Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA965453
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`Filing date:
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`04/08/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92067835
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Societe De Recherche Cosmetique S.A.R.L.
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`JOSEPH SOFER
`IPSILON USA
`215 LEXINGTON AVE STE 1301
`NEW YORK, NY 10016
`UNITED STATES
`joesofer@soferharoun.com, abrand@soferharoun.com
`212-697-2800
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`Other Motions/Papers
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`JOSEPH SOFER, ESQ.
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`abrand@soferharoun.com, joesofer@soferharoun.com
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`/Joseph Sofer/
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`04/08/2019
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`Summary of EU Proceedings 4819.pdf(194912 bytes )
`Cancellation brief 318.pdf(270483 bytes )
`Cancellation brief 342.pdf(327104 bytes )
`Cancellation Brief 359.pdf(321492 bytes )
`Cancellation brief 016919301 03.pdf(451485 bytes )
`Observations 19.03.2019 318.pdf(2241243 bytes )
`beautybio 016919359 cl 10.pdf(2410378 bytes )
`Observations 301 04.04.2019.pdf(287005 bytes )
`beautybio 016919342.pdf(140818 bytes )
`Exhibits 301 P1-103.pdf(4496892 bytes )
`Exhibits 301 part 2.pdf(798998 bytes )
`Exhibits 301 part 3.pdf(5732570 bytes )
`Exhibits 342 Part 1.pdf(6037662 bytes )
`Exhibits 342 part 2a.pdf(5780969 bytes )
`Exhibits 342 part 2.pdf(1447803 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`In the Matter of U.S. Trademark Reg. No.: 4,887,229
`For the Mark: BIO BEAUTE
`__________________________
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`BEAUTY BIOSCIENCES, LLC,
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`Petitioner,
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`Cancellation No. 92067835
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`v.
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`SOCIETE DE RECHERCHE
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`COSMETIQUE S.A.R.L.,
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`Respondent.
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`_____________________________
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`Trademark Trial and Appeal Board
`Commissioner for Trademarks
`PO Box 1451
`Alexandria, VA 22313-1451
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`SUMMARY OF THE CLAIMS ASSERTED IN THE EUROPEAN PROCEEDINGS
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`In response to the Board’s Order dated March 19, 2019, Respondent, Societe De
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`
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`Recherche Cosmetique S.A.R.L. (“Respondent”)(“SRC”) submits the following summary of the
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`European case between the parties.
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`During the Conference call with the Board, Petitioner stated that it is planning to amend
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`its current Petition for abandonment to include a Petition for Cancellation of the Bio Beaute
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`mark based on Petitioner’s prior US registration for the Beauty BioScience word mark. It
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`appears that this Petition is in retaliation of Respondent’s prior Petitions filed in Europe. In
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`Europe, Petitioner has applied for BEAUTYBIO mark and has modified its original word mark
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`1
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`

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`BEAUTY BIO SCIENCE, by creating a logo with a prominent sized BEAUTY BIO and a much
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`smaller and faded SCIENCE underneath it as such:
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`.
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`On November 9, 2018, SRC filed 4 Cancellation Actions in the European Union
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`Intellectual Property Office as follows:
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`1- Cancellation against European Trademark Registration BEAUTYBIO No. 016919342
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`in class 3 for cosmetics;
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`2- Cancellation against European Trademark Registration BEAUTYBIO No. 016919359
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`in class 10 for a cosmetic medical device;
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`3- Cancellation against European Trademark Registration
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`No. 016919301 in Class 3;
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`4- Cancellation against and European Trademark Registration
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`No. 016919318 in Class 10.
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`In all four actions, SRC is claiming a likelihood of confusion with SRC’s European
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`Trademark Registration BIO-BEAUTE No. 013609631 and requesting that the contested
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`registrations be cancelled in their entirety.
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`Specifically, with regard to the Cancellation Actions against the
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`marks, Reg. Nos. 016919318 and 016919301, SRC has argued that
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`the BEAUTYBIO portion of the mark is displayed in prominent character size and appears to be
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`the most dominant and eye-catching part of the mark and therefore the marks are confusingly
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`similar.
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`2
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`

