The secret of a success

8th Nov 2021

Katherine Thompson reveals the reasons behind a failed invalidation attempt.

T-810/19, Victoria’s Secret Stores Brand Management, Inc. v EUIPO and Yiwu Dearbody Cosmetics Co. Ltd, 
General Court, 14th July 2021.

The General Court (GC) has denied Victoria’s Secret Stores Brand Management, Inc.’s attempt to invalidate a registration for BODYSECRETS. An invalidity action was brought under Articles 7(1)(b), (c) and (d) EUTMR.

The contested mark

The GC upheld the decision of the Board of Appeal (BoA) and found the mark to be validly registered on all counts.

The mark was filed in 2015, covering classes 3, 5 and 25. The application was opposed under Article 8(1)(b), though not by Victoria’s Secret. The opposition failed, and the mark proceeded to registration.

In 2017, Victoria’s Secret (the Applicant) applied to invalidate the mark, and that decision was appealed first to the BoA and then to the GC. 

Four pleas

The appeal relied on four separate pleas. In its first plea, the Applicant argued that the figurative elements of the Contested Mark are so minimal as to be negligible.

The mark should have been considered as if it were a word mark, given the very limited degree of stylisation. This was given short shrift, and the GC found that the BoA had attached no importance to the figurative elements of the mark.

In its other three pleas, the Applicant argued that the BoA had made an incorrect assessment of the mark under Articles 7(1)(b), (c) and (d), and that in doing so it had made an incorrect assessment of the evidence submitted by the Applicant.

That evidence consisted of eight magazine articles with headlines such as “12 Celebrity Body Secrets”, “Marilyn Monroe beauty and body secrets revealed” and “Ferne McCann reveals beach body secrets”.

At first glance, it seems that this sort of evidence would be very helpful to the Applicant’s case. Most brand owners would rather not see their mark being used in the headline of a press article, other than to refer to their own products.

However, in this instance, the evidence was not found to demonstrate that the mark lacked distinctive character.

Court criticism

There were two main aspects to the GC’s criticism. Most importantly, it was found that none of the press articles related to the specific goods covered by the registration.

While the articles discussed diet and exercise regimes and their impact upon the body, there was no reference found to specific products in classes 3, 5 or 25.

Second, the Applicant used the evidence to argue that the phrase “body secrets” would be understood as a “promotional formula” indicating that the goods are used to improve physical appearance.

However, the GC found no use of the expression as a “promotional formula” in advertisements or similar contexts. 

This potentially sets a high bar for what the evidence needs to show, if it indicates that actual third-party use of the phrase in advertisements is required to demonstrate that an expression would be understood as a promotional formula.

It is a useful reminder of the differences between use in the course of trade, and other types of use of a phrase.

Aside from the evidence, the Applicant argued that the expression “body secrets” suggests that the goods in question are secret and exclusive in nature and therefore superior to the ordinary version of those goods.

The Applicant argued that the expression indicates that the goods are used to improve physical appearance, and that these meanings of the words were relevant for the assessment under Articles 7(1)(b) and (c).

In response, the GC cited the dictionary definitions of “body” as “the complete physical form of a person or animal” and of “secrets” as something which is “kept from knowledge or observation”.

In its most literal interpretation, the expression “body secrets” therefore refers to parts of the body that are hidden or unknown. On this basis, the expression was found not to be perceived as a promotional formula, or as having laudatory connotations capable of commending the quality of the goods.

The Applicant was found not to have shown that the relevant public would understand the expression as referring to hidden tips that can improve one’s physical appearance.

Importance of context

This perhaps highlights the differences between the straightforward dictionary definition of a word and the connotations it can have when used in context.

No one reading the article “12 Celebrity Body Secrets” genuinely expects to be uncovering information that has previously been “kept from knowledge or observation”.

In that context, the reader is much more likely to expect tips and tricks, or even just reformulations of common-sense advice.

Although the dictionary meaning of “secret” has some relevance in implying that the information being imparted is not widely known, no reader is expecting the same sort of revelations that might follow a headline: “Secret government dossier leaked”.

The straightforward reliance on the dictionary definition perhaps fails to give enough weight to the importance of context in colouring the consumer’s understanding of this element of the mark.

However, for all that the dictionary definition may lack nuance, the Applicant did find it difficult to demonstrate that there was a sufficiently direct connection between the meaning which it argued the consumer would understand the mark to have and the goods in question.

The decision provides a useful reminder of the presumption that a mark has been validly registered, and of the thresholds for demonstrating that a mark is lacking in distinctive character.

For the sake of completeness, the Applicant did include a plea under Article 7(1)(d), but given the treatment of the evidence in the other parts of the decision it was very difficult to demonstrate that the expression “body secrets” had become commonplace in the trade to refer to the goods in question at the relevant date. 

Having not previously opposed the application on the basis of its prior rights, it will be interesting to see whether Victoria’s Secret now chooses to apply to invalidate on that basis.

In the meantime, the decision confirms that simply because a mark can be shown to be used in a non-trade mark sense in certain contexts, this does not automatically mean that the mark lacks distinctiveness for the goods for which it is registered.

Key points

  • Victoria’s Secret challenged on absolute grounds but not on prior rights
  • Evidence of non-trade mark use is not necessarily evidence that the mark lacks distinctiveness
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