All that glitters is not gold: cosmetics and pharmaceuticals: Lessons from the ROSEGOLD Paris v. ROSEGOLD Trademark Opposition

ROSEGOLD (THAILAND) COMPANY LIMITED (the “Applicant”) sought a UK registration for

in Class 3 (cosmetics) and Class 5 (pharmaceuticals) (the “Application”). Kyrian LEGHBALI (the “Opponent”) opposed relying on likelihood of confusion and their earlier mark  registered in Class 3.  For the large part the goods were found similar and the opposition was partially upheld.

This decision highlights the importance of both cosmetic and pharmaceutical brand owners carrying out pre-clearance which covers both classes and categories of goods. Pleasingly a number of providers (CompuMark, Corsearch) already carry out an evaluation which cover both as similar – but it is always worth checking.

Similarity of marks

The Registrar found that the average consumer for the goods in question comprised both the general public and professional users, such as beauticians, who would pay medium level attention during the purchasing process.

In assessing the marks’ similarity, the Registrar found that as both marks contain the dominant word “ROSEGOLD”, they have an above medium visual similarity and a medium to high degree aural similarity. The marks were also found to be conceptually similar to a medium degree, as they both refer to the combination of gold and copper to create a rose colour. The presence of the word "Paris" in the Opponent's mark held less significance in the analysis as it was decided that it is likely to be overlooked by the average consumer.

Lastly, the Opponent's mark "ROSEGOLD Paris" was deemed to be distinctive to a medium degree, as the judge found that "Paris" alludes to the location or the quality of the goods, whilst "ROSEGOLD" is neither allusive nor descriptive of the goods, rendering the mark distinctive.

Therefore, the Registrar concluded that, even where the goods are similar to between a low and medium degree, there will be direct and indirect confusion. This is because both marks consist of the same word, and the average consumer would see the use of ‘Paris’ and the abstract silver chrome rose device and stylisation in the Applicant’s mark as alternative marks being used by the same brand.

Comparison of goods

To assess the similarity of the parties’ goods, the Registrar considered the following:

(a) uses of the respective goods or services;

(b) users of the respective goods or services;

(c) nature of the goods or acts of service;

(d) respective trade channels through which the goods or services reach the market;

(e) In the case of self-serve consumer items, where in practice they are respectively found, in particular, whether they are or are likely to be found on the same or different shelves; and

(f) whether the goods are in competition with each other or complimentary.

Comment

In applying the conditions above, it was found that the opposition failed for some of the Class 5 goods namely “Nutritional supplement meal replacement bars for boosting energy”; “Alcohol for pharmaceutical purposes”, and “Medicinal alcohol”.

For the remaining goods the Registrar made a number of points including:

“Moisturising creams [pharmaceuticals]” in class 5 v “moisturising creams” in class 3:

1. no overlap in trade channels between cosmetics and pharmaceuticals; and
2. that cosmetics and pharmaceuticals are not complementary but may be in competition as the user will choose one cream over the other.

Taking both of the points above into account, the goods were similar to a medium degree.

In comparing goods for the wellbeing of the skin (supplements and cosmetics) the Registrar said as follows:

1. some of the goods will be used for medical purposes, such as to help with acne, hyperpigmentation or eczema, and some of the goods will be used for non-medical purposes, such as to help with fine lines and wrinkles;
2. I consider that this correlates with my own, and the average consumers, personal knowledge and experience, that the same undertaking can produce and sell skin care and supplements, because its focus is to improve user’s skin.

Having considered the above the Registrar concluded that “.. to my mind, it is more likely that they would be used together rather than as an alternative.”

In commenting on the average consumer, the Registrar noted that the average consumer would include members of the public through to professional users such as beauticians. The price of goods would vary – with goods being purchased relatively frequently. The average consumer would consider cost, quality, aesthetics, scent and purpose. The goods would be chosen from the shelves of a (beauty) retail outlet or online equivalent. Beauty goods were often on display in stores with testers which might give them stand out recognition dependant on the location within a specific store. Visual considerations were therefore likely to dominate the selection process.

It’s pleasing to see recognition from the Registrar of a changing market and use of real life experience to match that of the average consumer. Most of us now have a whole protocol established for wellness of which skincare is just one part - the trilogy of wellness encompassing supplements, cosmetics and the related treatments and devices (whether that’s a jade roller or a laser).

The process of purchase for these products is one of the few sectors where traditional in shop purchase (or at least in shop viewing or testing!) still plays an important role. No-one wants to purchase a product they don’t like the smell of or which has a strange texture. The opportunity to test a product in store and ensure you don’t have an allergic reaction or that it sits well under make-up is another reason why beauty will continue to hold up the high street.

Similarity of goods table:

Opponent’s SPECIFICATION for	Applicant’s SPECIFICATION for	Comments
Class 3: Make-up powder, cosmetics, make-up, mascara, eyebrow pencils, eye pencils, eye pencils, skin whitening creams, extracts of flowers, rose oil, skin care preparations and essences for skin care	Class 3: Make-up powder, cosmetics, make-up, mascara, eyebrow pencils, eye pencils, eye pencils, skin whitening creams, extracts of flowers, rose oil, skin care preparations and essences for skin care	Identical
Class 3: Creamy foundation	Class 3: Cream foundation	Identical
Class 3: Perfumes	Class 3: Perfume	Identical
Class 3: Sunscreens	Class 3: Sun block [cosmetics]	Identical
Class 3: Cosmetics	Class 3: Lipsticks, cosmetic creams, collagen preparations for cosmetic purposes, lip pencils, cosmetic pencils, cosmetic preparations for skin care, eyeshadow, pencils for cosmetic use, eyeshadow, foundation make-up, foundations, make-up base, serums for cosmetic purposes and facial masks [cosmetic]	Identical The Registrar based this decision on the Meric case, where it was decided that the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by trade mark application or where the goods designated by the trade mark application are included in a more general category designated by the earlier mark.[1]
Class 3: Moisturising creams	Class 5: Moisturising creams [pharmaceutical]	Similar to a medium degree It was found that, although the Applicant’s goods are used for medical purposes and there would be no overlap in trade channels, but there is an overlap in nature, method of use, user, as all of the goods are for skin moisture. Therefore, there could be competition to a certain extent.
Class 3: Skin care preparations, cosmetic preparations for skin care, and cosmetics	Class 5: Collagen for medical purposes, food supplements for medical purposes, dietary and nutritional supplements, dietary supplemental drinks, dietetic preparations adapted for medical use and nutritional supplements	Similar to between a low and medium degree Although it was found that some of the goods will be used for medical purposes (e.g., acne, hyperpigmentation etc.), there is an overlap in users and purpose, as all the goods are used to improve the skin’s appearance or wellbeing. There is an overlap in trade channels, and a degree of complementarity. The judge did not find an overlap in nature and method of use, but found that there could be a degree of competition. Overall, the judge found that the goods would more likely be used together rather than as alternatives.
Class 3: Skin care preparations and cosmetics and cosmetic preparations	Class 5: Nutritional supplement meal replacement bars for boosting energy	Dissimilar
Any of the Class 3 goods	Class 5: Alcohol for pharmaceutical purposes, and medicinal alcohol	Dissimilar

 Article co-authored by Louiza Georghiou, a trainee at CMS.

[1] Gérard Meric v Office for Harmonisation in the Internal Market (OHIM), Case T- 133/05