'Nivea' a product name we have all heard and most likely, have used since time immemorial. The brand is well known for its skin care products.
In August 2017, a UK-based Company, Just Enough Programme (hereinafter referred to as JEP), applied to register a mark featuring the word 'Nivea' in the form of a label at the UK Intellectual Property Office (IPO). The mark was accepted by the UKIPO and thereafter published in September 2017 for goods in class 34, covering cigarettes, electronic cigarettes and the likes. Nivea, a Germany based company, opposed the trademark application on the ground that it was similar to the company's registered trademark 'NIVEA' for cosmetic products.
The German Company further claimed that their trademark 'NIVEA' was well-known and has been widely advertised since 1922 and if a mark consisting the term 'NIVEA' was used by the applicant in the tobacco industry, the likelihood of confusion arising among the public who will believe that they have expanded into the tobacco industry. Further, NIVEA products are known for skincare whereas tobacco is considered harmful. The German Company, also stated that, NIVEA cosmetics was involved in the Charity Cancer Research UK and the registration of the mark NIVEA for tobacco is likely to hamper and tarnish the image of the cosmetic company.
The Intellectual Property Office concluded that though JEP created a unique label however, the use of the trademark NIVEA results in the marks to appear virtually identical. The IPO went on the state that, the NIVEA cosmetic brand enjoyed distinctive reputation since it was an originally coined term. The Beiersdorf's opposition was thus successful and the UK Company 'Just Enough Programme' was ordered to pay damages worth USD 1640.
Thus, it can be concluded that in a case where two companies with similar trade names, the prior adopter of the mark can oppose the application for registration by later adopter of the mark even if the goods or services produced/provided are significantly different from one another.
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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