When the term BODYSECRETS is used, isn’t the connection with beauty, cosmetics and fashion very obvious? This is how Victoria’s Secret argued against the registration of the Union figurative mark BODYSECRETS from China – but in vain.
EU figurative mark BODYSECRETS
The EU figurative mark BODYSECRETS was filed in April 2015 for goods in Nice classes 3, 5 and 25, essentially bath salts and cosmetics – but also for clothing, including hosiery, scarves and girdles. The applicant and defendant in today’s trade mark dispute before the European Court of Justice (CFI) was Yiwu Dearbody Cosmetics Co. Ltd. (China); in April 2015, it had applied for the contested EU figurative mark BODYSECRETS.
In contrast, the applicant Victoria’s Secret Stores Brand Management, Inc. (USA) filed an application for a declaration of invalidity for all goods claimed in November 2017, which was, however, rejected by the EUIPO (Cancellation Division and also subsequently the Board of Appeal).
The core issue was whether the term “bodysecrets” refers to goods in the field of beauty, concealed lace and cosmetics (and for these goods the contested mark claims protection) and the mark BODYSECRETS is therefore devoid of distinctive character and is a descriptive mark, as applicant Victoria’s Secret claimed, or whether the term rather refers to the diets of famous women with attractive looks or to their physical training routines, as the Board of Appeal decided.
What was significant about this decision was that the Board of Appeal did not see the word mark Bodysecrets in the EU figurative mark BODYSECRETS, but referred to the individual word elements of the figurative mark, i.e. the words “body” and “secrets”.
Victoria’s Secret sued against mark BODYSECRETS
Victoria’s Secret brought an action against this decision before the European Court of First Instance, raising a total of four pleas in law. Today, this case was heard and decided (EU:T:2021:460).
The first plea complained that no account was taken of the fact that the figurative elements of the contested mark were so small as to be negligible. Therefore, the average consumer would inevitably and irrefutably perceive the contested mark as the simple word mark BODYSECRETS.
However, the CFI did not accept this objection. The Board of Appeal had rightly seen the contested mark as a figurative mark consisting of the two words “body” in black lettering and “secrets” in grey lettering. Otherwise, no significance was attributed to the figurative elements in the assessment of the contested mark. The CFI therefore dismissed the first head of claim.
BODYSECRETS- Distinctive or descriptive for lingerie with lace?
By its second and third pleas, the applicant challenged the assessment in the contested decision of the distinctive and descriptive character of the EU figurative mark B ( infringement of Art. 7(1)(b) and (1)(c)). (c) of Regulation No 207/2009). It argued that the term ‘body secrets’ was associated with the goods covered by the contested mark because those goods were used to enhance appearance. Moreover, the word ‘secret’ conveyed the idea of special qualities, characteristics or satisfactory results and exclusivity and reinforced the laudatory and promotional meaning of the contested mark as a whole. With regard to distinctiveness, it therefore argued that it the figurative mark B was purely promotional.
However, this objection was in vain. Quite apart from the fact that advertising statements can in principle also have distinctive character, “body” alone is not a laudatory word, the CFI ruled, it simply states that a body shape exists, quite independently of the quality of that body shape.
Moreover, the applicant had failed to prove that the disputed mark would be directly understood as an indication of hidden tips for improving one’s appearance. There was therefore no advertising meaning in the contested mark. However, since the applicant had relied exclusively on the assertion that the expression ‘body secrets’ was purely promotional in relation to the goods in question as regards distinctiveness, the applicant had failed to prove the lack of distinctiveness of the contested mark.
Evidence for invalidity proceedings
In principle, in invalidity proceedings, the party bringing the action must provide evidence to support the objections raised, as there is a presumption of validity for registered trade marks. However, the CFI emphasised that the Board of Appeal had expressly found that the evidence submitted by the applicant did not prove that the contested mark was descriptive at the time of filing or that it could have been used descriptively.
In vain, the applicant argued that the mark body secrets was widely used to refer to beauty, cosmetics and fashion advice, which it tried to prove by referring to numerous well-known fashion magazines.
The titles of magazine articles using “body secrets” submitted by the applicant were not accepted as evidence. This was because “body secrets” in these titles was always used in conjunction with other words. Therefore, the magazine articles submitted as evidence could not lead to the conclusion that the relevant public, when looking at the contested mark, would immediately and without further reflection perceive a description of the goods covered by that mark or one of its characteristics. Nor could that evidence establish that the contested mark has become customary (Article 7(1)(d) of Regulation No 207/2009).
Former EUIPO decision: no precedent
Finally, the applicant referred to an earlier EUIPO decision on the very similar application for the sign BEAUTY SECRETS to designate cosmetic products – which was not found to be distinctive. That decision was a more appropriate precedent.
However, even with the reference as a precedent, the CFI rejected this argument. As it has done many times before, the CFI also emphasised this time that the legality of the decisions of the Boards of Appeal is to be assessed exclusively on the basis of Regulation No. 207/2009 and not on the basis of a previous decision-making practice of these Boards. And quite fundamentally, the European Court is not bound by the decision-making practice of the EUIPO anyway, the CFI stated once again and decisively.
Victoria’s Secret lost the action against the EU figurative mark BODYSECRETS in its entirety before the CFI.
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