The examination guide
Section last updated: January 2019.
Part A Introduction
This guide is compiled from judgements and decisions from a variety of sources including, in particular, the Court of Justice of the European Union (CJEU), the General Court (GC), UK Courts and the Appointed Persons. Registry practice reflects and interprets current law, but just as the law evolves, so practice must change to take new factorinto account.
Occasionally an application referred to as an example to illustrate a point suggests that the decision regarding acceptability was not in line with current practice. Given the constantly changing significance of certain words, phrases or signs in general use, it may be decided in retrospect that a given mark should not have been accepted for registration. An expression of opinion relating to such marks is not intended to determine or affect the registrability of any mark or any rights arising under the Trade Marks Act.
It should be remembered that the practice stated in this guide should not be applied rigidly and without regard to the particular circumstances of the application. Each case must be considered on its own merits. An examiner should not disregard practice but the particular circumstances of a case may suggest that a departure from practice would be justified. See for example the comments made by the Appointed Person (Simon Thorley QC) in the appeal by Henkel KGaA (BL 0/152/01) against the refusal of the Registrar to grant protection in respect of an International Registration. In that decision, at paragraph 12, it says -
It must always be remembered that the Registry Practice is a guideline and nothing more. It is helpful both to the Registry and to practitioners, but it cannot absolve the registrar’s hearing officers, or me on appeal, from approaching each case on its own facts.
Where there are good reasons to depart from usual practice officers may do so. The reasons for departing from practice should be recorded on the application file either on the internal minute sheet or (if appropriate) in the Hearing Record.
2. Purpose of this guide
The purpose of this guide is to indicate to examiners the procedures to follow when examining a mark, and to give guidelines on registrability. Practice is determined by applying the judgements and decisions referred to above. The guide will set down how particular categories of mark should be examined by applying this guidance. It will indicate when objections should or should not be raised and give guidance, where possible, on ways of overcoming the objections, including the filing of evidence.
3. Practice, as determined by judgements and decisions of courts
The examination of marks for acceptability under the Trade Marks Act 1994 must be by reference to the provisions of that Act, taking account where appropriate of existing practice as laid down or endorsed by judgements and decisions in the Courts or tribunals referred to below.
Court of Justice of the European Union (CJEU).
These decisions are binding on the Office. They are usually cases referred to the Court by EU member states for a ‘preliminary ruling’ on a point of law. The case is then referred back to the national court for a final decision in accordance with the terms of the ECJ’s judgement. Alternatively, they are cases being appealed from the CFI. (See below)
Advocate General’s Opinion
Before the CJEU gives its judgement, the Advocate General may deliver his/her opinion which may assist the Court in reaching its decision. The Opinion does not have binding effect but may give fuller reasoning on the issues being considered than the main Court needs to give in its final decision. GENERAL COURT (GC). These decisions are binding where the facts remain the same and are of persuasive value on cases where similar considerations apply. The GC is used for appeals involving European institutions such as the UK IPO. There is the right of appeal from the GC decision to the CJEU. Either the GC or CJEU will give a final ruling.
These decisions are binding on the Office.
These decisions are not binding on the Office on points of law other than in the case being dealt with. However they are of persuasive value in considering similar cases. These decisions are published on the Office website under ‘Hearings (Results of past decisions)’. Appointed Persons are experienced Intellectual Property Law practitioners who are appointed by the Lord Chancellor. They are an appeals tribunal to the Office’s decisions. There is no right of appeal to their decisions.
Practice amendment notices
Practice amendment notices(PANs). These are internal guidelines and notices changing or clarifying practice. The contents of a PAN are published on the Office website to notify practitioners and the public under ‘Practice Amendment Notices’
Decisions of the Tribunal/ Courts in other Member States
Decisions of other national tribunals/courts within the EU may be of persuasive value in determining the registrability of a particular trade mark. This has been affirmed by the CJEU in Henkel KGaA v Deutsches Patent und Markenamt (C-218/01) where it was stated that:
The fact that an identical trade mark has been registered in one Member State for identical goods or services may be taken into consideration by the competent authority of another Member State among all the circumstances which that authority must take into account in assessing the distinctive character of a trade mark, but it is not decisive regarding the latter’s decision to grant or refuse registration of a trade mark.
On the other hand, the fact that a trade mark has been registered in a MemberState for certain goods or services can have no bearing on the examination by the competent trade mark registration authority of another Member State of the distinctive character of a similar trade mark application for registration of a similar mark for goods or services similar to those for which the first mark was registered.
The same must, in principle, be true of the position of the registrar with regard to decisions of law made in other EU tribunals & courts. The Decisions of the CJEU on points of law are, of course, binding in the UK.
When an application for a trade mark is received by the Intellectual Property Office it will undergo an examination. The examination will comply with Trade Marks Act 1994 and the Trade Marks Rules 2008. The purpose of these guidelines is to outline the specific process that an application will go through during examination and will act as a guide for examiners when assessing a mark.
