Friday, May 9, 2014

Creative Nail Design Blocks Bluesky Chemical’s iShellac Trade Mark Registration

In 2012, Bluesky Chemical Technology filed an Australian trade mark application to register the trade marks ‘Blusky Shellac,’ and ‘iShellac by Bluesky,’ under class 3 goods pertaining to nail polish. The registration was then opposed by Creative Nail Design Inc, which owns the trade mark ‘Shellac’ for class 3 goods pertaining to “nail care preparations; nail enamel; nail hardeners; nail polish; nail varnish and for class 11: ultra violet ray lamps, not for medical purposes.” This was an enormous surprise to me personally as I had understood that “shellacking” described a generic process for varnishing. The etymology of the term is explained below.


The reason for my confusion is because an unrelated company called Guangzhou Chemical Technology had extensively been selling “Shellac”- branded products competing as cheaper alternatives to Creative Nail Design’s Shellac. Guangzhou Chemical Technology’s products are also sold by third party retailers as just ‘Shellac’ (particularly through eBay).

Creative Nail Design’s Shellac products, however, are known and used worldwide earning a reputation for combining the durability of gel nail treatments while being easily removable using Shellac’s own remover wraps.

The Shellac Name

The word “Shellac” actually refers to a resin secreted by the female lac bug, which is processed into dry flakes and dissolved in ethyl alcohol in order to make liquid shellac. The liquid form of shellac is known for being a tough natural primer and used as a sanding sealant, a tannin-blocker, an odour blocker, and a high gloss varnish. It is also used in electrical applications because it possesses above average insulation qualities and can seal out moisture.

Shellac is not a normal ingredient of nail varnish however, and indeed Creative Nail Design’s products do not consist of any lac or shellac. This lead Hearing Officer Iain Thompson to form the view that the trade mark alludes to (but is not descriptive of) the nature of the goods or their intended effect.

Blue Sky’s ‘Shellac’ trade marks however were found to use the “Shellac” element of the brand very prominently and not at all subsumed by other elements that would help disassociate it from Creative Nail Design’s brand. The Hearing Officer formed the view that the iShellac trade mark actually stresses or highlights the word ‘shellac’ instead of altering its prominence or denotation because of the use of the generic prefix “i” (although I note that this is hardly a natural use of the prefix, which usually is an abbreviation for “internet”: see Re: Wesbeam Holdings Limited [2006] ATMO 73, a matter I was counsel in and which establishes that “unnatural” uses of such prefixes renders a mark capable of registration) . He then held that Blue Sky’s use of the trade marks would lead to confusion and may lead people to wonder if there is any connection between the products and Creative Nail Design’s own Shellac branded products.


Because of the tendency to confuse and the fact that they cover the same class of goods, Blue Sky’s application for the trade marks Bluesky Shellac and iShellac by Bluesky were refused.

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