Date: 4 June 2019
Now for a smoking story involving dilution, reputation and detriment to repute. Beiersdorf, the parent company of Nivea, successfully opposed a UKTM application for the mark shown below for goods in Class 34, namely cigarettes and related products:
Beiersdorf relied on its word mark for NIVEA in Class 3, which covered skin care products, cosmetics and hair care preparations. It alleged that the mark had a reputation and was so well-known that any use of the word NIVEA, for any goods and services, would mislead consumers into believing that there was some connection with Beiersdorf.
Beiersdorf submitted a witness statement showing considerable reputation in the UK, with evidence of use dating back to 1922 in relation to skincare products as well as various sponsorship arrangements with, amongst others, the English national Football team and the TV show “the Voice”. Of particular importance was evidence that Nivea was the only sun care brand to partner Cancer Research UK.
Given that Beiersdorf promoted NIVEA together with Cancer Research UK to educate the public on skin care safety and had also actively helped by donating more than £3 million to fund Cancer Research’s research into cancer since 2012, it was alleged that the association of the NIVEA brand with products known to cause cancer, such as cigarettes and tobacco, would be highly detrimental to the brand’s reputation.
Having considered the evidence filed, the UKIPO concluded in its decision (O-564/18) that it was clear that Beiersdorf’s mark enjoyed a significant reputation in respect of cosmetics, specifically skincare products (including sun tanning preparations) and shaving cream. It was established that the public would make the required mental “link” between the marks, given that (i) the marks were highly similar; (ii) NIVEA was an invented term and so had a high degree of inherent distinctiveness, which was enhanced by the use made of NIVEA meaning that the earlier trade mark enjoyed “the very highest degree of distinctiveness”; and (iii) the strength of the earlier mark’s reputation was significant.
Although skincare products and tobacco products are clearly miles apart and could be considered completely dissimilar goods, Beiersdorf’s NIVEA is well-known for products that care for the body and skin, as opposed to cigarettes, tobacco and other smoking related goods and paraphernalia (including alternatives to smoking) which are perceived as being harmful to health (albeit to varying degrees) and at least some of the goods are proven to be directly cancer-causing. Accordingly, the UKIPO concluded that any potential linking of the NIVEA brand with smoking related goods and accessories (and even alternative products thereto) would take unfair advantage of and be detrimental to the reputation of NIVEA as a brand and, therefore, the claim under Section 5(3) succeeded in its entirety.