The Supercalifragilisticexpialidocious FAIR

By Amir Murshidi

Women and beauty are inextricable. This irrefutable fact has led to tremendous cosmetic and beauty care products in the market, especially in more recent years. With make-up, everyone can be pretty as a picture and, lest we forget, it could also beguile us with one’s looks!

As the market has been very encouraging, cosmetic brands have come into sight massively. Although it may not seem fair, every business owner would have sought to monopolize the market in various ways for greater returns. In the intellectual property sphere, a case between two prominent cosmetic companies, KOSÉ Corporation v Unilever PLC is an instance of such.

Chronologically, KOSÉ Corporation (the Applicant) had filed its trademark application in Malaysia on 7th October 2010 in Class 03 in relation to “cosmetics; perfumes; cosmetic soaps; cotton for cosmetic use and hair care preparations” which was then published in the government gazette on 10^th November 2011. On 12th March 2012, Unilever PLC (the Opponent) had filed a Notice of Opposition against KOSÉ’s registration on the grounds that:

the Applicant’s mark, the Opponent’s marks as well as the goods claimed by the marks are identical/similar;
the Applicant’s mark is not distinctive or capable of distinguishing the Applicant’s goods;
the Opponent’s marks namely, “FAIR &LOVELY” and its variant are well-known and famous in Malaysia and as such, any use, application or registration of the Applicant’s mark is likely to deceive or cause confusion to the public and also the use of the Applicant’s mark will give rise to a passing off action; and
the Applicant is not bona fide owner of the mark.

Worth mentioning is that the Opponent’s goods were also in Class 03, including cosmetics, personal care and beauty care products. The marks are illustrated below:

The Applicant had vehemently denied all the statements and claims made by the Opponent, and supported their arguments with statutory evidence that the Applicant’s application for the mark is in full compliance of all the provisions in the Malaysian Trade Marks Act and the co-existence of the marks in Malaysia has not caused any confusion in the market nor will it cause confusion in the future.

The tough 6-year battle came to an end when the Assistant Registrar of Trade Marks eventually delivered a decision on 7th May 2018.

Upon assessing the Applicant’s mark and the Opponent’s marks, the Registrar was satisfied that the marks were not identical. In order to determine whether the marks are deceptively and/or confusingly similar, the Registrar had emphasized that the marks have to be compared as a whole. Although the marks share the word “FAIR” and the symbol“&”, the overall visual and aural elements are strikingly different. The presence of the word “RADIANCE” and the Applicant’s house mark “KOSÉ” which is well-reputed in Malaysia has further distinguished them. Consequently, the Registrar came to fathom that the Applicant’s mark is neither confusingly similar nor nearly resembles the Opponent’s marks.

Even though the goods both parties were claiming did somewhat overlap with one another, the evidence as presented had proved that their target markets and channels of distribution were very distinct. There was a huge price difference between the Applicant’s products and the Opponent’s products. The Applicant is targeting high-end consumers whereas the Opponent is targeting lower-end consumers and thus,reduced the likelihood of confusion in the public.

“Since the Applicant’s mark can be distinguished from the Opponent’s marks and based on the fact of the case, I am of the opinion that there is no real tangible risk that the public would be confused into believing that the Applicant’s goods have any connection with the Opponent”.

The Opponent was also thwarted under the relevant provisions concerning well-known marks as the Registrar had decided that the marks were not identical and not confusingly similar to each other. The opposition was dismissed in limine and “KOSÉ Fair & Radiance” continues to build its reputation resplendently.

What the Applicant had employed here was a brilliant business strategy. The inclusion of its famous house mark “KOSÉ” with the descriptive words “Fair & Radiance” makes the mark, by and large, distinctive and stronger.

An important lesson that could be learnt from this case is that it is vital to coin a strong mark that can withstand any attack by a third party. Using merely descriptive words as a trademark would not be wise as that weakens the defense in protecting your rights. Words which are descriptive should not be given monopoly to one trader, as other traders in the same course of trade may wish to use the same words or phrases to describe their goods or services. Now,that’s a fair practice for all parties to be radiant.

Note: The Applicant was proudly represented by KASS International.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.