The beauty industry is dynamic and constantly evolving, with indie brands continuing to emerge in competition with established leading names. In this increasingly populated industry, beauty brands must work hard to distinguish themselves from their competitors. This applies not only to brand names which are the identity and trading name of the business, but also to specific products or ranges which can become sub-brands within their own right – an iconic example being Charlotte Tilbury's 'Pillow Talk'.
These issues come to the fore when seeking trade mark protection. One of the common pitfalls when creating a brand or product name is over-reliance upon a product's features and characteristics. In trade mark terms, this may amount to being 'descriptive' and/or 'non-distinctive' and can mean that the registry considers the trade mark to be inherently unregistrable.
Whether seeking to register a trade mark or enforcing an existing registration against a third party, descriptive brands can raise many challenges for beauty businesses, unless it can be shown that the mark has acquired distinctiveness through use.
Difficulty securing trade mark registration
Descriptiveness and non-distinctiveness are both assessed by how the average consumer would perceive the sign in relation to the goods and services for which registration is sought. Several recent decisions from the EU Intellectual Property Office (EUIPO) involving beauty brands demonstrate the challenges in securing registrations for descriptive marks, although as considered further below it is can still be possible to register marks of this kind.
In each of the following cases, the mark was denied registration because it was found that it described the kind, intended purpose and/or quality of the goods and therefore reduced the mark to being descriptive and/or non-distinctive.
- Charlotte Tilbury's LIP BLUR for 'cosmetics' (class 3). The EUIPO Board of Appeal found that the sign conveys to the average consumer that the goods would achieve a blurred effect on the lips, for example by retouching lip contour wrinkles.
- Pat McGrath's DIVINE BLUSH for 'cosmetics; make-up' (class 3). The EUIPO considered the separate meanings of DIVINE ('splendid, perfect') and BLUSH ('a rosy glow') and held that the average consumer would perceive the sign as indicating products that would give one's skin a splendid or perfect rosy glow.
- Olaplex's HAIR PERFECTOR for 'cosmetics; hair care preparations; non-medicated toiletry preparations' (class 3). The mark was deemed to convey a characteristic of the goods, i.e. that they are intended to improve hair and make it perfect, and was refused. This objection was applied not just to 'hair care preparations', but to the other broader terms which include hair products within their meaning.
- Boots' NATURAL COLLECTION (logo) for various cosmetics and related goods in classes 3, 8, 16, 18 and 21. The EUIPO considered the sign to convey that the goods constitute a collection of cosmetics, toiletries, and products produced from, or mainly containing, natural, bio-based, or biodegradable ingredients and materials.
Nonetheless, it is possible to for trade marks to be validly registered even when they may be considered to contain descriptive elements, provided that the trade mark as a whole is nevertheless distinctive and non-descriptive.
For example, the EUIPO recently refused an invalidity application (on grounds of descriptiveness and non-distinctiveness) against a trade mark registration for PROBIOGLOW for 'cosmetics; soaps; essential oils; cosmetics; hair lotion' in class 3 (and other goods in classes 5 and 30). Visually and conceptually, the mark was found to be composed of two elements, PROBIO and GLOW. PROBIO was found to be a widely used abbreviation of 'probiotic' and would be understood as such. However, the combined mark PROBIOGLOW was considered not to be immediately descriptive of any characteristics of the goods in question and was therefore meaningless. The EUIPO Cancellation Division stated:
"There is no such thing as a probio(tic) glow. It is not used because it is not necessary to describe the qualities of probiotic goods. […] Probio(tic) relates to qualities of the goods, while glow would allude, at best, to the effect of the goods on physical appearance and/or health. The combination must be assessed as such and not dissected, part of it being conceptually applied to qualities of the goods and part of it being applied to possible effects of the goods on health and/or appearance."
Perhaps surprisingly, the registry considered that only some of the class 3 goods would be directly related to physical appearance (such as cosmetics, essential oils and hair lotion), but found that the term GLOW is not directly descriptive of any characteristics of these goods. This can be contrasted with the EUIPO's reasoning against the terms BLUR and DIVINE in the cases considered above.