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`On March 18, 2019, Petitioner, Beauty Biosciences, LLC (“Beauty Biosciences”) filed 4
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`Observations in Reply to the Invalidity in response to SRC’s Cancellation briefs, arguing that the
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`contested marks are not confusingly similar. Petitioner analyzed the following factors in its
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`responses: similarity of the marks, similarity of the goods, purchasing environment and targeted
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`consumers, and strength of the mark and produced volumes of evidence in support of its
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`arguments.
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`First, Beauty Biosciences presented arguments comparing the marks in sight and sound.
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`They have argued that the marks differ due to the totally different position of the “Bio” element
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`within the compared marks, the fact that BeautyBio is written together as one word, while BIO-
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`BEAUTE is separated by a hyphen, as well as the acute accent found over the last letter in Bio-
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`Beaute which impacts the mark’s appearance and how it is perceived by consumers.
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`In the responses to the Cancellation Actions against the
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`mark,
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`Reg. Nos. 016919318 and 016919301, Petitioner has further differentiated the marks based on
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`the additional element of “Science.” Petitioner has argued that the word “Science” “has a strong
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`impact on the overall conceptual identity of the contested trademark.”
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`Petitioner also included arguments and supporting evidence with regard to the relevant
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`consumers and purchasing environment. Petitioner presented extensive evidence that the level of
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`attention of the average consumer with regards to the purchase of cosmetics is particularly high.
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`Petitioner included survey evidence to support the claim that the purchaser’s involvement in
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`buying cosmetics, especially natural cosmetics is high and brand loyalty is strong in the cosmetic
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`industry.
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`Petitioner concluded its likelihood of confusion analysis by arguing that the prior mark is
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`weak due to the great number of similar registered trademarks and similar marks co-existing on
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`3
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`

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`the market. Consumers have therefore become accustomed to choosing between several brands
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`bearing similar wording.
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`Petitioner, Beauty Biosciences has vigorously claimed that a likelihood of confusion
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`between the two trademarks Bio Beaute and Beauty Bio and Bio Beaute and
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` is not possible and therefore the request for invalidity should be
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`rejected.
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`The next step in the EU proceedings is that SRC has the opportunity to respond to
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`Petitioner’s Observations in Reply to the Invalidity. There is a deadline of May 14, 2019 for
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`SRC to respond to Petitioner’s Observations regarding Reg. Nos. 016919359 and 016919342.
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`There is a deadline of May 24, 2019 for SRC to respond to Petitioner’s Observations regarding
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`Reg. No. 016919318. There is a deadline of June 9, 2019 for SRC to respond to Petitioner’s
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`Observations regarding Reg. No. 016919301. It is our understanding that the European Union
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`Intellectual Property Office will review the submissions and issue a decision within 4-6 months
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`following SRC’s filings based on the parties’ arguments and the extensive evidence presented in
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`those 4 matters. To this end the parties expect a final decision on likelihood of confusion
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`between Bio Beaute and Beauty Bio sometime around September through November 2019.
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`Petitioner Beauty BioScience in its Observations in Reply to Invalidity has made strong
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`arguments against any finding of a likelihood of confusion between the BIO-BEAUTE mark and
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`the BEAUTY BIO and
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`marks, which are diametrically opposed to
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`Petitioner’s position in its currently proposed amended pleading for likelihood of confusion
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`between U.S. Reg. Nos. 4080486 for Beauty Bioscience and 4887229 for Bio Beaute.
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`4
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`

