Rebecca Dowdeswell, an East Midlands based salon owner, is fighting back against L’Oreal in a trade mark dispute. Dowdeswell owns ‘nkd ( )’, a waxing salon, and had applied for a trade mark with the UKIPO in 2022, after existing marks had lapsed. However, L’Oreal opposed the mark on the basis that there would be consumer confusion between the application for ‘NKD’ and their mark for ‘NAKED’ which they use in relation to eyeshadow pallets.
Dowdeswell has been trading as ‘nkd ( )’ since 2009. She currently works out of a salon in Leicester. She previously also owned a salon in Nottingham but has had to close this branch due to the mounting legal costs associated with the dispute which have now surpassed £30,000 on her part alone and will be largely unrecoverable.
‘NKD’ and ‘nkd’ were registered as a series trade mark from 2009 until 2019, but subsequently lapsed during the Coronavirus pandemic. When Dowdeswell reapplied for her marks in 2022, L’Oreal submitted an opposition based on a risk of consumer confusion. In August 2024, Dowdeswell filed a counter claim against L’Oreal in an attempt to get them to remove some of the goods listed in their trade mark specification.
Dowdeswell has argued that that the two marks are spelt and pronounced differently. Additionally, she has argued that, in practice, the two marks are used to protect entirely different goods, despite L’Oreal’s registration covering a broad range of products. Dowdeswell claims that L’Oreal are abusing the UKIPO’s rules on trade mark registration by creating a monopoly on a broad subset of cosmetic products which they have no intention of using.
It is unlikely that the case will be heard by the tribunal before the new year. However, when it is decided it will be interesting to see who the UKIPO deem to be winning party in this case.
If you have any questions on the above, feel free to contact a member of the team at 0191 281 4000 or alternatively at legal@mcdanielslaw.com.