Whilst the above decisions demonstrate the challenges in securing trade mark protection for marks of this nature, it should be noted that these applications are always subject to examination by the relevant trade mark examiner, and it may still be possible to secure registration (including by filing arguments to overcome any objection). This is demonstrated by the approaches taken by different registries, notwithstanding that the law across the EU is harmonised, and furthermore continues to be broadly harmonised between the EU and UK. For example, Boots' NATURAL COLLECTION (logo) mark was accepted for registration in the UK, whilst Olaplex's HAIR PERFECTOR mark has been registered in EU Member States Poland and Italy.
Furthermore, even where a trade mark has been refused on grounds of lack of inherent distinctiveness, objections based on descriptiveness and/or non-distinctiveness can be overcome by showing acquired distinctiveness through use in commerce. It must be shown that a significant proportion of the relevant public have come to recognise the trade mark as designating the goods/services of the trade mark owner. This is a fairly high evidential bar, particularly when seeking to register the mark at EU level.
Even when trade marks with arguably descriptive or non-distinctive elements are accepted for registration, there can be continued challenges in the context of trade mark enforcement. Whether enforcing against third party use of a conflicting mark in the market, or seeking to oppose or cancel a trade mark before the registries, trade marks with descriptive elements are considered to have a lower scope of protection than other trade marks.
This principle was recently confirmed by the EU General Court in Korres v EUIPO, where the proprietor of the HYDRABIO trade mark registration opposed an application for the below HYDRA-BIOME logo mark, for identical and highly-similar cosmetic goods in class 3.
The Court found that there was no likelihood of confusion between the two marks, overturning both the EUIPO Opposition Division and Board of Appeal, for the following reasons:
- The earlier mark had limited distinctiveness, as it would be perceived by the relevant public as referring to hydration (HYDRA) and to the natural characteristics of the goods concerned (BIO).
- Although HYDRABIO was repeated in its entirety within HYDRA-BIOME leading to partial identity, the weakly distinctive nature of HYDRABIO reduced the relative weight of this consideration.
- Overall, the marks shared only a weakly distinctive sequence which meant that there was no likelihood of confusion.
The Korres decision demonstrates the inherent difficulty with seeking to enforce trade marks with arguable vulnerabilities in terms of descriptiveness and non-distinctiveness. However, it may still be possible to successfully enforce trade marks with arguably descriptive elements, as demonstrated by the following EUIPO recent decisions:
- NUTRACEL vs NUTRACELL (logo). The earlier mark was considered to have weak distinctiveness, since it alludes to the properties of the relevant goods i.e. to feed, nourish or strengthen. Nevertheless, there was found to be a likelihood of confusion as the marks were visually highly similar, aurally almost identical and conceptually identical.
- DERMASOL BY DR. PHYTO vs DERMASOLAR. The earlier mark was considered to have low distinctiveness, as it denoted skincare for sun-protection. Even so, there was found to be a likelihood of confusion as there was a sufficiently strong visual, aural and conceptual similarity.
DERMASOL BY DR. PHYTO
Similarly in the UK, an opposition by the proprietor of COLOR WOW (word and logo) marks against an application for WOW COLOUR (logo) was upheld by the UK Intellectual Property Office. Although the earlier marks were deemed to have low to medium distinctiveness, nevertheless there was a likelihood of confusion.
It was also reported that Kate Moss's new skincare brand received an opposition against its UK application to register its brand name, brought by the proprietor of an earlier registration for PHARMACOSMOS. However, the proceedings have appeared to settle, as the opposition has been withdrawn and the COSMOSS trade mark is now registered.
Collectively, these decisions demonstrate that, whilst it may be possible to rely upon trade marks with arguably descriptive or non-distinctive elements, this will always depend upon the relevant facts, and a high degree of proximity will be required in order to succeed.
Beauty brands should be alive to the principles relating to descriptive and non-distinctive trade marks when creating brand and product names. The tendency to promote the qualities of certain goods is understandable, but can pose significant brand protection challenges.
Tiffany Masterson, the founder of premium skincare brand 'Drunk Elephant' recently stated (when collecting her CEW Achiever Award 2023): "Everyone thought I was mad trying to start a skincare line. I then told them the name was going to be Drunk Elephant and they thought I was even more mad".
In fact, as we have seen, fun and memorable brand names of this kind can circumvent many of the brand protection issues that arise in relation to more descriptive beauty brand names.