KIPI Trademark Rulings
IN THE NAME OF INTER-CONSUMER PRODUCTS LIMITED AND OPPOSITION THERETO BY L’OREAL
Facts
Inter-Consumer Products Limited applied on 28 March 2006 to register the trademark “Nice & Lovely Herbal Oil Moisturizer” (TMA No. 58890) under Class 3 for beauty and personal care products. The application was published in the Industrial Property Journal on 31 May 2007. L’Oréal, the proprietor of the “Dark & Lovely” trademarks, filed an opposition on 7 April 2007, claiming proprietorship of several “Dark & Lovely” marks registered in Kenya and globally since 1992. L’Oréal argued that “Nice & Lovely” was confusingly similar to its “Dark & Lovely” mark, would likely deceive consumers, and would dilute the goodwill of its globally recognized and allegedly well-known trademark.
Inter-Consumer Products countered that the opposition was defective, time-barred, and based on ordinary English words that L’Oréal could not monopolise. They further argued that “Nice” and “Dark” are distinct, that “Lovely” was widely used in similar marks such as “Fair & Lovely” and “Soft & Lovely”, and that their products had been in use in Kenya for years without confusion.
Both parties filed statutory declarations with supporting evidence, including market presence, advertising expenditure, and registration history. After considering the documents and oral submissions, the Assistant Registrar of Trade Marks delivered a ruling addressing whether “Nice & Lovely” was confusingly similar to “Dark & Lovely”, whether the latter was a well-known mark under section 15A of the Trade Marks Act, and whether honest concurrent use existed.
Issue
Whether Inter-Consumer Products’ mark “Nice & Lovely Herbal Oil Moisturizer” could be registered under the Trade Marks Act, given L’Oréal’s opposition based on alleged similarity to “Dark & Lovely”, claims of well-known mark status, and potential confusion among consumers.
Rule
The determination was guided by sections 14, 15(1), 15(2), and 15A of the Trade Marks Act (Cap 506).
Section 14 prohibits registration of a mark likely to deceive or cause confusion.
Section 15(1) bars registration of a mark identical with or resembling another already registered for similar goods.
Section 15(2) allows registration of similar marks in cases of honest concurrent use.
Section 15A provides protection for well-known marks, preventing their impairment or unfair advantage by subsequent registrations.
Judicial precedents such as Pianotist’s Application, British Sugar Plc v James Robertson & Sons Ltd, Sabel v Puma, Lloyd Schuhfabrik Meyer v Klijsen Handel, and Office Cleaning Services v Westminster Cleaning were cited to assess similarity, distinctiveness, and likelihood of confusion.
Analysis
The Assistant Registrar approached the matter by comparing the marks visually, phonetically, and conceptually. The only shared element between “Dark & Lovely” and “Nice & Lovely” was the word “Lovely”, a common English adjective describing attractiveness—an apt descriptor for beauty products. The Registrar found that “Lovely” was neither an invented nor arbitrary word but a descriptive term that lacked distinctiveness when used for cosmetics. Consequently, L’Oréal could not claim exclusive rights over it.
Citing the British Sugar and Sabel v Puma decisions, the Registrar noted that strong, distinctive, or coined marks enjoy broader protection, whereas descriptive marks do not. Because the register contained numerous marks using “Lovely”—such as “Fair & Lovely,” “Soft & Lovely,” “Black & Lovely”—the public had become accustomed to seeing the word used by multiple traders, reducing any likelihood of confusion.
The Registrar further reasoned that consumer of beauty products are typically discerning, as such products affect personal appearance and are not purchased impulsively. Therefore, a typical consumer would easily distinguish “Dark & Lovely” from “Nice & Lovely”. Following Reed Executive Plc v Reed Business Information Ltd, the addition of distinct words like “Dark” and “Nice” was sufficient to differentiate the two marks.
Regarding L’Oréal’s claim that “Dark & Lovely” was a well-known mark in Kenya under section 15A, the Registrar found insufficient evidence. While L’Oréal had shown international registration and advertising, it had not demonstrated substantial recognition or enforcement of rights in Kenya, nor any judicial recognition of “Dark & Lovely” as a well-known mark. Moreover, Inter-Consumer’s mark had been used continuously for over five years without objection, invoking the defence under section 36B of the Act, which bars proprietors from claiming protection after acquiescing to use.
Finally, the Registrar found that the coexistence of “Dark & Lovely” and “Nice & Lovely” for several years without reported confusion constituted honest concurrent use under section 15(2). The evidence demonstrated both marks had operated distinctly within the Kenyan market, each having established goodwill.
Conclusion
The Assistant Registrar held that “Nice & Lovely” was not confusingly similar to “Dark & Lovely”, and that the latter’s mark, while reputable, was not sufficiently distinctive or well-known in Kenya to preclude registration. Given the descriptive nature of the shared word “Lovely,” the presence of similar marks on the register, and the demonstrated concurrent use without confusion, the opposition by L’Oréal failed. The Registrar therefore allowed Inter-Consumer Products Limited’s mark “Nice & Lovely Herbal Oil Moisturizer” (TMA No. 58890) to proceed to registration.
Ruling available here.