EU General Court says risk of similarity between cosmetics and pharmaceuticals in trade mark cases

Skincare products are increasingly blurring the line between cosmetics and pharmaceuticals. Cosmetic products often serve the same purpose as pharmaceutical treatments and can have the same form and ingredients (albeit in different quantities).

The EU General Court has recognised this trend in a decision where it concluded that cosmetic skincare products can be found to be similar to pharmaceutical skincare products even though cosmetics are not pharmaceutical in nature.

This decision serves as an important reminder for businesses operating in this space. Brand owners must ensure that their classes and specifications are appropriately selected and drafted to ensure sufficient protection but also consider the inadvertent overlap with other classes. Given the blurred lines between cosmetics and pharmaceuticals, broader clearance searches should be conducted to ensure both classes 3 and 5 are included to better assess the risk.

Dispute background

The dispute arose in relation to a trade mark application made to the EU Intellectual Property Office (EUIPO) by Creaticon, a Croatian company offering a range of skincare products. The company applied to register a trade mark for a logo, which contained its brand "Skintegra", for a range of cosmetic goods in class 3.

Creaticon's application was opposed by medical equipment manufacturer Paul Hartmann on the basis of its earlier German trade mark and EU trade mark, word marks "Skintegrity" for goods in, among others, class 5.

The EUIPO's Opposition Division upheld the opposition in part, refusing to register the mark in relation to some goods in class 3. This decision was upheld (and slightly extended) by the Board of Appeal. It was then appealed to the General Court.

General Court decision

In dismissing Creaticon's appeal, the General Court approved the reasoning set out by the Board of Appeal. In particular, the court held that the goods in class 3 applied for were similar to the "pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene" and "pharmaceutical preparations for body care, for skin protection and cleansing" in class 5 covered by the earlier German mark.

The court dismissed the applicant's arguments that the goods were dissimilar because those in class 3 covered non-pharmaceutical cosmetic products and those in class 5 covered medical and pharmaceutical products. Instead, it concluded that these goods are similar for a number of reasons:

• The goods are both used for the same purpose. Regardless whether or not they are medicated, both products protect and cleanse the skin and seek to improve its physical appearance.
• Both sets of goods are likely to have similar ingredients and may have the same consistency, for example in the form of a cream or a gel.
• The goods in both categories are sold via the same distribution channels; for example, in pharmacies.
• The goods are complementary – the non-medical cleansing and moisturising products covered by the mark applied for would be used in conjunction with a pharmaceutical-grade treatment. This creates such a close connection that consumers may think the goods are from the same undertaking.

Osborne Clarke comment

This decision highlights the risks posed to businesses of goods being considered similar even if they fall into difference Nice classes. More specifically, it signals the potential of a blurred line between certain cosmetic and pharmaceutical goods.

Companies operating in these sectors should be cognisant of this potential overlap. Brand owners should be clear on the purpose of their products and specifications and classes should be carefully drafted and selected to afford appropriate protection. When seeking to obtain trade mark protection for either a cosmetic or pharmaceutical product, broader clearance searches covering both classes 3 and 5 should be conducted to minimise risk of successful opposition proceedings as some goods will be considered similar across the classes.

This Insight was produced with the assistance of Sam Bluteau-Tait, Trainee Solicitor