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`The European Union Intellectual Property Office’s decision will have a strong bearing on
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`the issues in the present case. We intend to supplement the following arguments in favor of
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`staying the proceeding in SRC’s Answer to the proposed amended pleading. In sum, under the
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`doctrine of comity, judgments of foreign countries are recognized under federal law. Hilton v
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`Guyot, 159 U.S. 113 (1895). “Generally, the principles that guide a district court’s determination
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`of whether to grant comity to a parallel foreign proceeding include ‘the proper respect for
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`litigation in and the courts of a sovereign nation, fairness to litigants and judicial efficiency.”
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`Royal & Sun All. Ins. Co. of Can. V. Century Int’l Arms, Inc., 466 F.3d 88 (2d Cir. 2006).
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`A list of factors to be considered include: 1) the similarity of the parties and issues; 2) the
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`interests of judicial economy; 3) the order in which the actions were filed; 4) the adequacy of the
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`alternative forum and 5) the convenience of, and potential to prejudice, to either party. Ole
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`Media Mgmt., L.P. v. EMI Apr. Music, Inc., 2013 WL 2531277 (S.D.N.Y. 2013) (Evaluating the
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`factors as a whole, the Court concluded that they strongly favor staying this action in deference
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`to the pending litigation in Canadian court.) Even where courts have declined to dismiss an
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`action pending a prior parallel action in a foreign court, a stay has often been viewed as the
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`appropriate intermediate measure. See, e.g., Royal & Sun Alliance, 466 F.3d at 96 ("[A]
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`measured temporary stay need not result in a complete forfeiture of jurisdiction. As a lesser
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`intrusion on the principle of obligatory jurisdiction, which might permit the district court a
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`window to determine whether the foreign action will in fact offer an efficient vehicle for fairly
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`resolving all the rights of the parties, such a stay is an alternative that normally should be
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`considered before a comity-based dismissal is entertained.
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`If the European Union Intellectual Property Office decides that there is no likelihood of
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`confusion between the marks as Petitioner Beauty Biosciences has posited in Europe, this
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`5
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`

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`outcome may be binding on the Board’s decision in the present case under the principles of
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`comity or at the very least most relevant to the Board’s decision.
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`
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`Dated: April 8, 2019
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`Respectfully submitted,
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`By: /Joseph Sofer/
`
` Joseph Sofer, Esq.
` Email: joesofer@soferharoun.com
` IPSILON USA
` 215 Lexington Ave
` Suite 1301
` New York, NY 10016
` 212 697 2800
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`CERTIFICATE OF SERVICE
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`
`
`I hereby certify that a copy of the foregoing Summary of the European Proceeding was
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`served via Electronic mail on April 8, 2019, upon the following:
`
`
`
`
`
`
`Joel R. Feldman, Esq.
`Alexandra A. Holt, Esq.
`Terminus 200
`3333 Piedmont Road, NE
`Suite 2500
`Atlanta, GA 30305
`Phone: (678) 553-4778
`Fax: (678) 553-4779
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`Attorneys for Petitioner
`Beauty BioSciences LLC
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`/Adina Brand/
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`7
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`

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`Cancellation action against European trademark registration
`
`
`
` n° 016 919 318 in class 10
`
`
`
`
`
`
`
`
`
` n°
`
`
`for cancellation of EUTM
`We hereby apply
`016 919 318 in the name of Beauty Biosciences LLC. This cancellation action is
`directed against all the goods covered by the aforesaid registration, namely:
`
` “medical apparatus and instruments “ in class 10.
`
`A copy thereof is attached hereto in Annex 1.
`
`
`
`This cancellation action is based upon EUTM registration BIO-BEAUTÉ n°
`013 609 631 filed on December 26, 2014 and registered on June 2, 2015 in the name
`of Société de Recherche Cosmétique S.A.R.L. (hereafter referred to as SRC). This
`registration covers goods in the 45 classes of the Nice classification and in particular:
`
`“ Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and
`abrasive preparations; Leather preservatives (polishes); Creams for leather; Dentifrices; Cosmetics;
`Perfumes, toilet water, eau de Colgone, body deodorants; Essential oils; Extracts of plant for cosmetic
`purposes; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders,
`serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care;
`Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for
`slimming purposes; Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic
`preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-
`shave preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic
`purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Incense, Perfume
`water, Room perfumes, Sachets for perfuming linen” in class 3.
`
` “Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth;
`Orthopedic articles, Artificial limbs, Artificial implants; Suture materials; Support clothing for medical
`purposes” in class 10.
`
`A copy thereof is attached hereto in Annex 2.
`
`
`
`

