In the latest trade mark dispute to hit the news, UK-based beauty salon company StripTweeze Ltd (trading as ‘nkd’) is facing opposition from French beauty conglomerate L’Oréal to its UK trade applications for (1) the signs nkd / NKD for beauty salon services in Class 44, and (2) the signs nkd ( ) / NKD ( ) for cosmetics in Class 3 and beauty salon services in Class 44. Both applications were filed in May 2022.
L’Oréal is the owner of various UK trade marks consisting of/containing the word ‘NAKED’ and covering cosmetics in Class 3, the earliest of which dates from October 2004. The ‘NAKED’ brand is used by L’Oréal’s subsidiary, Urban Decay, primarily in connection with a range of eye shadow palettes.
Dehns has posted a number of articles on these types of ‘David v Goliath’ battles, including a piece on the BOSS dispute made famous by Joe Lycett (see https://www.dehns.com/insights/joe-lycett-shows-luxury-fashion-house-whos-boss/), and the comments made there regarding the importance of taking into account the PR angle for brand owners when considering enforcement action still hold true.
However, something particular to this case appears to be the issue of unfortunate timing.
Firstly, it was announced just last week that Urban Decay will be re-launching the original ‘NAKED’ eyeshadow palette. Between 2010 and its discontinuation in 2018, over 30 million ‘NAKED’ palettes were sold worldwide (including, I must admit, one that still lurks in my make-up drawer as my first paycheck splurge when I started life as a trainee Trade Mark Attorney all those years ago).
Since that time there have been numerous ‘NAKED’ spin-offs, but the re-launch of the original palette suggests an increased interest in the brand by L’Oréal (which typically results in a corresponding increase of efforts to enforce rights pertaining to that brand).
Secondly, StripTweeze previously owned a UK trade mark registration for the signs nkd ( ) / NKD ( ) for beauty salon services in Class 44 between October 2009 and October 2019. However, this registration was not renewed on time, with the result that the business needed to file a fresh trade mark application.
As well as the risk of intervening rights filed between 2009 and the fresh application in 2022, filing a trade mark application in the UK can pique the interest of a third party because they may be notified of that application in case they want to oppose. This might be through notification by the UK IPO itself, or via a commercial trade mark watching service.
In this case, whilst L’Oréal’s trade marks had coexisted with StripTweeze’s existing registration for many years, the expiry of that trade mark left StripTweeze having to seek fresh trade mark protection at a time where L’Oréal appears to have been reviving their interest in the ‘NAKED’ brand (as above).
Therefore, brand owners should make sure that they renew their trade mark registrations on time, or at least within the subsequent grace period to do so. If a trade mark expires and is not late-renewed up to six months later, the possibility of reinstating that registration is very limited. There is a further six-month window during which the owner can apply to ‘restore’ the trade mark to the Register, but such restoration carries a fairly high bar and relies on the failure to renew being ‘unintentional’ (which typically requires proof that the owner or their representative did not know, or was not informed about, the deadline).
Whilst we do not know the specific background to this dispute or the interactions between the parties, this matter does at least serve as a reminder that registering your trade mark is not the end of the story – trade mark portfolios should be reviewed, renewed and maintained to avoid any potential vulnerabilities that could potentially be taken as an opportunity by an interested third party.