Nivea saves its skin in likelihood of confusion challenge

In November 2023, the EU General Court considered the likelihood of confusion between the trademark application for 'Nivea Skin-Identical Q10' and the existing 'SkinIdent' registration, as Florence Chapin explains.

The decision of the General Court in Case T-665/22 (8 November 2023) considered the trademark application for 'Nivea Skin-Identical Q10' following the challenge by the owner of the existing 'SkinIdent' registration based on its earlier rights, finding in short:

• The element 'Nivea' occupied a dominant position in the mark applied for; and
• The element ‘SkinIdent’ in the earlier marks, taken as a whole, was a fanciful term with no specific meaning in the minds of the relevant consumers. 

Background to the likelihood of confusion decision

In March 2019, Beiersdorf AG applied to register the EU trademark Nivea Skin-Identical Q10 for the following goods in Class 3: Non-medicated preparations and cosmetics for body care and beauty care. SkinIdent AG filed an opposition against the application in August 2019 based on its earlier rights in SkinIdent; in particular: the German word mark SkinIdent (No 30317555), registered on 16 May 2003 for 'cosmetics' in Class 3; the international trademark SkinIdent (No 812547), registered on 28 August 2003 and designating several EU member states, also covering 'cosmetic products' in Class 3; and the corporate name SkinIdent used in the course of trade in Germany for the development and distribution of 'beauty care products' and 'cosmetic products', 'consumer/luxury goods' in the field of 'beauty care products' and 'cosmetic products'. 

The opposition was rejected on 1 July 2021 and SkinIdent appealed to the European IP Office (EUIPO), whose Fifth Board of Appeal rejected the appeal on 18 August 2022, finding in particular that there was no likelihood of confusion between the marks, despite the identity of the goods in question and the normal intrinsic distinctiveness of the earlier rights for a small proportion of the relevant public. 

The Board of Appeal also considered that there was no likelihood of confusion between the applicant's corporate name and the contested trademark application, as their differences were sufficient to exclude the risk of disrupting the earlier right's function of identification or distinction. The applicant appealed to the EU General Court. 

EU General Court issues likelihood of confusion decision

The General Court discussed the breaking down of the signs in the context of their comparison to establish whether or not there was a likelihood of confusion.

First, the applicant argued that the word element ‘skin-identical’ had an autonomous distinctive position in the mark applied for, so that the element ‘Nivea’, which was "incontestably renowned", and the element ‘Q10’, which was descriptive of the goods designated by the mark, should not be taken into account to assess the likelihood of confusion between the conflicting marks. The hyphen between the elements ‘skin’ and ‘identical’ in the mark applied for had no distinctive character and, therefore, could not accentuate the visual and phonetic differences with the earlier marks. 

The applicant further argued that, for the relevant non-English-speaking part of the public in Greece, Cyprus or Hungary, and probably also in Finland, the element ‘identical’ would appear as a fanciful term. However, the Board of Appeal did not take this part of the public into account in its examination. It had thus carried out an incomplete examination and committed an error of assessment by concluding that a large part of the relevant public would understand the meaning of the element ‘identical’ as referring to 'something completely identical'. 

The court found that the assessment of the similarity between two trademarks cannot be limited, contrary to the applicant's suggestion, to taking into consideration only one component of a complex trademark and comparing it with another trademark. Only if all the other components of the trademark are negligible can the assessment of similarity be made based on the dominant element alone. In any case, the element ‘skin-identical’ was clearly distinguishable from the element ‘skinident’ due to the addition of a hyphen and the ‘ical’ ending. 

The element ‘Nivea’ was also significant due to its position at the beginning of the contested application and dominated the overall impression of the mark. Further, the presence of the hyphen could not be considered insignificant, since this punctuation mark would lead the relevant public to break down the verbal element ‘skin-identical’ into two terms that are clearly distinct from one another, irrespective of the public’s understanding of these two terms. 

Similarly, the court found that the applicant's prior rights consisted of the single element ‘SkinIdent’ which, taken as a whole, was a fanciful term with no specific meaning in the minds of the relevant public – even for that part of that public which would understand the meaning of the word ‘skin’ within the context of a homogeneous whole. The word element ‘skin-identical’ in the contested application was made up of two distinct terms, each of which had a clear and specific meaning in the minds of a large part of the relevant public. 

Given the above, the court considered that the mark applied for could not be perceived in any other way than as a whole, independently of the public's understanding of each of its components. The court thus concluded that the Board of Appeal had rightly noted that the element ‘Nivea’ occupied a dominant position in the mark applied for, and that the earlier trademarks formed a homogeneous whole in which it was impossible to isolate the elements ‘skin’ and ‘ident’, in contrast with the element ‘skin-identical’ in the contested application – which, moreover, was easy to understand and had a low degree of distinctiveness concerning the goods covered. The appeal was thus dismissed. 

This article first appeared in WTR Daily, part of World Trademark Review, in November 2023. For further information, please go to www.worldtrademarkreview.com.

Florence Chapin is a French and European Trademark Attorney based at Novagraaf in Bordeaux.