Nivea versus Rexona: Nivea wins battle against rival to trademark 'Black & White'

Friday, 15 February 2019

The German multinational that owns Nivea has won rights to trademark 'Black & White'.

Nivea is the only personal care brand in New Zealand that can now use the term 'Black & White' to sell its deodorants and anti-perspirants, after winning a five-year-long legal stoush against its competitor.

Nivea owner Beiersdorf AG legally owns the trademark 'Black & White' beating out competitor Unilever, owner of Dove and Rexona, over the rights, a recent High Court judgment showed.

The German company first applied to trademark 'Black & White' in September 2014 but Unilever was quick to oppose it.

The Intellectual Property Office of New Zealand (IPONZ) allowed Unilever's opposition on the basis that 'Black & White' was not a distinctive character, and the words describe the characteristic or purpose of a product.

Beiersdorf AG first applied to trademark 'Black & White' in September 2014 but Unilever PLC was quick to oppose it.

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But Beiersdorf AG appealed the decision claiming the intellectual property office erred in both findings, and took the case to the Auckland High Court.

Unilever claimed the words 'black' and 'white' were not distinctive and described the purpose of their product, which was a deodorant that did not stain black and white clothing.

The appeal was pushed back, but not withdrawn because of a secret settlement between the two parties.

Beiersdorf AG and Unilever PLC had a secret settlement the terms of which were not disclosed, but the appeal was still not withdrawn.

The terms of the settlement were not detailed to High Court Justice Anne Hinton who heard the case, and Unilever didn't make further submissions apart from the evidence given before IPONZ to fight the appeal.

Hinton said this made for an 'awkward' appeal as Unilever essentially did not fight it.

According to trademark law, a name was distinctive if it denoted the origin of a product and distinguished it from its competitors.

Unilever argued it had used the words 'black' and 'white' in 2012 in Spain, South Africa and Russia, but had no evidence of selling products with the words on them in New Zealand.

Hinton found there was no concern about non-distinctiveness in New Zealand.

'There is no question that registration should be denied to some existing phrases or words which have become synonymous with some manner of functionality, or even to some proposed phrases or words,' Hinton said in her decision.

'For an existing mark, a non-distinctiveness finding will probably follow if it has been used by more than one trader, so that consumers would be confused as to origin, even if there were other ways of conveying a claim.'

But there was no evidence of Unilever using those words to sell its products New Zealand.

Hinton said brands could advertise their anti-mark claims by using other claims including 'darks and lights' or 'navies and creams' instead of 'Black & White'.

As Hinton had already determined that 'Black & White' was distinctive, IPONZ's second finding that was also appealed that the term was just words to describe a product, was also dismissed.

Intellectual property lawyer Sebastien Aymeric said the case was unusual as there was a settlement between the two parties, the terms of which were not disclosed.

'We don't know what the settlement terms are so it's hard to determine what steps Unilever will take. In her decision the judge did say she was in an awkard position and it was possible the companies agreed on a duopoly share over the name, [Unilever] may not be required to pull their products that have black and white written on them since 2014. We don't know.'

'Unilever also did not take any further substantive steps to fight the case in the High Court.'

Beiersdorf AG and Unilever have been contacted for comment.