The well-known German producer of cosmetics Beiersdorf AG has recently faced some legal challenges in a trademark dispute in Japan.
The case concerns a trademark application for “NYFEA” filed by a Chinese company in classes 3, 8, 9, 10, 11, 16, and 21. Some of the goods covered were cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense.
Against this application, an opposition was filed by Beiersdorf AG based on an earlier mark NIVEA for the same goods. The company claimed a reputation of its mark stating trade use in the country since 1968 accompanied by strong sales and many advertisement campaigns. What’s more, the mark written in Japanese Katakana character was included in the Patent Office’s database with famous trademarks.
Surprisingly or not so, the Patent Office dismissed the opposition. First of all the Office didn’t consider the signs similar enough. The main argument for this was the difference between letters YF and IV which creates different phonetic and visual perceptions. There was no base for conceptual similarity as well.
Another important reason for the failure of this opposition was the fact that apart from stating its trademark reputation, the German company did not submit any evidence to support its claims. The fact that Katakana’s character version of the mark is proven famous mark was not enough for the assumption that the sign in Latin was famous too. Here evidence for sales, advertisements and market shares were necessary.