Friday, 8 June 2012

Kenya: DARK & NOT LOVELY day for L’Oreal in Trade Mark dispute

opposing mark
Opposed mark
In L’Oreal v Interconsumer Products Limited (unreported), the High Court of Kenya in a ruling delivered on 21st February 2012, dismissed an appeal filed by L’oreal against the decision of the Registrar of Trademarks rejecting L’Oreal’s opposition to the registration of the mark NICE & LOVELY HERBAL OIL MOISTURIZER (opposed mark).

On 28th March 2006, Interconsumer applied to register the opposed mark in class 3 of the Nice Classification.  L’Oreal opposed the application based on a variety of its earlier marks registered between 1992 and 2004, notably:

DARK AND LOVELY
DARK AND LOVELY CHOLESTEROL PLUS
DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME
DARK AND LOVELY DL PRECISE
DARK AND LOVELY ULTRA CHOLESTEROL.

In addition to the opposed mark Interconsumer had also registered the mark NICE n LOVELY in 2002, which was not in dispute.

The Registrar on 27th September 2010 rejected the opposition. L’Oreal had argued before the Registrar that the opposed mark was similar to the earlier marks, and that its products were well known in Kenya and as a result, the opposed mark would be deceptive and cause confusion in the market.

After hearing the parties, the registrar concluded that the mark NICE & LOVELY was not similar to DARK AND LOVELY and there could be no confusion under section 14 and 15 of the Trade Marks Act. The Registrar also concluded that L’Oreal had failed to show that its trademark was well known in Kenya. The Registrar further found that there had been honest concurrent use and both marks could co-exist in the Register.

L’Oreal appealed to the High Court primarily on the grounds that;   

The register had misdirected herself by reducing the opposition to a comparison of the marks NICE & LOVELY and DARK AND LOVELY.
The Court agreed with the registrar’s finding. The Court also approved the registrar’s reliance on the test for comparing word marks laid down by Parker J in the Pianoist case [1906] 23 RPC. The Court also agreed with the Registrar that the opposing mark was not strong because each of the words DARK and LOVELY had been disclaimed as a condition of registration of the mark. On the appellant’s reliance on a decision by USPTO’s Trademark Trial and Appeal Board, which had sustained opposition in a similar matter (opposition No. 91185552), the Court distinguished the two cases in that the USPTO’s decision was largely informed by the fact that there was no evidence of other similar marks in the USPTO’s register. 

The Court also considered but distinguished the South African case of Plascon-Evans Paints (TVL) Ltd. v Van Riebeck Paints (Pty) Ltd,  1984 (3) SA 623, relating to the marks MICATEX and MIKACOTE in which the two marks were found to be similar and likely to cause confusion. 

No evidence was tendered to show that Interconsumer had used the mark NICE & LOVELY HERBAL OIL MOISTURIZER to support the Registrar’s finding on honest concurrent use.

The Court agreed with the registrar’s finding that the respondent had used the mark NICE and LOVELY since 1st March 1999 and the appellant had not tendered any evidence to show that it had objected to the use of the mark in the last five years. As a result, the Registrar could not be faulted for concluding that the appellant had acquiesced in the respondent’s use of the mark.

The registrar did not consider L’Oreal’s evidence of use in Kenya of the mark DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME and therefore the Registrar erred in not finding that the mark was well known in Kenya.

The Court disagreed with the registrar’s finding that the appellant had not proved that the mark DARK & LOVELY is well known in Kenya. The Court observed that between 2000 and 2006 the appellant marketed its goods in Kenya under the opposing trademark and had spent 102,000 SA Rand in 2004 and 408,000 SA Rand in 2005 in promoting the product in Kenya. Surprisingly the Court also concluded that both marks were well known in Kenya and there has been honest concurrent use!

The registrar erred in finding the phrases “& lovely” or “and lovely” to be descriptive of goods in class 3.
The Court agreed with the Registrar who had considered the fact that there were many marks in the Register containing the two phrases and registered by different proprietors who had also disclaimed the word LOVELY - since it was descriptive of goods in class 3. The Court observed that, “when trade marks with a common element are compared it also has to be established whether there are other trademarks on the register and used by different owners that have the same common element”. If so, “the consumer will have become accustomed to the use of this element by different proprietor and will no longer pay special attention to it as a distinctive element of the mark”.

The registrar erred in finding the mark NICE & LOVELY HERBAL OIL MOISTURIZER not similar to DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME.

The Court did not consider this ground, but even if it had done so, perhaps it could not have made any difference in the outcome considering the descriptive elements in both marks.

Lessons for trade mark owners

Trademark owners should be aware of the risks of registering trademarks “held” by disclaimers or readily agreeing to put disclaimers as a condition of acceptance of trademark applications by the Registrar. A disclaimer could, in adulthood, turn out to be the “Achilles heel” of the trademark - just like the Greek warrior Achilles who as a baby his mother tried to make him immortal by bathing him in a magical river but the heel by which she held him remained his weakest point at the siege of Troy.

Likewise, trademarks owners should be wary of trademarks with non-distinctive elements as those elements are likely to be ignored during opposition or infringement proceedings.

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