Despite its reputation, Nivea has so far been unable to prevent the Body Minute brand from being registered on a blue background. Insights and explanations from Sylvie Benoliel-Claux, lawyer at the Paris Bar.
The facts
Beiersdorf, owner of the semi-figurative EU trademark Nivea, filed an opposition with the EUIPO (European Union Intellectual Property Office, located in Alicante) against the registration of the complex trademark Body Minute, on the grounds that it damaged the reputation of its trademark and created a likelihood of confusion.
The solution
The opposition was initially upheld by the Opposition Division of the EUIPO and the registration of the Body Minute trademark was refused, as the damage to reputation was recognized.
However, the Board of Appeal of the Office decided otherwise and overturned this decision, ruling that the relevant principles of trademark law had not been correctly applied.
Lessons from the decision
➡️ The reputation of the Nivea brand is undisputed; it is accepted that this brand enjoys “enormous” renown in the European Union, particularly in its country of origin, Germany.
➡️ Infringement of a well-known trademark requires proof of:
i) the identity or similarity of the trademarks in dispute,
ii) the reputation of the earlier trademark,
iii) the risk that the contested trademark will take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trademark.
➡️ …
