In September this year, Beiersdorf, the parent company of the skincare range NIVEA, successfully opposed a UK application consisting of the word NIVEA with a circular swirl, which had been applied for in relation to cigarettes and related products in class 34.
Beiersdorf relied on its word mark NIVEA in class 3, which covers skin care products, cosmetics and hair care preparations. It alleged that the mark has a reputation and is so well known that any use of the word NIVEA, for any goods or services, would be misleading as consumers would believe there is some connection with Beiersdorf. The applicant, Just Enough Programme Limited, countered with the argument that Beiersdorf could not have rights to NIVEA in relation to all classes of goods and services.
Section 5(3) of the UK Trade Marks Act provides that marks that are identical or similar to an earlier mark that has a reputation in the UK (or EU) shall not be registered if use of that mark, without due cause, would take unfair advantage of or be detrimental the distinctive character or repute of the earlier mark. This can be a difficult case to make out.
Essentially, the following must be taken into consideration when deciding whether a later application for a mark that is identical or similar to an earlier mark would fall foul of section 5(3) of the Act:
The earlier mark must have a reputation among the relevant public for the goods or services for which it is protected;
The earlier mark must be known by a significant part of the relevant public in the relevant territory;
A link between the earlier mark and the later mark applied for must be established in the mind of the relevant consumer. In other words, does the consumer think of the earlier mark when confronted with the later mark in the market, even if that consumer is not confused between the two?
One of the forms of harm envisaged by the provision must be shown to be likely to result from the use of the later mark.
The third point often presents difficulties for the owner of an earlier mark and there are a number of factors to consider when determining whether a sufficient “link” is established. These include, the degree of similarity of the marks, the degree of similarity between the goods or services, what overlap is there between the relevant consumers of the respective goods and services, the strength of the earlier mark’s reputation and the distinctiveness of the earlier mark.
Beiersdorf submitted a witness statement that showed a considerable reputation in the UK, with evidence of use dating back to 1922 in relation to skincare products as well as various sponsorship arrangements with others such as the English National Football Team and the TV show “The Voice”. However, very important in this case was the fact that Beiersdorf also provided evidence of its working relationship with Cancer Research UK since 2012 and demonstrated that the NIVEA brand for sun care products was widely advertised and promoted with Cancer Research UK, as the nature of its reputation could be characterised accordingly. As cigarettes and tobacco products are known to be cancer-causing, it was alleged that the association of the NIVEA brand for these products would be highly detrimental to the brand’s reputation if it came to be associated with those goods.
Having considered all the evidence, the UK IPO concluded that it was evident that Beirsdorf’s earlier mark in class 3 had a considerable reputation in the UK in relation to skincare products and related goods. As for determining the required “link” in the mind of the consumer, given the fact that (i) the two marks were near identical, (ii) NIVEA is an invented term and therefore very distinctive, and (iii) the strength of the earlier mark’s reputation, it was found that a link was clearly established.
Skincare products and tobacco products are clearly so far removed from one another that they may be considered completely dissimilar goods. However, the fact that NIVEA by Beiersdorf is well known for products that care for the body and skin whereas tobacco products do precisely the opposite, the UKIPO came to the conclusion that that registration of the later mark would take unfair advantage of and be detrimental to the reputation of Beiersdorf’s NIVEA brand as we all know it.
Food & Drink / Trademarks / Disputes
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