When Boots launched its “Skin Clear Ultra” range in 2009, Reckitt & Benckiser (Clearasil) accused the retailer of seeking to create an association with the Clearasil Ultra sub brand. Two years on, Reckitt has backed down, but why if Clearasil Ultra was out there since 2005? Rosanna Foster clarifies the complexion of the case.
Topic: Brands
Who: Reckitt and Colman (Overseas) Limited (“Reckitt”) and The Boots Company PLC (“Boots”)
Where: UK Intellectual Property Office ("IPO")
When: 5 July 2011
Law stated as at: 6 September 2011
What happened:
Reckitt first used ULTRA in the UK for a range of CLEARASIL products in 2005. The CLEARASIL ULTRA mark (the “Reckitt Mark”) was registered for goods including cosmetics such as facial washes, facial moisturisers and therapeutic skin cleansers, medicated soap and medicated ointments, in November 2007.
In May 2009 Boots applied to register the trade mark BOOTS SKIN CLEAR ULTRA (the “Boots Mark”) for identical and similar goods. When Boots’ application was published, Reckitt opposed the application, claiming that registration would be contrary to a number of sections of the Trade Marks Act 1994 (“the Act”). The IPO Hearing Officer was not convinced of Reckitt's argument, and the opposition failed.
Likelihood of confusion – s5(2)(b)
Reckitt argued that there was a likelihood of confusion under s5(2)(b) between its mark and the Boots Mark given the use of the word ULTRA and the identical and/or similar products in relation to which both marks were registered.
The Hearing Officer first considered the level of visual and aural similarity between the two marks. It was decided that the uniqueness of the word CLEARASIL made it the distinctive and dominant element of the Reckitt Mark given that the average consumer usually pays more attention to the beginnings of marks.
Turning to the Boots Mark, this consisted of four words, and the Hearing Officer again saw the first word, the well known brand name BOOTS, as the dominant and distinctive element. The position of ULTRA as the final word in both marks meant it was not the distinct component of either mark. Combined with the dissimilarity between the other elements of the marks, the level of visual and aural similarity between the two was decided to be low to moderate.
Boots submitted that ULTRA had been added to the name of its skincare range to indicate to consumers that its products were of a “level above their previous range.” Reckitt submitted it had used ULTRA to allude to its products' “strength and efficacy”. The Hearing Officer concluded that conceptually ULTRA had the same effect in both marks. However, in view of the fact it had been decided that that ULTRA was not the dominant or distinctive element of either mark, it was not the concept which the average consumer would remember from either.
Therefore the Hearing Officer held that after the combined visual, aural and conceptual assessment, the overall similarity between the marks was low to moderate.
Having examined each of the marks in question as a whole, the Hearing Officer concluded that the two marks each had a distinctive ‘house mark’ (CLEARASIL and BOOTS SKIN CLEAR) which is nothing like the other and that the final shared element was of weak distinctive character for the goods. It was therefore concluded there is no likelihood of confusion between the two marks, and Reckitt’s opposition under s5(2)(b) failed.
Reputation in goods – s5(2)(c)
Here Reckitt argued that registration of BOOTS SKIN CLEAR ULTRA would be contrary to s5(2)(c) of the Act as it was similar to its own mark, and registration of the Boots' products would take unfair advantage of the Reckitt Mark's reputation in the United Kingdom, and would be detrimental to its distinctive character.
Reckitt contested that the CLEARASIL ULTRA mark was well known to a significant part of the public for acne treatment products, and it had developed a reputation. By adding ULTRA to BOOTS SKIN CLEAR it was suggested that Boots was attempting to trade on the reputation of the Reckitt Mark, giving them an unfair commercial advantage by “creating an association with the characteristics of the CLEARASIL ULTRA range in the mind of the relevant public”.
On this basis Reckitt argued that the Boots Mark's use of ULTRA was detrimental not only to the distinctiveness of the Reckitt Mark in the field of acne treatment products but also to the reputation which CLEARASIL ULTRA has acquired over the years.
Further, because the CLEARASIL business was formerly owned by Boots before being assigned to Reckitt in 2006, there was a serious risk, Reckitt submitted, of consumers buying BOOTS SKIN CLEAR ULTRA products in the belief that there was still a connection with the Reckitt's CLEARASIL ULTRA, thereby increasing the chances of association between the marks.
Having considered these arguments, the Hearing Officer accepted that Reckitt could establish reputation in its mark, but under section 5(3) of the Act it must also establish that there would be a link between the marks. The Hearing Officer concluded that, given the above finding that the only common element between the two marks was weak or low in distinctive character, while there was reputation for CLEARASIL ULTRA as a whole, there was nothing to suggest that the Reckitt Mark would bring that ULTRA element to mind in itself, without the well-known CLEARASIL preceding it. So as there would be no link between the marks in the sense of a bringing to mind, the opposition under Section 5(3) therefore failed.
Undaunted, Reckitt tried another tack…..
Use could be prevented – S5(4)
Reckitt argued that in light of the reputation of its ULTRA sub-range since its launch in 2005, it had unregistered trade mark rights which would enable it to prevent Boots' use of its ULTRA mark, through an action in passing off.
Under "passing off", a claimant must prove that its mark has acquired goodwill in the market, that there is a misrepresentation by the defendant leading or likely to lead the public to believe that goods offered are goods of the claimant; and the claimant has suffered or is likely to suffer damage as a result of the misrepresentation. Under s5(4) if such a right to prevent use exists, a trade mark should not be registered.
The first requirement was therefore for Reckitt to show that there was goodwill in ULTRA. However the Hearing Officer saw no basis for finding a separate goodwill in relation to ULTRA alone without the preceding word CLEARASIL. Given that ULTRA was weak in distinctive character, the public would be alive to the differences between the marks. This finding was unaffected by Boots' previous ownership of the Reckitt Mark as there was no reason to suppose that the average consumer for these goods would know of the undertaking behind ULTRA. The opposition under section 5(4)(a) therefore failed as well. Collapse of stout party.
Why this matters:
Here Boots have won as a result of having developed their own brand and branded product range to the extent that they are recognisable to consumers. Despite Reckitt's use of CLEARASIL ULTRA since 2005, this decision highlights the difficulty in preventing the use of elements in trade marks which lack distinctive character, even if they are preceded by a well-known and unique mark. This holds even when the mark has been used for some time. This emphasises the value of coming up with wholly unique marks which are more than descriptive.
Reckitt have the option to appeal the decision. Marketinglaw will follow up any possible further developments.
