at issue are similar, the particular way in which these goods are marketed is irrelevant

On 30 June 2021 the General Court issued its decision in Biovene Cosmetics v European Union Intellectual Property Office (EUIPO) (Case T227/20).


Background

Biovene Cosmetics filed an application for the registration of the EU trademark BIOVENE BARCELONA (word and device) in Class 3, and more specifically for "cosmetics":

Eugène Perma France filed an opposition on the basis of its earlier EU trademark BIORENE, which covers goods in Class 3. In the course of the proceedings, the applicant requested that the opponent provide evidence of use of its trademark for the goods on which the opposition was based. Taking into account the evidence filed, as well as the similarities between the signs and the goods claimed, the Opposition Division of the EUIPO found that there was a likelihood of confusion and rejected the trademark application. The applicant appealed, but the decision was upheld by the Board of Appeal. An appeal was then filed with the General Court.


Decision

In the context of the action, two main points were put forward.


Assessment of the genuine use of the goods covered by the earlier trademark.


First of all, the applicant argued that the evidence of use provided by the opponent was not sufficient. Indeed, the evidence of use concerned only part of the goods, and not the entire description of the goods covered by the earlier trademark in Class 3. Thus, according to the applicant, the Board of Appeal should have reviewed the assessment made by the Opposition Division.


However, the court recalled that the parties cannot change the subject matter of a dispute during the course of the proceedings. Thus, in its review, the EUIPO is bound to limit itself to the reasons given by the parties. Here, the applicant had not invoked this error of assessment in its appeal. Therefore, the Board of Appeal did not have to rule on this point.


Further, in its brief the applicant had noted that genuine use had been demonstrated for the following products: “preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes”. Thus, the Board of Appeal was right when deciding to limit its assessment of the likelihood of confusion to these products. It was not necessary to assess the genuine use of the trademark for the other goods covered by the wording in Class 3, the likelihood of confusion having been established on the basis of the aforementioned goods alone.


Consequently, this ground of appeal was rejected by the court.


Assessment of the likelihood of confusion between the signs


As a second step, the court proceeded to carry out a new analysis of the likelihood of confusion between the signs. For this purpose, it recalled that the likelihood of confusion must be assessed globally and based on several factors, in particular the similarity of the signs and the similarity of the goods.


With regard to the goods at issue, the court noted that the assessment of the similarity must be based on a strict analysis of the wording used in the description of the goods, and not on the particular way in which these goods are marketed. It thus rejected the applicant's arguments. Therefore, insofar as “preparations for the hygiene, care and beauty of the hair and scalp, not for medical purposes”belong to the general category of “cosmetics”, which are covered by the contested trademark application, these goods could be considered as identical.


With regard to the similarities between the signs, the court noted that BIOVENE and BIORENE shared the same number of letters, with the letters ‘b’, ‘i’, ‘o’ and ‘e’, ‘n’, ‘e’ being present identically and in the same position in both signs, with the exception of the central letters ‘v’ and ‘r’. As a result, the sign had visual and phonetic similarities. In addition, contrary to what the applicant claimed, the presence of the element ‘Barcelona’ in a

lower position and smaller font would not attract the attention of the relevant consumer - namely, one with an average degree of attention - for cosmetics. The term ‘Barcelona’ would be considered as an indication of the place of origin of the products and was therefore not decisive in the analysis of the risk of confusion between the signs.


Finally, from a conceptual point of view, since the signs BIOVENE and BIORENE have no meaning, it was not possible to differentiate them in this respect.


As a consequence, the court confirmed the previous decisions, recognised the existence of a risk of confusion and rejected the trademark application.


Comment


There is nothing revolutionary about this decision. The court recalled the fundamental principles of the ‘likelihood of confusion’ analysis, as well as the scope of the EUIPO's jurisdiction. Further, it pointed out that, in order to assess the genuine use of a trademark in the European Union, it is not necessary to prove use for all the goods covered by the description.


Indeed, if use is proven for part of the goods, which are considered similar to those claimed by the opposed trademark application, this will be sufficient to validate the use of the earlier trademark. This shows the importance of determining the basis of any opposition and, in particular, the goods to be relied upon, especially when a mark is subject to the use

requirement.

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