In its opposition to Sleepy’s trademark registration, Beiersdorf, the company behind Nivea, had invoked the tremendous reputation of the Nivea logo and jar. In support of this claim, the company submitted a large number of exhibits demonstrating this reputation. For example, we learn that the blue jar with the white letters was introduced nearly 100 years ago.
Beiersdorf also commissioned several surveys, with which it wanted to demonstrate not only the familiarity of the Nivea logo, but also the fact that the public will easily associate the Sleepy brand with Nivea.
A market study in Germany found that when shown an image in which the brand name Nivea is made illegible, a very large proportion of respondents still immediately recognize it as Nivea.
And another study showed that, when confronted with the Sleepy logo, 50% of test subjects makes a “mental connection” with the Nivea brand. The same study also shows that when confronted with the (invented) Pearl logo, only 5 % of test subjects thinks of Nivea.
Based on all the submissions made by Beiersdorf, EUIPO judges that the Nivea brand indeed has a high reputation in Europe. And in Germany, this reputation is even “exceptionally high”. The figurative mark Sleepy evokes the thought of the Nivea mark and benefits unlawfully from the reputation of Nivea, according to EUIPO. Therefore, the registration is rejected.
In opposition cases, you can still lose an upfront case if you submit rambling and messy evidence of use and reputation of the mark. For example, in the recent past, even very big trademarks have sometimes gone wrong (such as Big Mac and MasterCard). However, in this case the opposite happened: from the wording of the Opposition Division (for example, it speaks of an “impressive amount of evidence”), it appears that Beiersdorf and his lawyers had their act together: lots of solid and, above all, relevant evidence. This is an important ingredient for a successful opposition.