Making your mark this International Beauty Day: Trade mark considerations for cosmetic and beauty brands

A trade mark is anything that can distinguish the goods or services of one business from those of another. It can be almost anything, from a word or a logo, to even a sound or shape.

Trade marks help customers to identify the origin – and, in some cases, the expected quality – of a product or service. Registering a trade mark provides the owner of the registration exclusive rights to use the trade mark and thus protects the brand’s integrity, reputation and distinctiveness.

Applying for a trade mark registration is not as simple as filling in a form, however. Not everything is suitable for trade mark protection, making it important to evaluate a possible trade mark and the strength of any protection that may be received before starting the process of applying for a trade mark registration.

To truly benefit from a trade mark registration, and to ensure that the application process goes as smoothly as possible, businesses should consider the following things when developing their new brand:

The most crucial part of selecting a new brand name is ensuring it is free for use and registration in your desired territory. If there is an existing earlier identical or similar trade mark registered, you may be forced to rebrand, pull your goods from the market and potentially start over if you have already launched. This is why it is important to undertake a search before committing to a new brand name. 

As a first step, businesses should provide a trade mark attorney with a list of names and/ or logos that it may wish to use for its new brand.

The attorney will then conduct a preliminary ‘knock-out’ search that will identify any immediate issues and narrow down the list to only those options that have no or a very low risk of potentially infringing existing trade mark registrations.

An attorney can then conduct a comprehensive search into the remaining names or logos, providing advice on which elements are best suited to trade mark protection, and whether any changes will need to be made.

Whilst every jurisdiction’s Intellectual Property Office (IPO) will have its own laws concerning what can and cannot be registered as a trade mark, most take a similar approach when it comes to brand names that are too descriptive or lacking in distinctiveness.

The UKIPO, for example, will refuse applications for trade marks that “consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographic origin, the time of production of goods or of rendering services, or other characteristics of goods and services.”

Descriptive trade marks are typically brand names which directly describe the nature or quality of the goods or services protection is sought for. While such marks are often considered, they should be avoided since they lack the required distinctiveness to be an acceptable trade mark. 

Examples of overly descriptive trade marks

• HairPro Extensions. This mark was refused by the EUIPO in relation to hair extensions in class 26 because it was too descriptive of the type of product (i.e. hair extensions made by/ for professionals).
• MUSCLETONE. This mark was refused in relation to class 3 products on the basis that it was too descriptive of the product’s intended purpose (i.e. to tone the muscles through the use of the cream).

Distinctiveness is key when selecting a brand name. According to the International Trademark Association (INTA), there are four levels of distinctiveness for trade marks: fanciful, arbitrary, suggestive, and descriptive. 

In most cases, fanciful or arbitrary trade marks are the most likely to be accepted by an IPO, because they either have no inherent meaning or are completely unrelated to the products or services for which the mark will be used.

Examples of trade marks which were considered to lack distinctiveness

• PRO-RADIANCE for cosmetic products – The word ‘Pro’ (professional) and ‘radiance’ (being a desired happiness of a person’s appearance) were meaningful to a consumer to signify professional products which generate positive effects on appearance. Due to this, the EUIPO rejected the application as the mark was considered to lack distinctiveness. 
• PRODERMIS for cosmetic and skincare products – ‘Pro’ (for, in favour of) + Dermis (another name for skin layer) was considered overall in the construction PRODERMIS to lack distinctiveness in relation to cosmetic and skincare products and was therefore refused trade mark protection at the EU IPO.

The main reason to protect your brand is that a registered trade mark is a tool to prevent third parties from copying and using your trade mark without your permission. Copycats and dupe products are rife in the cosmetic and beauty sector, so it is important to protect your brand as much as possible before you launch. 

If you find a third-party infringer using your brand you can use your registered trade mark rights to force them to stop by issuing infringement proceedings. Starting court infringement proceedings is often the last resort and there are easier (and often quicker) routes to stopping the infringing activity within as little as 48 hours.

Online infringing behaviour can often be quickly resolved by filing IP Infringement Takedown Notices across social media platforms. Having a registered right, such as a trade mark registration, allows the hosts of these platforms to assess the infringement much more quickly. As such, the desired outcome, i.e. the removal of the unauthorised or infringing content, can be achieved in as little as 24 hours.

Registered trade marks can be monetised to become an asset in their own right. There are already many examples of brands that have licensed a trade mark registration or have collaborated with other brands to launch new products and expand market reach.

In March 2022, for example, e.l.f. Cosmetics collaborated with US restaurant chain Dunkin’ Donuts to launch a collection of doughnut-inspired make-up and beauty products, including an eyeshadow palette, lip gloss, a doughnut-shaped sponge, and a primer.

Having registered trade mark rights not only makes it easier to license a brand to other businesses for royalties, but it also attracts higher royalty payments than licensing unregistered trade mark rights would.

Protecting a trade mark, by extension, protects a brand and the goodwill it accrues. In the longer term, it may also become an asset that can be monetised for further growth.

Engaging with trade mark attorneys at the early stages of new brand development will help to give your business the best chance of securing registered trade mark protection and ensure that this protection remains a key part of your brand’s integrity and reputation for many years to come.