31 janvier 2019

LUSH opposition fails in the UK

Applicant's mark

Earlier mark

Tasty Snacks Ltd ("the Applicant") filed a UK trade mark application for the trade mark shown above left in respect of "snacks consisting of mixtures of nuts; crisps" (the "contested goods").

The application was opposed by Cosmetic Warriors Limited ("the Opponent") the owner of the well-known LUSH cosmetics and ethical brand.

The Opponent claimed that its LUSH marks have such a strong reputation in the UK such that use of the Applicant's mark for snack foods would cause the relevant public to believe that there is an economic connection between the Applicant and the Opponent where no such connection exists. In particular, the Opponent claimed that it has a reputation for fresh, handmade and ethically produced goods and that use of the contested mark would allow the Applicant to take unfair advantage of the Opponent’s carefully developed reputation.

The Opponent also claimed that use of the contested mark would cause detriment to LUSH's reputation through confusion and because use of the Applicant's mark would dilute and weaken the strength of their brand, causing damage. The Opponent also claimed that there would be detriment to the distinctive character of the LUSH cosmetic trademarks because the consumer would assume a link between the companies, creating a diversion of trade or an expectation that the goods would meet the standards of the Opponent, ie fresh, handmade, ethically sourced and fair trade products. Cosmetic Warriors were also concerned that use of the snack foods logo mark would erode the distinctive character of their well-known marks, diminishing their attractive force and their ability to serve as a guarantee of quality products and good service

Cosmetic Warriors further claimed in relation to the passing-off ground of opposition that their earlier LUSH trademarks have been used throughout the UK since 1995 in respect of the following goods and services: Cosmetics; skincare; haircare; soaps; essential oils; perfumes and fragrances; make-up; shower and bath products; bags; clothing; retail services in store or online connected with the aforementioned goods; spa and healthcare services. They claimed that, as a result, they had established goodwill in association with their name/trademarks and that the use of the snack foods logo mark would amount to a misrepresentation to the relevant public that the applicant is connected to or endorsed by the opponent. The goodwill of the opponent would, it claims, be damaged as a consequence.

The Opponent's case was based on three main points. The first is the conflict between the Opponent’s healthy, natural products and the contested goods, which are likely to be perceived as unhealthy, of dubious origin, and containing additives and synthetic ingredients. The second is that snack foods are inherently associated with low-cost, mass-produced products without concern for ethics, animal welfare or the environment. The third is that much of the Opponent’s success is because of its refusal to compromise its principles, strictly controlling the outlets for its goods. The Opponent argued that any association with the contested goods would lead to consumers considering the Opponent as a corporate sell-out in the light of these principles.

Despite all the above arguments, the UKIPO held that any link between the LUSH cosmetic brand and the snack food brand would be too transitory to consumers for there to be any real consequence of damage to the reputation. The goods applied for were simply too far removed. As a result, the Opposition failed and the LUSH application for snacks was allowed to proceed to registration, subject to any appeal by the Opponent.

This case is a reminder that trademarks with a reputation can only prevent the use or registration of a mark where a link is found and where detriment or damage results. Had LUSH cosmetics had slightly broader trade mark registrations covering various food and confectionery products, for example, the outcome may have been very different.

Case ref: O-808-18

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