Nivea stamps out cigarette trademark at UKIPO

Beiersdorf, the parent company of skincare range Nivea, has successfully opposed a trademark application for products relating to smoking.

The UK Intellectual Property Office (IPO) held in favour of Beiersdorf on Tuesday, September 11.

In August 2017, UK-based Just Enough Programme applied to register a figurative mark featuring the word ‘Nivea’ and a circular swirl at the UK Intellectual Property Office (IPO).

The mark was published in September 2017 for goods in class 34, which covers cigarettes, electronic cigarettes and related products.

Germany-based 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.

The German company argued that 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 response, Just Enough Programme filed a counterstatement, disagreeing that the public would make a connection between the goods offered by the 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.

Louise White, on behalf of the IPO, said that it is clear that Beiersdorf’s earlier trademark enjoys a significant reputation in respect to cosmetics.

In her decision, White said 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.

White noted that the earlier mark enjoys a distinctive reputation as ‘Nivea’ is an invented term.

She concluded that it is inevitable that a consumer would immediately bring to mind Nivea upon seeing Just Enough Programme’s trademark.

Beiersdorf was successful in its opposition, and Just Enough Programme was ordered to pay Beiersdorf £1,250 ($1,640).