Registrar of Trade Marks rules that SKIN FOOD is an unregistrable mark
21/07/2009

Unilever Plc applied to register the trade mark 2004/20128 SKIN FOOD in class 3 in relation to a range of cosmetic products, including skincare preparations. Designer Group Holdings Limited opposed the application, claiming that the mark SKIN FOOD is inherently unregistrable. Designer Group argued that it does not constitute a mark, consists exclusively of a sign or indication that may serve, in trade, to designate the kind, intended purpose or other characteristics of the goods, and consists of a sign or indication that has become customary in the established practice of the trade.

Adams & Adams, acting on behalf of Designer Group, filed evidence to show that the word “food” was often used in the cosmetic industry to refer to products that feed the skin with nutrients and vitamins. It also showed that a few businesses use the term “skin food” in other countries in relation to cosmetic products. Most importantly, it showed that Unilever had, in its own advertising, referred to its VASELINE skincare products by using the phrases “food for your body”, “food for your soul” and “food for your skin”.

Designer Group also showed that “hair food” was used in relation to hair-care products in a similar manner and claimed that, by analogy, “skin food” was reasonably required for use in the trade.

Unilever contended that its mark had been used as a trade mark for some years and had not been received by the public as being descriptive. It contended that the use was such that the mark performed the function of a badge of origin. Unilever also contended that “food” in relation to humans means something that is either eaten or drunk and not something that is “absorbed” in the manner in which plants absorb their food. At worst, Unilever contended that the mark SKIN FOOD would allude, in a fanciful manner, to the qualities and characteristics of the applicant’s products.

Having reviewed relevant case law, the Registrar expressed the view that SKIN FOOD had only been used by Unilever in conjunction with the trade mark VASELINE and that there was no evidence that SKIN FOOD had been used alone in a manner that resulted in it being distinctive. Furthermore, case law indicates that mere use is not necessarily decisive in indicating that a mark is distinctive. No word can be registered unless it is factually distinctive, or is adapted to distinguish the goods of the proprietor from the goods of other persons.

The Registrar held that Unilever had not established that SKIN FOOD is distinctive and also that its registration would interfere with the right of other traders to describe goods using the term.

The opposition succeeded and Unilever was ordered to pay the costs of the opposition.
Alan Smith
Partner
ajs@adamsadams.co.za