A blurred line between products means skin care products can be considered similar in classes 3 and 5
Skincare products are increasingly blurring the line between cosmetics and pharmaceuticals. Cosmetic products often serve the same purpose as pharmaceutical treatments and may have the same form and ingredients (although in different amounts).
The General Court of the EU recognized this trend in a decision in which it concluded that cosmetic skincare products can be considered similar to pharmaceutical skincare products even if the cosmetics are not pharmaceutical in nature. .
This decision is an important reminder for companies operating in this space. Trademark owners should ensure that their classes and specifications are properly selected and drafted to ensure sufficient protection, but also to account for unintended overlap with other classes. Given the blurred lines between cosmetics and pharmaceuticals, broader clearance searches should be conducted to ensure that classes 3 and 5 are included to better assess the risk.
Context of the dispute
The dispute arose out of a trademark application filed with the EU Intellectual Property Office (EUIPO) by Creaticon, a Croatian company offering a range of skin care products. The company filed a trademark application for a logo, which contained its trademark “Skintegra”, for a range of Class 3 cosmetic products.
Medical equipment manufacturer Paul Hartmann opposed Creaticon’s application on the basis of its earlier German trade mark and the EU trade mark, the word marks “Skintegrity” for goods belonging, inter alia, to the class 5.
The Opposition Division of EUIPO partially upheld the opposition by refusing to register the mark for certain class 3 goods. This decision was upheld (and slightly extended) by the Board of Appeal. It was then appealed to the Tribunal.
By dismissing Creaticon’s appeal, the General Court approved the reasoning set out by the Board of Appeal. In particular, the court considered that the products of class 3 applied for were similar to “pharmaceutical preparations for the protection and cleansing of the skin for personal hygiene purposes” and “pharmaceutical preparations for the care of the body, for the protection and cleansing of the skin” of class 5 covered by the earlier German trade mark.
The court rejected the claimant’s arguments that the goods were dissimilar because those in class 3 covered non-pharmaceutical cosmetic goods and those in class 5 covered medical and pharmaceutical goods. Instead, he concluded that these wares are alike for a number of reasons:
- The goods are both used for the same purpose. Whether medicated or not, both products protect and cleanse the skin and seek to improve its physical appearance.
- Both sets of products are likely to have similar ingredients and may have the same consistency, for example in the form of a cream or gel.
- Goods in both categories are sold through the same distribution channels; for example, in pharmacies.
- The goods are complementary – the non-medical cleansers and moisturizers 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 products are from the same company.
Commentary by Osborne Clarke
This decision highlights the risks incurred by companies for goods considered to be similar even if they fall under different Nice classes. Specifically, it signals the potential for a blurred line between certain cosmetics and pharmaceuticals.
Companies operating in these sectors should be aware of this potential overlap. Brand owners should be clear about the purpose of their products, and specifications and classes should be carefully drafted and selected to provide appropriate protection. When seeking trademark protection for a cosmetic or pharmaceutical product, broader clearance searches covering classes 3 and 5 should be conducted to minimize the risk of successful opposition proceedings, as some goods will be considered alike across all classes.
This overview was produced with the assistance of Sam Bluteau-Tait, Trainee Lawyer