`

`SRC owns several other registrations in Europe for trademark BIO-BEAUTÉ, in
`particular French registration n° 09 3 659 862 dated June 24, 2009 covering inter
`alia:
`
`“ Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and
`abrasive preparations; Leather preservatives (polishes); Creams for leather; Dentifrices; Cosmetics;
`Perfumes, toilet water, eau de Colgone, body deodorants; Essential oils; Extracts of plant for cosmetic
`purposes; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders,
`serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care;
`Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for
`slimming purposes; Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic
`preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-
`shave preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic
`purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Incense, Perfume
`water, Room perfumes, Sachets for perfuming linen” in class 3.
`
` “Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth;
`Orthopedic articles, Artificial limbs, Artificial implants; Suture materials; Support clothing for medical
`purposes” in class 10.
`
`
`
` Pursuant to Article 60 of EU regulation 2017/1001 of June 14, 2017 on the
`European Union trade mark:
`
`“1. An EU trade mark shall be declared invalid on application to the Office or on the basis of
`a counterclaim in infringement proceedings:
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`(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out
`in paragraph 1 or 5 of that Article are fulfilled;”
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`
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` Whereas article 8 of the same EU regulation states that:
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`“1. (…) the trade mark applied for shall not be registered:
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`(a) if it is identical with the earlier trade mark and the goods or services for which registration
`is applied for are identical with the goods or services for which the earlier trade mark is
`protected;
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`(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or
`similarity of the goods or services covered by the trade marks there exists a likelihood of
`confusion on the part of the public in the territory in which the earlier trade mark is
`protected; the likelihood of confusion includes the likelihood of association with the earlier
`trade mark.
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`2. For the purposes of paragraph 1, ‘earlier trade mark’ means:
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`(a) trade marks of the following kinds with a date of application for registration which is earlier
`than the date of application for registration of the EU trade mark, taking account, where
`appropriate, of the priorities claimed in respect of those trade marks:
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`(i)
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`EU trade marks;
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`(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands
`or Luxembourg, at the Benelux Office for Intellectual Property;
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`

`

`(iii) trade marks registered under international arrangements which have effect in a
`Member State;
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`(iv) trade marks registered under international arrangements which have effect in the
`Union;
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`
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`(b) applications for the trade marks referred to in point (a), subject to their registration;
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`(c) trade marks which, on the date of application for registration of the EU trade mark, or,
`where appropriate, of the priority claimed in respect of the application for registration of the
`EU trade mark, are well known in a Member State, in the sense in which the words ‘well
`known’ are used in Article 6bis of the Paris Convention.”
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`(…)
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`5. (…) the trade mark applied for shall not be registered where it is identical with, or similar
`to, an earlier trade mark, irrespective of whether the goods or services for which it is applied
`are identical with, similar to or not similar to those for which the earlier trade mark is
`registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in
`the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in
`the Member State concerned, and where the use without due cause of the trade mark
`applied for would take unfair advantage of, or be detrimental to, the distinctive character or
`the repute of the earlier trade mark.”
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`1- Comparison of the goods:
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`1.1. The cancellation action is based on the following goods covered by the prior
`trade mark registration BIO-BEAUTÉ n° 013 609 631:
`
`
`
`
`
`- class 3 : “Dentifrices; Cosmetics; Perfumes, toilet water, eau de Colgone, body deodorants;
`Essential oils; Extracts of plant for cosmetic purposes; Soaps, cleansing milk; Cosmetic
`creams, gels, milks, lotions, masks, pomades, powders, serums and preparations for skin
`care; Anti-wrinkle preparations; Cosmetic preparations for lip care; Sun-tanning preparations
`(cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for slimming purposes;
`Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic preparations
`for -); Make-up and make up removing preparations; Preparations for shaving and after-shave
`preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic
`purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Perfume
`water”
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`- Class 10 : “medical apparatus and instruments”
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`1.2. The cancellation action is directed against all the goods covered by the
`contested trademark registration BEAUTYBIO n° 016 919 318:
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`- class 10 : “medical apparatus and instruments”.
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`
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`

