With three new decisions in April 2024 from the Opposition Division of the EUIPO, Beiersdorf Ag, the German company behind the brand NIVEA, has succeeded in oppositions concerning their famous blue and white trademark. The decisions have prevented registration of three trademarks from Kiilto Family Oy [1], Finland. The EUIPO has assessed that the overall visual layout of the KiiLTO trademarks will be perceived as an imitation of the NIVEA trademark, as the NIVEA trademark has an ”exceptionally high reputation” in Germany.
Although the words ”NIVEA” and ”KiiLTO”, which are included in the respective trademarks, at first glance do not immediately appear to be confusingly similar, it is a different situation, as soon as the figurative elements of the trademarks are included. Despite the different names, the EUIPO has recently decided that three logo trademarks, figurative marks, from Kiilto Family Oy cannot be registered, because the NIVEA trademark has obtained exceptionally high reputation among consumers in Germany. Thus, the EUIPO assesses that several of at least the German consumers will establish an association or “link” between the KiiLTO trademarks and the NIVEA trademark because of the figurative elements with white writing on a dark blue, circular background.
Beiersdorf Ag, who is behind NIVEA, presented a market survey of the NIVEA trademark compared with the ”clean” KiiLTO trademark (EU trademark no. W01483488). Almost 1.000 consumers were asked about their thoughts and associations, when they were presented with the KiiLTO trademark. 30% of the respondents evoked mental connections (spontaneous associations) with the NIVEA trademark, and 20% of the respondents even thought that the trademarks came from the same company. By merely looking at a centered, bold, white writing on a dark blue circle, the German consumers associated the KiiLTO trademark with the NIVEA brand.
NIVEA figurative mark (EU trademark no. 10256782)
The three figurative marks for which Kiilto Family Oy, Finland, has filed for trademark registration (EU trademark no. W01483488, W01483329, and W01472640)
[1] W01483329 KiiLTO PRO has only been refused for goods filed in class 3, as it was only the goods in class 3, which was contested by Beiersdorf Ag. Hence, the trademark KiiLTO PRO can be registered for the remaining goods in the other classes, classes 1, 2, 5, 17 and 19.
Risk of unfair advantage of the NIVEA trademark’s distinctive character or repute
The EUIPO has assessed that the KiiLTO trademarks take unfair advantage of the distinctive character or the repute of the NIVEA trademark, so-called free-riding, where the KiiLTO trademarks are likely to take unfair commercial advantage of the goodwill and repute of the NIVEA trademark. Furthermore, the EUIPO has assessed that there is risk of the KiiLTO trademarks can be detrimental to the repute of the NIVEA trademark, so-called tarnishing, because the KiiLTO trademarks also has been filed for a number of products, which may have an undesirable, questionable, or negative impact on the consumers’ associations with the NIVEA trademark, which conflicts with the associations and image, prestige and goodwill acquired by legitimate use of the reputed NIVEA trademark by Beiersdorf Ag.
Kiilto Family Oy has appealed the decisions regarding the two trademarks KiiLTO (EU trademark no. W01483488) and KiiLTO PRO (EU trademark no. W01483329) to the EUIPO Boards of Appeal.
It is not the first time that Beiersdorf Ag has enforced the NIVEA trademark against other trademarks with similar figurative elements and graphic layout. They also did that in, inter alia, an opposition at the EUIPO in 2022 against the trademark W01480173 Sleepy NATURAL (figurative mark), where Beiersdorf Ag presented a similar market survey with more or less the same outcome.
Important to also consider the figurative elements
The decisions emphasize that you as a company should not only consider whether your company and product names are similar to others, but also have to take into account the figurative elements and the graphic layout of your and other companies’ trademarks. Designing a brand requires careful consideration – you cannot just let creativity flow without thought. It is important to think of the entire process.
If you are also considering to register your trademark and you are in doubt as to whether the trademark has the necessary distinctive character to obtain trademark registration, or as to whether there is a risk of infringement of another company’s trademark, you can contact one of our trademark experts for a non-binding initial conversation.
