One [very small] victory for nkd in our ongoing attempts to defend ourselves against the world’s largest cosmetics and personal care company L’Oreal is that we have filed our own trade mark actions against the seemingly omnipotent French giant, just as they have previously done to us.
I have filed applications with the UK Intellectual Property Office (IPO) to revoke L’Oreal’s registrations of its “NAKED” trade mark on the basis that the French conglomerate has repeatedly registered the mark for a far wider scope of products than it has ever actually used, resulting in a misleadingly broad and defensive trade mark registration.
This is a practice that is increasingly being recognised and clamped down on (as seen in last year’s ruling against Sky by the Supreme Court, the UK’s highest Court). If successful, these revocation actions would significantly limit the scope of products that L’Oreal’s NAKED mark is registered for in the UK.
Trade mark attorney and IP specialist Aaron Wood explains “These new applications to revoke L’Oreal’s trade marks for NAKED should ease some of the burden on other SMEs who would otherwise find themselves in the same position Ms Dowdeswell has found herself.”
L’Oreal, which is one of the world’s most prolific filer of trade marks, has previously been challenged within the EU level for similar reasons which had already lead to the revocation of some its NAKED marks in Europe, but that hasn’t stopped the company from launching legal action against a number of small UK businesses which it claims to be infringing on the name.
Aaron Wood explains that L’Oreal’s trade marks for the NAKED mark are liable to be revoked from the UK register if they have not been used for the items for which they have been registered. For example, one registration covers “cosmetics” whilst NAKED has arguably only been used on a small subset of make up products (eyeshadows) so L’Oreal should not keep its registration for cosmetics as a whole. Another registration covers items such as sun tanning lotions, essential oils, incense sticks and deodorants, whilst a final one covers perfumes and eau de toilette, none of which L’Oreal has ever applied its NAKED mark to, despite registering the first NAKED trade marks as early as 2004.
“The stockpiling of trade marks is a recurring problem, where big businesses amass big “forests” of trade marks and seek to use them against companies – particular smaller companies”, says Wood. “We’ve seen this recently in the news with Sky Vs Skykick. Whilst there are procedures to remove these registrations and bigger businesses can combat these excesses, these are not as well known about by SME’s and there is a cost to challenging the trade marks of big companies. For many SMEs this cost is just too high, and the result is that multinationals are able to force SME’s to comply under financial pressures using complex procedures not easily understandable by small businesses. It is quite likely that if the interests in the NAKED brand were only in eyeshadows or a subset of toiletries then it was bad faith not only to apply for the long list of products that they had covered, but even to cover the broad term “cosmetics” itself”
From my own point of view as a small business owner, I don’t see how it can be fair or right that small companies such as mine are put in this position. If the huge corporations didn’t routinely exploit their power and abuse the rules of the UK IPO, knowing that they will likely get away with it due to their sheer size and domination of the market, then this situation wouldn’t arise in the first place.
These counter actions against l’Oreal are the latest twist in the prolonged, expensive and traumatic trade mark dispute which I’ve now been trapped in with L’Oreal for 2 ½ years. L’Oreal, which is the largest cosmetics and personal care company in the world with a market valuation of more than US$250 billion, opposed the attempted registration of my “nkd” trade marks back in the summer of 2022 and said that I had to change the name of my small business altogether, despite the fact that nkd has been trading under that name since 2009, and that I had held the relevant trade marks for 10 years.
L'Oreal’s opposition is based on its NAKED eyeshadow palettes which it sells under the Urban Decay make up brand. However, as I continue to point out, nkd and NAKED are not only spelt differently but also pronounced differently.
I also remain hugely frustrated by the fact that the two brands actually operate in completely different segments of the vast beauty market. L’Oreal only applies the NAKED mark to a handful of eyeshadow palettes while nkd only offers waxing and hair removal aftercare products as well as waxing treatments and specialist wax training. We have no commercial interest in make up, which we have explained repeatedly to L’Oreal right from the start. We have always been prepared to amend our trade mark registration to remove make up or cosmetics and so eliminate any possible risk of consumer confusion and put a swift and reasonable end to all this, but L’Oreal have repeatedly refused to accept this as a compromise.
To date I’ve spent tens of thousands of pounds in legal fees and have ended up closing an important and precious part of my business, which became victim to what has been a totally unnecessary and overtly aggressive legal campaign against my small business by the French giant. What makes this even worse is just how many make up and cosmetic brands actually include the word NAKED in their brand name and have been successfully trade marked in the UK – which makes this whole thing even more of a nonsense.
The cancellation notices can be viewed here
https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00915874928
https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002548890
