Since October 2004, L’Oréal has held a UK registered trade mark for the word Naked (registration number UK00002376638) in goods class 3 for cosmetics and other toiletry items, in relation to its cosmetic sub-brand, Urban Decay Naked.
StripTweeze Limited, trading as nkd () salons, previously held a trade mark for the logo marks nkd () and NKD () in class 44 (services relating broadly to beauty salons and beauty therapies) under registration number UK00002527410. This registration expired in 2019.
The business filed new trade mark applications for word and logo marks relating to nkd () in classes 3 and 44 (registration numbers UK00003787643 and UK00003787635) in May 2022. L’Oréal objected to both of these applications in September 2022.
According to the owner of nkd () salons, Rebecca Dowdeswell, L’Oréal not only formally opposed the trade mark applications but also demanded that the business cease using the brand name nkd altogether. Ms Dowdeswell stated that L’Oréal cited a likelihood of consumer confusion between the products and services offered by nkd () salons and those sold by L’Oréal.
An opposition can be raised by a registered trade mark owner against an applicant where the applied-for mark is identical or similar to an existing registered mark. Where the marks are merely similar, rather than identical, it is necessary to prove that there is a likelihood of confusion among consumers.
To succeed in proving a likelihood of confusion in trade mark infringement, it must be shown that the average consumer might mistake the two trade marks, or believe that the goods and services come from the same or economically linked undertakings.
When determining the likelihood of confusion between two trade marks, several factors are considered, including:
- How similar the trade marks look
- How similar they sound when spoken aloud
- Conceptual similarity
- The similarity or overlap in the goods or services protected by the marks
- How distinctive the registered trade mark is
L’Oréal has recently reduced the scope of its objection to the nkd () trade mark applications, dropping part of it so that it no longer opposes registration of the marks in relation to waxing services and certain related goods. However, a dispute remains over whether the trade marks can be used on other products. A decision on the case is expected within the next six to nine months.
This is not the first time that L’Oréal has pursued a small business over the use of the word Naked in the body care sector. In 2017, L’Oréal sent a cease and desist letter to Scottish company The Naked Soap Company, despite the fact that the business produced bath bombs rather than cosmetic products.
This case highlights the importance for brands of ensuring their trade marks are renewed on time to avoid the risk of challenges, particularly from larger companies. A missed trade mark renewal could cost a business its identity. Staying on top of renewal deadlines, filing early, and registering across all relevant classes and territories where the brand may grow can help prevent costly and lengthy legal disputes.
