Cosmetics vs Pharmaceuticals – Similar Goods?

Cosmetics vs Pharmaceuticals – Similar Goods?

The similarity of goods and services is always a decisive issue when it comes to trademark collision and infringement. Proceeding against an alleged trademark infringer requires not only the mark being identical or similar to a registered trademark, but also the goods and services need to be identical or similar. Not always it is clear whether or not there actually is sufficient similarity to establish trademark infringement. Further, the different decision-making bodies in the EU (and the national offices and courts as well) do not always take the same approach or come to the same conclusions. The EUIPO’s Boards of Appeal took a closer look at how similarity between “cosmetics” in Class 3 and “pharmaceuticals” in Class 5 – two classes, often opposing each other – are being treated at EU level and we would like to briefly summarize the findings to give you a better understanding of the approach(es).

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1. Legal Background

EU law provides that

• a trademark application shall not be registered if
  
  • there exists a likelihood of confusion between the application and an earlier trademark based on
  • an identity / similarity in the marks and
  • an identity / similarity in the goods and services for which both marks claim protection [Article 8(1)(b) EUTMR];
• goods and services are not automatically similar just because they fall into the same class of the Nice Classification;
• good and services are not automatically dissimilar just because they appear in different classes of the Nice Classification. [Article 33(7) EUTMR]

Furthermore, it is settled case law that

• in assessing the similarity of goods or services, all relevant factors relating to those goods and services need be taken into account [see EU Court of Justice in C-39/97 – CANON], inter alia
  
  • their nature,
  • their intended purpose,
  • their method of use,
  • whether they are in competition with each other or are complementary,
  • their distribution channels,
  • market practice and the usual commercial origin of the goods or services concerned, as perceived by the relevant public.
• before comparing any goods and services, it is necessary to define the scope of the particular category or item of goods or services in the relevant class of the Nice Classification. This is done by interpreting the terms used in the list of goods and services literally, taking into account their natural and usual meaning (dictionaries, understanding from a commercial perspective) as well as general considerations of the Nice Classification, its Explanatory Notes and definitions in other relevant EU regulatory acts.

For several years, it has been a declared aim of the EUIPO’s Boards of Appeal to provide guidance in EU case law, to enhance the consistency of decision-making practice in the EU and to improve the predictability of decisions and legal certainty in general. Regularly, decisions of the EU Court of Justice, the General Court and the Boards of Appeal are analyzed and discussed as to relevant case-law and trends on the topic.

The result is being made available to the staff of the Boards of Appeal and the public, but it is important to stress that it does not have any binding effect.

2. Pharmaceuticals vs Cosmetics

In one of its latest publications, the Boards of Appeal focused on the comparison between “pharmaceuticals” in the class heading of Class 5 and “non-medicated cosmetics and toiletry preparations” in the class heading of Class 3 of the Nice Classification (see Similarity between pharmaceuticals and cosmetics).

After comparing relevant case law, the following conclusions were drawn:

1. General category pharmaceuticals in Class 5 versus the general category cosmetics or specific cosmetics in Class 3 (except perfumery, essential oils)

• Consistent case law confirming that the goods are not dissimilar
• Specific degree of similarity treated differently (in decisions)
• General trend:
  
  • General Court: mostly low degree of similarity
  • Boards of Appeal: low to average degree of similarity
• PRACTICAL ADVICE to argue average degree of similarity:
  
  • Show overlap in purpose, distribution channels, end consumers, method of use and commercial origin and
  • prove that pharmaceuticals and cosmetics have a common commercial origin (manufactured by the same undertakings and/or sold under the same brand)

2. Pharmaceuticals with specific therapeutic indications for the treatment of the external part of the body in Class 5 versus the general category cosmetics or specific cosmetics in Class 3 (except perfumery, essential oils)

• General trend:  deemed similar to an average degree considering an overlap in purpose, end users, method of use, distribution channels and commercial origin

3. Pharmaceuticals with specific therapeutic indication other than for the treatment of the external part of the body in Class 5 versus the general category cosmetics or specific cosmetics in Class 3

• Consistent case law confirming dissimilarity

4. Pharmaceuticals in Class 5 versus perfumery in Class 3

• Consistent case law confirming dissimilarity
• Reasons:  no overlap in purpose, distribution channels and commercial origin
• BUT:  occasional findings of a low degree of similarity between pharmaceuticals in Class 5 and deodorants / essential oils in Class 3 (see specific case law in report mentioned above)

While facts and arguments will still need to be discussed in each individual case, the cited report of the Boards of Appeal gives a good understanding of the general approach of the EUIPO and the European Courts as regards similarity of certain items in Classes 3 and 5. We strongly recommend reviewing the report (see Similarity between pharmaceuticals and cosmetics) as it contains a lot of references to case law with further explanations and reasoning which can be used for your own argumentation.

Also, if you would like to discuss the similarity of goods and services in specific cases, you are always welcome to contact us either by phone at +49 89 55 879 870 or by email to