Bare words: the battle over NAKED in cosmetics

The cosmetic brand NAKED by L’Oréal is no stranger to the industry.

The brand rose to prominence in the early 2010s thanks to its eyeshadow palettes, which capitalized on neutral, “natural” shades. NAKED did not literally mean ‘nude,’ but referred to a makeup style that aligns with one’s own skin tone and has a more understated presence. The brand quickly became hugely popular, far beyond the core circle of makeup enthusiasts.

The distinctiveness of L’Oréal’s NAKED brand was recently called into question in opposition proceedings. L’Oréal had filed an opposition against the European trademark NAKED SUNDAY for cosmetics. In its defense, the applicant for the NAKED SUNDAY mark attempted to portray NAKED as a descriptive term. According to this line of reasoning, the word would simply refer to product characteristics, such as a ‘pure,’ ‘unprocessed,’ or ‘additive-free’ approach. To support this argument, the applicant submitted evidence of the generic use of the word “naked.”

The European Union Intellectual Property Office (EUIPO) was not impressed by this argument. The evidence mainly showed English and French articles and did not say anything about the knowledge of the word NAKED among, for example, the Italian public. Moreover, the evidence relating to the Italian public did not demonstrate that NAKED is a descriptive indication in relation to cosmetics.

The EUIPO deliberately sets a high bar in this regard. Anyone claiming that a sign is descriptive must show that, in the perception of the relevant public, the word is predominantly understood as an indication of product characteristics rather than as an indication of origin. In this case, there was no concrete evidence that NAKED is used in the cosmetics sector to describe, for example, “additive-free,” “pure,” or “natural.” Associations or suggestive meanings are not sufficient for that purpose.

The outcome is hardly surprising: the marks are considered similar. Since a likelihood of confusion exists, the application for NAKED SUNDAY is refused. A fine victory for L’Oréal.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.