Media reports have emerged suggesting that StripTweeze Limited, a hairdressing and beauty business in Leicestershire, has become engaged in an intellectual property dispute with one of the World’s leading beauty brands, L’Oreal.

According to records held at the Intellectual Property Office, StripTweeze Ltd had owned a figurative UK trade mark “nkd ( )” which is depicted below from 1 October 2009 until it expired on 1 October 2019 (UK00002527410).

Unfortunately, Mrs Dowdeswell did not renew the trade mark.

How is a trade mark renewed?

A trade mark must be renewed every 10 years. You can renew a trade mark up to 6 months before and up to 6 months after it expires. It is a fairly straightforward process in which a fee of £200 is paid to the IPO for the first class of goods or services, and then £50 for each additional class. In this case, the mark was registered in class 44 only, which includes beauty related services. Therefore, the renewal fee would have been just £200, which would have extended the trade mark’s life for another ten years until 2029.

What happened?

As explained above, the trade mark was not renewed, nor was it restored (a separate process where you can revive a dead trade mark between 6 months to 1 year after it has expired). Therefore, almost 3 years later, StripTweeze applied for two new trade marks on 13 May 2022 – one of which was a series mark including the old mark’s figurative design depicted above (UK00003787635) in class 3 (cosmetic products) and class 44 (beauty services), whilst the other application was a series mark for the word element only, “nkd” and “NKD”, in class 44 only (UK00003787643).

Unfortunately for StripTweeze Limited, L’Oreal’s legal team monitor the trade marks register for any new trade mark applications which may threaten its existing brands. Consequently, whilst Mrs Dowdeswell’s old trade mark was filed in 2009 and flew under the radar, her new applications were both opposed by L’Oreal.

It has been reported that, as part of the opposition, L’Oreal is relying on its ‘NAKED’ brand, for which it owns numerous UK trade marks – most of which are in class 3 (cosmetics), with some marks also including class 21 (make-up products) and 44 (beauty services).

According to a BBC News article, StripTweeze Limited has subsequently spent £30,000 plus VAT on legal fees. L’Oreal told the BBC that they are “wholly committed” to resolving the dispute and that they have communicated an offer that supports Mrs Dowdeswell’s business.

Comment

This is a timely reminder to business owners to maintain good IP hygiene by ensuring their trade marks do not unintentionally expire. Registered IP assets require maintenance, such as renewals, in order to keep them alive after they have been registered. Similarly, it is important for businesses to have a good enforcement policy against possible third party infringers to ensure their trade mark rights remains as strong as possible.

At JMW, we monitor the expiry of our clients’ trade marks. We also offer a monitoring service called JMWatch, which helps you discover new trade marks that may infringe your IP rights. JMWatch is currently available for £200 plus VAT per trade mark per year.