30 October 2018
Just Enough Programme Limited (the "Applicant") filed a UK trade mark application for the NIVEA logo (above left) in respect of "Electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes".
Beiersdorf AG, the owner of the well-known NIVEA skin care, cosmetics and hair care brand, opposed the application due to their earlier registered and unregistered rights in NIVEA.
Beiersdorf argued that their NIVEA mark is so well-known that the use of NIVEA for any goods or services would lead consumers to believe that there is a connection between the parties. Due to the fact that the goods applied for are tobacco, tobacco substitutes and electronic cigarettes it was argued that if consumers were to link the two NIVEA brands that could be detrimental to Beiersdorf as a beauty and cosmetics company.
The UK Intellectual Property Office (the UKIPO) reviewed the evidence and determined that Beiersdorf did indeed have a reputation in NIVEA in respect of cosmetics, specifically skincare products (including sun tanning preparations) and shaving cream. They went on to assess whether the relevant public would establish a link between the two companies, i.e. beauty and personal care products on the one hand and tobacco, tobacco substitutes, electronic cigarettes, related products and paraphernalia, on the other. The UKIPO found that it was inevitable that a consumer, upon seeing the tobacco company's NIVEA logo, will immediately bring to mind the Beiersdorf trade mark. A link was therefore clearly established despite the fact that there are visual differences in respect of the circular swirl in the logo.
In its evidence Beiersdorf outlined the history of the company and that they have always been known for products which help with beautification and care of the body together with protection of the skin via its sun tanning preparations. This included most notably their strong association with Cancer Research UK in respect of a campaign focussing upon the effects of skin cancer. This campaign clearly aims to educate and inform the public as regards suitable preventative measures and the products provided under the NIVEA brand to achieve this.
The UKIPO found that the goods in the Applicant's specification will be perceived as being harmful to health (albeit to varying degrees) and at least some of them are proven directly to cause cancer. Bearing in mind the reputation of NIVEA in respect of care of the body and skin, together with its close relationship with a leading cancer charity, any potential linking of the NIVEA brand with smoking related goods and accessories (and even alternative products) will have a detrimental effect on NIVEA as a beauty/cosmetics brand. As a result, the opposition succeeded in full.
This case is a useful reminder that well-known brands and trade marks with a reputation enjoy an enhanced level of protection. This provides protection in not only the brand owner's main field of business but any field in which consumers could establish a detrimental link between the brand names.
Beiersdorf were fortunate because they had persuasive and detailed evidence to support their claim to reputation. For any owner of a well-known brand name, this case also reminds us of what can be achieved with clear, detailed, evidence showing the history of the brand and also recent evidence of use and consumer recognition/exposure, particularly when financially focused.