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`1.3. Obviously, all the gods designated by the contested registration are identically
`covered by the priori registration.
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`These goods are thus identical.
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`
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`In addition, if these "medical devices and instruments" have the effect or are
`1.4.
`intended to improving the skin, the teeth or more generally the personal hygiene of
`persons, and that they are used in addition, alternatively or in place of Class 3 goods
`covered by the earlier mark (mainly but not limited to: cosmetics, toothpastes, skin or
`tooth whiteners, cosmetic preparations for skin care), they are similar thereto.
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`For example, a medical device for whitening teeth, whether used exclusively at a
`dentist or also by the patient at home, undeniably presents a similarity link, at least in
`complementarity, with the whitening product (cream , gel ...) that will be used with this
`device, alternatively or in its place.
`
`In similar cases, your Office has already recognized the similarity of Class 3 products
`("Wiping cloth impregnated with a cleaning preparation for cleaning eye glasses;
`Cleaning solutions for spectacle lenses") with " ophthalmic instruments, equipments,
`materials and apparatus "in class 10 (Opposition PUREVISION / PURE EYES B 2
`124 306 confirmed by the Board of Appeal R1031 / 2014-4 on 3 March 2015).
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`The same reasoning should apply in the present case.
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`At least, the applicant should be allowed to complete its brief if the owner of the
`contested registration would decide
`to
`limit/precise/narrow
`the scope of
`its
`registration n° 016 919 359.
`
`
`
`In conclusion, the contested goods are identical or highly similar to the goods
`covered by the earlier registration both in their nature and function and are intended
`for the same consumers.
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`
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`2- Relevant consumers and territory
`
`
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`2.1. The relevant territory is the European Union.
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`The relevant target is the average consumer/ public at large, reasonably
`2.2.
`well-informed and reasonably observant and circumspect.
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`

`

`3- Comparison of the signs
`
`EARLIER TRADE MARK
`
`CONTESTED TRADE MARK
`
`
`
`
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`BIO-BEAUTÉ
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`It will first be reminded that, pursuant to the case law of EUCJ, « the likelihood of
`confusion must (…) be appreciated globally, taking into account all factors relevant to
`the circumstances of the case.
`
`That global appreciation of the visual, aural or conceptual similarity of the marks in
`question, must be based on the overall impression given by the marks, bearing in
`mind, in particular, their distinctive and dominant components” ( C-251/85, Sabel,
`11/11/1997).
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`3.1. As being the first word element and because of its prominent character size, the
`wording « BEAUTYBIO » appears to be the most dominant part and more eye-
`catching than the other elements in the contested trademark.
`
`Moreover, the term « SCIENCE » also understood by the relevant part of the public
`at large of the European Union as a commonly used term referring to any branch of
`scientific knowledge will be perceived as mere indication that the relevant products in
`classes 3 and 10 are being developed by scientific methods. This term is thus
`completely devoid of distinctive character.
`
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`Therefore, the additional differing term « science » as last word element, in a smaller
`size of character and bellow BEAUTYBIO is a non-distinctive addition.
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`The term « BEAUTYBIO » is the main dominant and single distinctive part of the
`contested sign.
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`The Cancellation Division should find it appropriate to focus the comparison of the
`signs on the terms BIO-BEAUTÉ and BEAUTYBIO.
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`
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`3.2 At a first glance, it is obvious that both terms are of equal length, namely both
`composed by 9 letters, 8 of which being identical. Both marks are thus visually
`almost identical and at least very close.
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`
`

`

`This coincidence in the beginning of the earlier sign is also relevant because
`consumers generally tend to focus on the beginning of a sign when they encounter a
`trade mark. This is because the public reads from left to right, which makes the part
`placed at the left of the sign (the initial part) the one that first catches the attention of
`the reader.
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`Aurally, both marks are pronounced in three syllables and are pronounced in three
`steps. Moreover, given that the contested sign includes all the sounds of the earlier
`mark. The signs are thus aurally highly similar.
`
`
`Moreover, conceptually, both signs are built on the association of two terms, namely
`“BIO” and “BEAUTE/BEAUTY” and coincide in the same concept.
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`“BIO” refers to organic or biologically manufactured goods.
`
`“BEAUTE” and “BEAUTY” are actually the same meaning words in different
`languages of the European Union, namely French and English.
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`Although they are in different languages, both words are almost identical since they
`are of same length, namely 6 letters, 5 of which being identical at the same place and
`same rank. They only differ in their last letter “E/Y”.
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`It stems therefrom that, in addition of being intellectually identical, these terms are
`phonetically close.
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`Thus, taken in their entirety, both marks, are intellectually identical and visually
`and phonetically very similar.
`
`
`This was the conclusion of the Opposition Division concerning the following
`trademarks apart from any considerations of reputation (Annex 8):
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`EARLIER TRADE
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`CONTESTED TRADE MARK
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`MARK
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`
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`BIOS LIFE
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`BIOS LIFE
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`
`
`Opposition
`
`number Date
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`of the Decision
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`
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`No B 2 687 310
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`20/12/2017
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`No B 2 687 286
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`20/12/2017
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`

