UK News: Intellectual Property Office Finds for Beiersdof in Nivea Smoking Trademark Case

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According to a report on World Intellectual Property Review, German-based Beiersdorf, the parent company of skincare range Nivea, has successfully opposed a trademark application for products relating to smoking.

The report states that on September 11, the UK Intellectual Property Office (IPO) in an opposition proceeding held in favour of Beiersdorf.

The decision is based off an August 25, 2017 application by UK-based Just Enough Programme Limited to register a figurative mark featuring the word ‘Nivea’ and a circular swirl in Class 34 at the UK IPO. The proposed mark covered cigarettes, electronic cigarettes and related products.NIVEA

Following Publication of the mark in 2017, Beiersdorf opposed the trademark on the ground that it was similar to the company’s earlier ‘Nivea’ (UK number 9,710,77A) trademark, registered for cosmetic products. According to Beiersdorf, its mark is so well known that the use of ‘Nivea’ for any goods or services would lead consumers to believe that there’s a connection between the marks.

In it’s counter-statement, Just Enough Programme disagreed with that assertion stating that the public would not make a connection between the goods offered by both companies under those marks.

Carol Beckmann, director of corporate business law products and trademarks for Beiersdorf, said in a witness statement that Beiersdorf has used ‘Nivea’ extensively since 1922 and that advertising for Nivea skin cream in the UK dates back to the 1930s.  Beckmann claimed that Beiersdorf’s reputation would be damaged if consumers believed that the company had expanded into the tobacco industry, notably because of Nivea’s support of charity Cancer Research UK.

“The use of Nivea for such goods would be in complete contrast to the reputation of the opponent’s earlier brand which is synonymous with skincare and personal health,” said Beckmann.

Beiersdorf was succesful in its opposition with the IPO finding that Beiersdorf’s earlier trademark enjoys a significant reputation in respect to cosmetics and enjoys a distinctive reputation as ‘Nivea’ is an invented term.

Louise White on behalf of the IPO stated that although there was a visual difference in respect to the circular swirl in the applied-for mark, the word element ‘Nivea’ is “virtually visually identical” and that aurally the marks are identical. It further found that it is inevitable that a consumer would immediately bring to mind Nivea upon seeing Just Enough Programme’s trademark.

Following that finding, the Just Enough Programme was ordered to pay Beiersdorf £1,250.

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About Ufuoma Akpotaire 179 Articles
Ufuoma is a Senior Editor and Director of Regulatory Policy at NLIPW. She assists clients in the protection of copyrights, trademarks and patents. She counsels clients regarding validity and infringement matters and has experience acting against the infringement of IP and addressing counterfeit issues. She holds a Masters degree (LL.M.) from Columbia Law School, New York and a law degree from the University of Nigeria (LL.B. Honors). She is admitted to practice law in Nigeria and in the State of New York. Ufuoma cut her teeth in the intellectual property practice groups of some of the largest law firms in Nigeria and has years of experience working with major non-profit organizations in New York. Email: uakpotaire@nlipw.com

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