Nivea wins battle for right to use ‘Black & White’

NIVEA is the only personal care brand in New Zealand that can now use the term ’’Black & White’’ to sell its deodorants and anti-perspirants, after winning a five-year-long legal stoush against its competitor.

Nivea owner Beiersdorf AG legally owns the trademark ’’Black & White’’ beating competitor Unilever, owner of Dove and Rexona, over the rights, a recent High Court judgment shows. The German company first applied to trademark Black & White in September 2014 but Unilever was quick to oppose it.

The Intellectual Property Office of NZ (IPONZ) allowed Unilever’s opposition on the basis Black & White was not a distinctive character, and the words describe the purpose or characteristic of a product. But Beiersdorf AG appealed the decision, claiming the intellectual property office erred in both findings, and took the case to the High Court in Auckland. Unilever said the words ‘‘black’’ and ‘‘white’’ were not distinctive and described the purpose of their product, which was a deodorant that did not stain black and white clothing.

The appeal was pushed back, but not withdrawn because of a secret settlement between the parties. The terms of the settlement were not detailed to High Court Justice Anne Hinton, and Unilever didn’t make further submissions apart from the evidence given before IPONZ to fight the appeal.

According to trademark law, a name is distinctive if it denotes the origin of a product and distinguishes it from its competitors. Unilever argued it had used the words black and white in 2012 in Spain, South Africa and Russia, but had no evidence of selling products with the words on them in New Zealand.

Hinton found there was no concern about nondistinctiveness in New Zealand.

‘‘There is no question that registration should be denied to some existing phrases or words which have become synonymous with some manner of functionality, or even to some proposed phrases or words. For an existing mark, a nondistinctiveness finding will probably follow if it has been used by more than one trader, so that consumers would be confused as to origin . . . ’’

But there was no evidence of Unilever using those words to sell in

New Zealand. Hinton said brands could advertise their anti-mark claims by using other claims including ‘‘darks and lights’’ or ‘‘navies and creams’’ instead of ‘‘Black & White’’. As Hinton had already determined that Black & White was distinctive, IPONZ’s second finding that was appealed – that the term was just words to describe a product – was also dismissed.

Intellectual property lawyer Sebastien Aymeric said the case was unusual as there was a settlement between the two parties, the terms of which were not disclosed. ‘‘We don’t know what the settlement terms are so it’s hard to determine what steps Unilever will take. In her decision the judge did say she was in an awkard position and it was possible the companies agreed on a duopoly share over the name ... ’’

Beiersdorf AG and Unilever were contacted for comment.

SEBASTIEN AYMERIC