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`4- Likelihood of confusion
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`
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`This overall impression of identity or at least high closeness will lead the consumers
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` as a declination of the
`to consider the contested trademark
`prior registration BIO-BEAUTÉ for a new range of goods or for a broader market,
`namely English speaking countries or the whole European Union.
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`Indeed, although French language is commonly used in the relevant sectors
`(cosmetics, make-up and personal care products) - some of the main companies in
`these fields being French, such as L’Oréal -, English language remains the most
`widely used language in Europe.
`
`This means that there exists a likelihood of confusion, including likelihood of
`association, in the mind of the consumers, even and maybe moreover if, as usually
`considered, they keep in mind a non-perfect image of the mark.
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`In the present case, the likelihood of confusion is all the most high that the earlier
`registration is highly known on the relevant market, and even enjoys a reputation.
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`5- The registration would take unfair advantage of, or be detrimental to, the
`distinctive character or the repute of the earlier trade mark.
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`5.1. Created in 2007, the BIO-BEAUTÉ brand has been launched in France with 7
`face care products.
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`Since then, it has not stopped developing not only by creating new facial care
`products but also with new ranges.
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`Thus, the franchise BIO-BEAUTÉ is each year enriched by new products.
`
`In total, 131 cosmetic products are currently marketed in France under the BIO-
`BEAUTÉ brand.
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`An overview of the range currently sold and its evolution is attached in Annex 3.
`5.2. The development of this range was not limited to the borders of the French
`hexagon but spread across Europe.
`
`The BIO-BEAUTÉ range is therefore present in various countries of the European
`Union, particularly since 2008 in Belgium, Denmark and Finland, since 2009 in
`Germany and Slovenia, since 2011 in Sweden, since 2014 in Spain, since 2015 in
`Bulgaria ...
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`5.3. The development of this range has also been accompanied by significant
`promotional investments.
`
`Poster campaigns in the streets or at sales points, inserts in women's magazines or
`on the Internet are organized each year on various iconic products.
`
`Almost 4 million € were incurred in France alone between 2008 and 2017 in
`promotional campaigns. The details of the products concerned and type of display for
`each year are presented in Annex 4 with some examples of posters campaigns.
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`
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`5.4. BIO-BEAUTÉ is also highly appreciated by journalists, which explains:
`
` -
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` the numerous references to this brand in the leading magazines of the so-called
`women's press. We attach in Annex 5 some examples of articles or references to
`products of the BIO-BEAUTÉ range in newspapers from different European countries
`such as ELLE, Cosmopolitan, Marie-Claire, Glamour ...
`
`- the multiple awards received by products in the BIO-BEAUTÉ range (Annex 6).
`
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`5.5. The success of this range is undeniable.
`
`All of the efforts outlined above have helped make BIO-BEAUTÉ one of the most
`popular consumer products.
`
`This is evidenced by the sales volumes and sales figures that have made this brand
`among the most successful brands on the market of organic cosmetics.
`
`You will find in Annex 7 classification tables of cosmetics brands, and in particular
`organic cosmetics established by the company IQVIA (formerly IMS), undisputed
`leader in the supply of sales data in pharmacy and drugstore (www.ims-
`pharmastat.fr/quintilesims), relying on a network of 14 000 pharmacies just for
`France.
`
`It is clear that for the past 10 years, BIO-BEAUTÉ is in the top three of the most
`successful brands of organic cosmetics in terms of value or volume.
`
`Note that each of the players in this market has found a universe and a name of its
`own, which did not make the company Beauty Biosciences.
`
`
`5.6. With this excellent market position, the BIO-BEAUTÉ brand enjoys a reputation
`among consumers in Europe, or at least in France; the reputation of which the
`
`registration of the
`
`
`mark n° 016 919 318 can only:
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`

