Gianni Giudicianni v Teoxane SA (O-039-17)
Appeal heard by Prof Phillip Johnson, sitting as the Appointed Person, from the Decision of Mr George Salthouse (the “Hearing Officer”) in the matter of Mr Giudicianni’s UK trade mark application 2606437 (“RA” in classes 3 and 44) and the opposition thereto by Teoxane on the basis of international (EU) mark M1,104,083 (“RHA RESILIENT HYALURONIC ACID” in classes 3 and 5).
Teoxane contended that “RESILIENT HYALURONIC ACID” was descriptive and a negligible element of its mark and therefore should have been disregarded by the Hearing Officer in his comparison of the marks for the purposes of s5(2)(b) of the Trade Marks Act 1994. Teoxane relied principally on the decision of the CJEU in C-334/05 OHIM v Shaker – “Limoncello”. Prof Johnson held that “It is important to remember that a mark may be distinctive yet at the same time give a descriptive message of the goods to which it relates” at [23]. He upheld the finding of the Hearing Officer that “RESILIENT HYALURONIC ACID” had a certain degree of distinctiveness and consequently dismissed Teoxane’s appeal.
Adam Gamsa appeared for Mr Giudicianni and David Ivison for Teoxane.