Owner of Nivea butts hopes for cigarette trade mark
On September 11th, the UK Intellectual Property Office (IPO) held in favor for Beiersdorf - the parent company of skin care and cosmetics range Nivea in the recent smoking trademark case.
The UK company ‘Just Enough Programme’ applied to register a figurative mark which was published in 2017 for use of goods in class 34 covering: cigarettes, electronic cigarettes and related products. The figurative mark featured the word ‘Nivea’ and a circular swirl according to a report published by the World Intellectual Property review. Although the swirl was visually different to the Nivea mark, the wording element meant the marks were almost identical.
German based cosmetic giant Beiersdorf opposed and prevailed the case on the basis that it was similar to their earlier trademark registered for cosmetic products and the likelihood that consumers could presume there was a connection between the two marks - potentially damaging its reputation as a leading skin care brand who are notably in support of the charity Cancer Research.
The Just Enough programme filed a counterstatement suggesting the public would not make a connection between the two marks due to the evident difference of the type of product.
However, in a witness statement, director of Corporate Business Law Products and Trademarks, Carol Beckman said “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 skin care and personal health”.
Successful in its opposition, Just Enough Programme was ordered to pay Beiersdorf £1,250. Smoking may be a dying habit after all…
By Sena Tokel, a law student at Southampton Solent University