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`(i) be detrimental to, in particular by creating a confusion in the minds of
`consumers about possible links which might exist between the products proposed
`under one or the other brand or
`
`(ii) take unfair advantage of.
`
`
`
`* * * *
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`In view of the foregoing, the contested registration
`016 919 318 must be cancelled in its entirety.
`
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`APPENDIX
`
`- Annex 1 : pages 1 to 3
`
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`- Annex 2: pages 4 to 10
`
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`- Annex 3: pages 11 to 15
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`- Annex 4: pages 16 to 27
`
`
`- Annex 5: pages 29 to 2161 ( spread in 22 parts for downloading
`needs)
`
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`- Annex 6: pages 2162 to 2168
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`- Annex 7 : pages 2169 to 2191
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`- Annex 8 : pages 2192 to the end.
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`For any purpose it may serve, it is to note that the documents in Annexes 3 to 7 are
`self-explanatory and have thus not been translated.
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`Cancellation action against European trademark registration
`BEAUTYBIO n° 016 919 342 in class 3
`
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`We hereby apply for cancellation of EUTM BEAUTYBIO n° 016 919 342 in the
`name of Beauty Biosciences LLC. This cancellation action is directed against all the
`goods covered by the aforesaid registration, namely:
`
` “Body cleaning and beauty care preparations; Beauty serums; Body masks; Cosmetics; Eye cream;
`Creams for firming the skin; Non-medicated skin serums; Skin cleansers; Skin cream; Skin
`moisturisers; Skin toners; Skin care preparations; Cleansing creams; Cakes of toilet soap; Facial
`soaps; Facial scrubs [cosmetic]; Facial masks; Toners for cosmetic use; Skin lighteners; Hair
`lighteners; Moisturizers; Beauty care cosmetics; Colour cosmetics for the eyes; Eye pencils; Eyebrow
`pencils; Mascara; Lipsticks; Lip glosses; Lip liners; Cheek colors; Rouges; Loose face powder;
`Pressed face powder; Concealers; Make up foundations; Concealers for spots and blemishes “ in
`class 3.
`
`A copy thereof is attached hereto in Annex 1.
`
`
`
`This cancellation action is based upon EUTM registration BIO-BEAUTÉ n°
`013 609 631 filed on December 26, 2014 and registered on June 2, 2015 in the name
`of Société de Recherche Cosmétique S.A.R.L. (hereafter referred to as SRC). This
`registration covers goods in the 45 classes of the Nice classification and in particular:
`
`“ Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and
`abrasive preparations; Leather preservatives (polishes); Creams for leather; Dentifrices; Cosmetics;
`Perfumes, toilet water, eau de Colgone, body deodorants; Essential oils; Extracts of plant for cosmetic
`purposes; Soaps, cleansing milk; Cosmetic creams, gels, milks, lotions, masks, pomades, powders,
`serums and preparations for skin care; Anti-wrinkle preparations; Cosmetic preparations for lip care;
`Sun-tanning preparations (cosmetics), after-sun preparations (cosmetics); Cosmetic preparations for
`slimming purposes; Depilatories; Hair products (hair and scalp care preparations); Baths (Cosmetic
`preparations for -); Make-up and make up removing preparations; Preparations for shaving and after-
`shave preparations; Tissues and wipes impregnated with cosmetic lotions; Cotton wool for cosmetic
`purposes, Cotton sticks for cosmetic purposes, Round pads for removing make-up; Incense, Perfume
`water, Room perfumes, Sachets for perfuming linen” in class 3.
`
` copy thereof is attached hereto in Annex 2.
`
` A
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`For any purpose it may serve, it is also quoted that SRC owns several other
`registrations in Europe for trademark BIO-BEAUTÉ, in particular French registration
`n° 99 784 172 dated March 26, 1999 covering inter alia:
`
`“ Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and
`abrasive preparations; soaps; Perfumes, essential oils; Cosmetics; hair lotions; dentifrices”.
`
`
`
` Pursuant to Article 60 of EU regulation 2017/1001 of June 14, 2017 on the
`European Union trade mark:
`
`“1. An EU trade mark shall be declared invalid on application to the Office or on the basis of
`a counterclaim in infringement proceedings:
`
`(a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out
`in paragraph 1 or 5 of that Article are fulfilled;”
`
`
`
` Whereas article 8 of the same EU regulation states that:
`
`“1.