L’oreal Disputes Late Trademark Renewal Over ‘NKD’ Brand, With Which They’ve Coexisted For Years

One of the common excuses companies give when enforcing their trademarks in a way that is far more ham-fisted than is actually required is: Hey, we have to police our marks or else we risk losing them." This excuse often exaggerates that requirement, of course, as there is no need to police marks when there is no threat of public confusion or if the products operate in different markets. But what is notable about when this excuse gets trotted out is that it almost always happens when there is a brand new mark that has been applied for, or if a mark that is of concern gets approved by the USPTO without a dispute having occurred in the first place.

Which is what makes this attempt by fashion brand L'Oreal to block a small fashion brand so strange. We'll start off with the basics, but you really need to hold off judgement until we get into the specifics.

A salon owner says she has been left exhausted by a long-running legal battle with global cosmetics giant L'Oreal. The French firm is opposing Rebecca Dowdeswell's attempt to renew the trademark on the name of her business - nkd - in Leicester city centre.

L'Oreal has its own trademark on a series of beauty products called NAKED and has told the 48-year-old her use of the name nkd would cause consumer confusion".

So a couple of things to note here. First, nkd is a brand that isn't meant to be a short version of naked." Instead, it's meant to be read as each letter aloud, N-K-D." Also, the overall branding of the two brands are very different. However, as these products are both within the fashion market, you might be able to squint at all of this and see how there might be public confusion that L'Oreal might rightly be worried about.

But if that's the stance that L'Oreal wants to take, it would be an exceptionally weird one. See, the nkd brand has existed since 2009 and was trademarked by Dowdeswell at that time. The problem is that she let the mark lapse and is now attempting to get it trademarked again, essentially from scratch.

I should have renewed it straight away. I didn't. That was a big mistake," she said. That six-month window ran into the start of Covid and chaos ensued for all businesses - including beauty salons -and I missed the expiry. When I came to re-register the trademark, I was essentially starting from scratch, not renewing an existing one. L'Oreal objected on the basis they owned the Urban Decay make-up brand which has a range of eye shadow palettes called Naked. I was very surprised because we have never been Naked. We're spelled NKD, we are pronounced N, K, D."

Ms Dowdeswell added: There has never been any evidence of consumer confusion. In 15 years of trading, no-one has ever said are you the same brand as Naked by Urban Decay?'"

The obvious point here is that one of two things ought to happen. Either L'Oreal should produce any counter-evidence it might have that there really was actual customer confusion that it can document from the previous decade, or else it should drop its dispute entirely. After all, it's not often we get to run a real-world experiment as to whether customer confusion will actually occur, but in this case we have one. If these two brands coexisted peacefully for a damned decade, what justification for disputing the trademark could there now be?

And, even worse, nkd notes that it has even offered up to L'Oreal as part of a potential co-existance agreement" that it would remove the trademark classifications for non-medicated cosmetics" or make up" as that's where it might compete with L'Oreal. But L'Oreal's response was to demand that it also not hold the nkd" trademark on the toiletry preparations" category, which is a category where nkd's products do sit (while L'Oreal's do not).

Meanwhile, Dowdeswell has spent a bucket of money dealing with all of this. That's how trademark bullying tends to work, with a larger entity that enjoys a large legal war chest beating a smaller company into submission. Hopefully, that is not what occurs here.