Skintegrated Cosmeceuticals - is Pharma becoming sexy (again?)

EU, UK

Case Study: Skintegra, Skintegrity

Cosmeceuticals are sexy right now.  They’re less regulated than the pharmaceutical industry (although don’t let that fool you into believing you can say whatever you like) and the brands are booming thanks to the likes of Caroline Hirons.  How much hyaluronic acid has your product got in?  What’s the best SPF? Does your moisturiser include vitamin C and have brightening effects?  How much active ingredient does your product need before it moves across from being a cosmetic to being a pharmaceutical?

Cosmetics aren’t just Avon anymore (sorry, showing our age) – they are everywhere – and even retail has seen it as a huge area of growth with specialist online businesses like Cult Beauty, Feelunique and Look Fantastic thriving.

The emergence of ‘cosmecuticals’ - skincare products which appear to straddle the line between purely cosmetic products and products with seemingly medical benefits – are blurring the lines, both from a market and an IP perspective. This is particularly so as both medical and cosmetic products are often marketed side by side, brands are adopting technical names to give products a more ‘medical’ feel, they target the same consumers and even often have the same objective.

Pharmaceuticals have very strict protocols to adhere to before they can enter the UK market, from clinical trials to regulatory approval. Pharmaceuticals can fall neatly into class 5 goods and appear, from a trade mark perspective, fairly straightforward to protect.  You’ll know from our recent articles that this isn’t the case (Pharmaceutical Trade Marks – a real pain in the bum).

Have a read of our article below considering a recent General Court case which assesses the similarity between these categories of goods and provides some guidance on how best to protect your IP when it could fall into both camps.

Take home points:

  • Carefully consider the objective for your product and seek the correct regulatory approvals.

  • A brands success relies heavily on its brand name so it is important to ensure it is adequately protected to prevent copy cats / dilution of the name in the market.

  • Try to consider the future for your brand and whether this could cross over into the respective fields (medical and/or cosmetic).

  • When clearing a trade mark for a pharmaceutical product, it is pertinent to also search class 3, as from a trade mark perspective, some goods are considered similar.

  • The same applies in reverse if clearing a trade mark for a cosmetic product.

  • When drafting a specification, make sure it covers exactly what you’re intending to use the product for - safeguarding your position if your trade mark is attacked for non-use.

Background

The Applicant, Creaticon d.o.o., is a Croatian company that has created a range of ‘cosmeceuticals’ under the brand name SKINTEGRA. To protect the brand, they applied for the EU designation of International Registration No. 1424199 for the logo mark:

Skintegrated article image

The mark was applied for in respect of a range of goods in class 3 (e.g., cosmetic moisturisers, cosmetic suntan lotions, facial cleansers etc.). The Opponent, a German based company who specialises in medical and healthcare products, filed an opposition based on its earlier rights in the German mark SKINTEGRITY, which covers various goods in class 5 (e.g., pharmaceutical products) and class 10 (e.g., surgical instruments).

Comparison of the goods

In the first instance decision, the Opposition Division partly upheld the opposition finding a likelihood of confusion for some of the class 3 goods, namely ‘cosmetics’ and ‘soaps’ on the basis that these are considered similar to ‘disinfectants’[1] in class 5. The Opposition Division considered disinfectants to be similar to a wide range of goods, including, ‘lip balms [non-medicated]; make-up base cream; beauty balm creams etc.’

Whilst as consumers, it is hard to believe that a consumer could confuse a cosmetic product with a disinfectant – such as picking up a surface cleaner to use as a toner –when you think of the purpose of these products (i.e., to destroy bacteria), you can begin to see the blurring effect.

What is key to remember when considering similarity from an IP perspective is that in fact, how a product is marketed/used/intended to be used is irrelevant and how the products are expressed in the specification is the only relevant factor.

Appeals

Unhappy with the outcome, the Opponent appealed to the Board of Appeal and then onto the General Court.

In its assessment on similarity (the Board expanded the list of goods from the Opponent’s earlier rights for comparison to also include ‘pharmaceutical products for skin protection and cleansing for the purposes of personal hygiene’ and ‘pharmaceutical preparations for body care, for skin protection and cleansing’), the Board made some points worth noting:

the goods at issue have the same purpose, namely to cleanse, take care of or enhance the beauty of a person’s skin and other body parts. In addition, they may include the same ingredients, such as vitamin C or retinol. The only difference in that regard is the potency and strength of the ingredients, since pharmaceutical products contain a higher percentage of the active ingredients. The nature and intended purpose of those goods are the same. In addition, it is often important to use non-medical cleansers, toners, sun protection products and moisturisers in conjunction with pharmaceutical-grade treatment and those products are recommended together, for example by a dermatologist. Furthermore, both types of goods may be available from the same pharmacies and distributed alongside one another. They are therefore similar”.

This point was strongly contested by the Applicant, who submitted that the goods in class 3 have no medical or pharmacological purpose and thus, the intended public of the goods are extremely dissimilar. They also put forward the argument that the mere fact that both products have the same distribution channels does not give rise to a finding of complementarity.

Rejecting the appeal, the General Court largely agreed with the Board of Appeals assessment and concluded:

  • The examination of goods must be based on the specification claimed and not on how those goods are marketed in trade;

  • ‘Pharmaceutical products’ are similar, albeit to a low degree, to ‘cosmetics’ as (i) the purpose of certain pharmaceuticals (e.g. skin care preparations with medical properties) coincides with the purpose of cosmetics not for medical use and (ii) both products are sold in pharmacies;

  • Although cosmetic products are not pharmaceutical in nature, their aim in the same i.e., to protect/improve skin appearance;

  • Whilst the therapeutic indications differ, the goods share the same objective;

  • The goods are likely to incorporate the same ingredients;

  • The goods are likely to be sold via the same distribution channel; and

  • Non-medicated products are likely to be used in conjunction with pharmaceutical-grade treatment.

Conclusion

This case is another great reminder on the approach to comparing cosmetics and pharmaceuticals. When looking to protect cosmetics, pharmaceuticals, and even cosmeceuticals, it is essential to consider the overlap and make sure it is expressed in the specification as you cannot rely on the argument that the products are not the same in the market.

Do you need help protecting your brand?  Do you know what you’re allowed to say in respect of assertions about your product?  Are you unsure whether you can register as a pharmaceutical or need guidance on the R&D elements?  If so, please feel free to get in touch.



[1] The Board of Appeal found similarity with other terms in the Opponent’s specification, broadening beyond just disinfectants.