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| opposing mark |
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| 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.
