Creative Nail Design, Inc. v Guangzhou Bluesky Chemical Technology Co., Ltd

Creative Nail Design, Inc. (the Opponent) opposed applications by Guangzhou Bluesky Chemical Technology Co., Ltd (the Applicant) to register the trade mark SHELLAC in relation to nail care products. The opposition was based on grounds including that the mark was not capable of distinguishing the Opponent's goods and services, and that it was deceptive. The matter was heard by Iain Campbell Thompson, Hearing Officer, at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the trade mark SHELLAC was capable of distinguishing the Opponent's nail care products, specifically a "hybrid" UV light curing system for manicures and pedicures, from those of other traders. This involved considering the common meaning of the word "shellac" and whether its use in relation to the Opponent's goods would be perceived as descriptive rather than as an indicator of origin.

The Hearing Officer reasoned that the evidence established that "shellac" is a natural resin with various industrial and finishing applications, including as a glaze and varnish. While the Opponent's products were described as a system comprising specially formulated nail coats, UV lamps, and remover wraps, the evidence also indicated that the ingredients of the SHELLAC base coat did not include the substance known as lac. Crucially, the Hearing Officer found that the common meaning of "shellac" as a descriptive term for a type of resin meant that its use as a trade mark for nail products would not be distinctive.

Consequently, the Hearing Officer refused to register the trade mark SHELLAC for the applied-for goods and services. The Opponent was awarded its costs against the Applicant.