The Paris Supreme Court has rejected L’Oreal’s appeal following the revocation of two of their registrations and the non-infringement of a third registration due to acquiescence.

Cosmetica Cabinas opposed L’Oreal’s CTM application INOA claiming similarity with their CTM registration for AINHOA, both marks covering beauty and cosmetic products in class 3.  In response, L’Oreal claimed Cosmetica Cabinas had infringed L’Oreal’s earlier registrations for NOA, SPECIFIQUE and EXTREME through sales of products in France under Cosmetica Cabinas’ AINHOA mark. As L’Oreal’s three registrations had been registered for more than 5 years L’Oreal were put to proof of use.

Confirming the Paris Tribunal’s decision, the Court of Appeal found that L’Oreal had submitted evidence establishing use of their NOA mark for partial goods in class 3.   As for SPECIFIQUE and EXTREME, the evidence showed use in conjunction with L’Oreal’s more distinctive marks KERASTASE and REDKEN, respectively, in relation to certain beauty products  but this did not amount to trade mark use: “use of the mark SPECIFIQUE, together with other denominative and figurative elements with a dominant character, alters the distinctive character of the mark SPECIFIQUE...such that it loses its autonomy and its power of attraction”.  Referring to the mark EXTREME, the Court held that when used “…in expressions such as ‘EXTREME shampoo’, ‘EXTREME conditioner,’ the sign EXTREME is used as an adjective which describes the common noun that follows it and inevitably loses its distinctiveness.”.  Revocation of the SPECIFIQUE and EXTREME registrations were therefore upheld. However, whether or not L’Oreal’s registrations for SPECIFIQUE and EXTREME were infringed depended on the date on which revocation took effect. The SPECIFIQUE registration was revoked from 2008, predating the alleged infringement that occurred in 2010 and consequently no infringement was found but the EXTREME registration was revoked back to 2011 permitting L’Oreal to claim infringement prior to this date.  Nonetheless, the Court held that the use of EXTREME by Cosmetica Cabinas such as “specific extreme éclat instant” for goods under their mark AINHOA was merely descriptive use and did not infringe L’Oreal’s mark. 

Defending L’Oreal’s claim of infringement of their NOA mark for the class 3 goods for which serious use had been substantiated, Cosmetica Cabinas claimed acquiescence as L’Oreal had tolerated use of the later filed mark AINHOA for more than 5 years consecutively. CTM registration AINHOA was registered in September 2003 and Cosmetica Cabinas submitted evidence that since 2000 the mark had been used for the class 3 products concerned, that AINHOA had been advertised in many publications in several EU countries, particularly in France in the magazines Elle and Vogue,  that both AINHOA and NOA had been advertised in the same publications in France, Italy, Spain, and sometimes in the same edition, that since 2001 Cosmetica Cabinas and L’Oreal presented goods under their marks at the same trade fares and that they were both simultaneously members of the same Spanish cosmetic and perfumery association. Based on the evidence the Court concluded that L’Oreal had knowledge of use of the mark AINHOA for more than 5 years at the time of filing the action for infringement and that therefore there had been acquiescence by L’Oreal. L’Oreal accordingly failed on all grounds, although they did succeed in having costs awarded against them. 

On appeal to the Supreme Court, L’Oreal argued that the Court of Appeal could not reasonably infer from the evidence submitted that L’Oreal had the requisite knowledge of the mark AINHOA for there to have been acquiescence.  Dismissing the appeal, the Supreme Court stated that the evidence was so significant that the Court of Appeal was correct to deduce that L’Oreal had “the necessary knowledge of use of Cosmetica Cabinas’ Ainhoa mark for more than 5 years at the date of the infringement”.