SUPERSKIN held to be descriptive

European Union
In Liz Earle Beauty Co Ltd v Office for Harmonization in the Internal Market (OHIM) (Case T-486/08, December 9 2009), the newly renamed General Court has given trademark practitioners further guidance as to where the boundary lies between those generally descriptive marks that are registrable, and those that are not.
On May 25 2007 Liz Earle Beauty Co Ltd filed an application for the registration of SUPERSKIN as a Community trademark for goods and services in Classes 3 (including "cosmetics"), 5 (including "nutraceuticals and dietetic foods") and 44 (including "hygienic and beauty care for human beings") of the Nice Classification. The application was rejected by the OHIM examiner under Articles 7(1)(b) and (c) and (2) of the Community Trademark Regulation (40/94) (now Articles 7(1)(b) and (c) and (2) of the Community Trademark Regulation (207/2009)). Liz Earle appealed, but the Board of Appeal of OHIM upheld the examiner's decision. Liz Earle thus appealed to the General Court.
Before the court, Liz Earle claimed that SUPERSKIN was an invented word. It stated that the word 'skin' had many other meanings (eg, the skin of an aircraft), and provided a very general interpretation of the word to mean a thin outer surface. Further, Liz Earle suggested that it was not common in spoken English to combine the words 'super' and 'skin', and that it would be more natural to do so in a reversed order (ie, "your skin is super"). Moreover, the examples provided by the Board of Appeal to support its reasoning were more than 15 years old and the word 'super' was "out of vogue".
Liz Earle also argued that the term 'superskin' was only well known in the context of its SUPERSKIN mark, and that it did not manufacture skin, artificial or otherwise. Accordingly, the term could not be deemed to be directly descriptive of the goods and services applied for. Moreover, the term 'superskin' could not be deemed to be descriptive for all of the goods and services cited in OHIM's decision (eg, "perfumes, nail and hair care preparations and deodorants"). Therefore, the court should at the very least annul the contested decision in respect of these goods and services.
Finally, Liz Earle submitted that SUPERSKIN:

  • was suggestive, and "not arbitrary";
  • was not found in dictionaries; and
  • was "subtle", and not "obvious", so that it required imagination, thought or perception to establish a connection with the goods and services concerned, to which it is "removed" from in concept.
It was also submitted that the board had not provided evidence to support its finding that SUPERSKIN described the intended purposes of the goods and services in question.
OHIM disputed all of Liz Earle's arguments, claiming that the mark was descriptive of the essential characteristics of all of the goods and services concerned for the purpose of Article 7(1)(c) of the regulation.
The court explained that Article 7(1)(c) seeks to protect public interest by allowing a descriptive mark to be used freely by all. A descriptive mark is incapable of performing the essential function of a trademark - that is, to identify the commercial origin of the goods and services. The court held that a sign will be caught by this provision only if there is a relationship between the sign and the goods and services concerned that is sufficiently direct and specific to enable the relevant public to perceive, without further thought, a description of the goods and services in question, or one of their characteristics.
The court then considered the issues specific to a neologism. Case law dictated that a neologism would not be deemed to be descriptive merely because it combined two descriptive words - instead, the neologism itself must be descriptive. The neologism will be descriptive unless there is a "perceptible difference between the neologism and the sum of its parts". It must create an impression which is sufficiently far removed from merely combining the meanings of the two parts, such that the combination produces "something more".
The court also considered whether the relevant public - average English-speaking consumers aware of the characteristics of the goods concerned - would identify a sufficiently direct and specific relationship between the mark and the goods and services concerned. The court interpreted human skin as the intended purpose of the goods and services at issue. It was sufficient that, from the point of view of the relevant public, one of the possible meanings designated a characteristic of the goods and services. The word 'super' indicated high quality and, therefore, was clearly intended to describe the goods and services concerned. The court dismissed the submission that 'super' was "out of vogue": it was sufficient that the word is still used and understood by any average English-speaking consumer. 
The court also held that the combination of 'super' and 'skin' did not produce an "unusual" mark in the eyes of the relevant public; the fact that 'superskin' did not appear in dictionaries was irrelevant. Liz Earle's submission that the dictionary examples were out of date was dismissed. The court pointed out that Article 7(1)(c) requires that the mark is descriptive, but not that it is the only means of description.
The court further rejected Liz Earle's submission that the mark was "suggestive" and "not arbitrary", and held that SUPERSKIN would immediately be held to designate goods and services with the intended purposes of aiding beautiful and/or healthy skin. Crucially, the court found that the mark did not create a removed impression, nor was it more than the sum of its parts.
The court also considered whether SUPERSKIN had the direct and specific relationship required in relation to all of the goods and services claimed. The court annulled the board's decision in respect of a limited range of cosmetic products, with the action being dismissed for the remainder of the goods/services.
This decision reaffirms that the judgment of the European Court of Justice in BABY-DRY (Case C-383/99 P) is now well and truly obsolete. Marketeers and businesses will need to develop more innovative names if a new name is to be registrable. Doing so will benefit not only the brand owner, allowing it to quickly build value in a new brand, but also consumers who are overwhelmed by a plethora of somewhat unmemorable, descriptive product names, in particular within the cosmetics sector.
Nick Bolter, Edwards Angell Palmer & Dodge, London, with the assistance of Paolo Cerroni

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