Nivea lost a trademark dispute in Japan

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.

Source: Masaki MIKAMI, Marks IP Law Firm.

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How weak is a trademark with a low distinctive element?

The General Court of the European Union has ruled in case T–602/19  Eugène Perma Franc v SPI Investments Group.

This case shows the risks when you want your trademark to include common, low distinctive words.

In the case at hand, Eugène Perma Franc applied for the following European trademark for Class 3 – Cosmetics and hair lotions:

Against this application an opposition was filed by SPI Investments Group based on an earlier trademark for the same class:

The EUIPO ruled that both signs are similar to average degree for identical goods and upheld the opposition.

In the appeal, the Board of appeal confirmed this decision stating that although NATURA has a weak distinctiveness, from visual and phonetic point of view the signs are similar for identical goods.

The decision was appealed again.

The General Court, however, disagreed with the EUIPO’s position.

According to the Court, the first part of the signs NATURA, which constitutes 60% of the marks, is a low distinctive element that is used by many companies in relation with cosmetics. Taking into account this, the end of the words “_NOVE” и “_LIUM” being completely different, create an independent impression which overcome the possibility for confusion even in the case of identical goods.

According to the court: “it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trademarks with similar or identical descriptive components”.

Why ‘Botanical Origin’ cannot be a European trademark?

water-lily-1857350_960_720The EUIPO Board of Appeal has rules in case R 881/2019-5, which concerns an attempt for registration of a word European trademark for ‘Botanical Origin’ in class 3:

All purpose cleaning preparations for household, commercial, industrial and institutional use; cleaning preparations for toilets, bath tubs, sinks and floors; cleaning preparations for kitchen and bathroom surfaces; disposable wipes impregnated with cleaning compounds for use in bathrooms and kitchens; polishing preparations for kitchen and glassware; oven cleaning preparations; stove-top cleaning preparations; cleaning preparations for vitroceramic and kitchen surfaces; glass and metal cleaning preparations; window cleaning preparations; bleaching preparations and other substances for laundry use, whether in solid, fluid or gel form; laundry preparations; carpet cleaning preparations; decalcifying and descaling preparations for household purposes; fabric softeners; laundry detergents and additives; stain removing preparations; scent boosters; prewash and stain loosening preparations; starch; laundry blue; bleaching preparations and other substances for use in dishwashing; cleaning, polishing, scouring and abrasive preparations; dishwasher cleaners, fresheners and deodorizers; rinsing agents; preparations for cleaning and de-clogging dishwashers; decalcifying and descaling agents for household purposes; dish detergents; all the above-mentioned products with or without disinfecting components; soaps; detergents; rust removers and grease removers; drain and sink unblocking preparations; preparations for prevention of limescale, rust or grease

EUIPO refused to register this sign based on absolute grounds art. 7(1)(b) EUTMR, lack of distinctiveness. The decision was appealed.

The Board of Appeal upheld the initial EUIPO position. The arguments for this is that the expression Botanical Origin would be perceived by the relevant public as information that the goods come from a botanical source and/or contain ingredients that have a plant-based origin.

The applicant argued that the sign is distinctive at least for some of the goods where there is no such connotation.

This was dismissed too. According to the Board, the phrase would be “perceived by the relevant public as only providing promotional information on the nature, purpose, performance and subject matter of the goods and services concerned and not as indicating their [commercial] origin”.

Source: WIPR.

Trademark exhaustion and cosmetics in Milan

pexels-photo-208052.jpegThe Court of Milan ruled in a case regarding trademark infringement and the principle of trademark exhaustion.

The Italian cosmetic producer Landoll S.r.L accused a retailer of infringement of its registered trademarks NASHI and NASHI ARGAN because the retailer wasn’t authorized to sell the products bearing these marks.

The defending argument of the retailer was that it had been selling these products lawfully because of the concept of trademark exhaustion in the EU according to which:

1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

The Court of Milan, however, disagreed with that argument applying the Coty judgment of the European Court, stating that there was a trademark infringement because in the case at hand Landoll S.r.L had developed a legitimate selective distribution system of authorised dealers in order to ensure maximum consumer satisfaction as a result of the products use. In that way, the cosmetic company tried to safeguard its trademarks value among the consumers.

Source:K&L Gates – Arthur Artinian, Jennifer P.M. Marsh, Francesco Carloni and Gabriela R. Da Costa, Lexology.

Image: kinkate , Pexels.