These guidelines are divided into four sections, namely
- the examination process
- examination Practice
- notification (Earlier rights)
- overcoming objections
4.The Examination process
5.The Trade marks Act 1994
Examination covers what is known as ‘Absolute Grounds’ and ‘Relative Grounds’. If a mark fails to satisfy the requirements under Absolute Grounds it may be refused by the Office. However, where earlier marks are drawn to the applicant’s attention under Relative Grounds this is not a reason for refusal. This shall be covered in more detail further on in these guidelines. The following table outlines the sections of the Act which will be used by the examiner when conducting the examination and whilst the list of provisions for refusing a mark appears to be quite lengthy it should be borne in mind that the majority of applications received by the Registry are accepted for registration.
|Section 1(1)||Representation of the mark.|
|Section 3(1)(a)||Signs which do not comply with the requirements.|
|Section 3(1)(b)||Non distinctive marks.|
|Section 3(1)(c)||Descriptive marks.|
|Section 3(1)(d)||Signs which are customary in trade.|
|Section 3(2)||‘Shape’ marks|
|Section 3(3)||Offensive’ or ‘Deceptive’ marks.|
|Section 3(4)||Marks whose use is prohibited in the UK by enactment or rule of law by any provision of community law.|
|Section 3(5)||Marks specified or referred to in Section 4 below (Specially Protected).|
|Section 3(6)||Applications made in ‘bad faith’.|
|Section 4||Specially protected emblems’ such as Royal arms, Royal crowns, representations of the Royal family, UK and other flags, Coats of Arms, Olympic words and symbols.|
|Section 5||Earlier rights.|
5.1 Section 3
The purpose of a trade mark is set out in Section 1(1) of the Act:
In this Act a “trade mark” means any sign capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark is often described as being a “badge of origin”, its role, as the Act states, is to serve as an indicator to the customer of which provider the goods or services purchased have originated from.
There are a number of reasons why a trade mark may fail to signal, to the consumer, the origin of the goods or services and Section 3 of the Act lists a number of these. Any objection raised under these grounds are considered to be an absolute grounds for refusal. A brief outline of the facets of Section 3 are given here.
5.2 Notional and fair use” and section 3(1)
The concept “Notional and fair use” refers to how a trade mark may be used in the marketplace and, consequently, will have a bearing on how distinctive the mark will be in its various modes of use. This will include use on business papers, on packaging and in advertising i.e. not just on more conventional means for carrying brands, such as swing tags and sew-in labels etc. A mark may lose trade mark significance when encountered in a promotional context rather than physically used on the goods. Care must be taken when examining a mark which “reads” into the goods or services.
“Notional and fair use” of a mark registered in block capitals will also include use in differing typefaces and in upper and lower case letters.
5.3 Sections 1(1) and 3(1)(a)
Sections 1(1) and 3(1)(a) must be read together. 1(1) In this Act a “trade mark” means a sign capable of being presented in an appropriate form which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
3(1) The following shall not be registered-
(a) signs which do not satisfy the requirements of section 1(1).
These provisions require a mark to be presented in an appropriate form, using generally available technologies, namely submitted visually in a JPEG format or via a range of electronic formats such as MP3 and MP4. The majority of trade mark applications contain words and/or images (also referred to as devices) which will obviously comply with the sections quoted above. It is however possible to apply for what is termed as an “unconventional” trade mark which may consist of a sound or movement. The requirements for such marks remain the same in that the marks must be presented in an appropriate format such as a visual representation or, in the case of a sound or movement mark, via an MP3 or MP4 file. (See under the specific type of mark in Part B of these guidelines)
5.4 Section 3(1)(b)
The following shall not be registered –
(b) trade marks which are devoid of distinctive character.
The purpose of this Section is to prohibit the registration of marks which cannot perform the function of identifying the goods and/or services of one undertaking from those of another undertaking, i.e. the basic role of a trade mark.
Examples of such signs which would not function as a trade mark are promotional statements, i.e. “the best that money can buy”. Teaching aids such as charts and educational models often fall foul of this provision also as the consumer is not used to such items being used as a trade mark.
Whilst it is possible for an objection to be raised against a mark purely because it is seen as non-distinctive this section is often used in conjunction with other sub-sections of 3(1). Where an objection is raised because a mark is descriptive or customary in trade the relevant objection will also be accompanied by an objection under Section 3(1)(b).
5.5 Section 3(1)(c)
The following shall not be registered –
(c) trade marks which 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.
This section is used to prohibit the registration of marks which would be seen purely as a descriptor of the characteristics of the goods and services the mark is to be used upon. For example, a direct reference to the goods themselves, i.e. ‘soap’ for soap; or a term which may be descriptive of a feature of the product, ‘strawberry’ could be the smell of the soap. Such terms would be objectionable under section 3(1)(c) and would be accompanied by an objection under section 3(1)(b) as well because it naturally follows that if a mark is descriptive it must also be non-distinctive.
5.6 Section 3(1)(d)
The following shall not be registered- (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Marks which contain signs that have become customary in trade cannot be registered as they will not perform the basic function of a trade mark, i.e. to distinguish the goods and services of one provider from another’s. Such a sign might be a common name for a public house such as “The Red Lion” or five stars for hotel services.
An objection under section 3(1)(d) will be accompanied by an objection under section 3(1)(b).
5.7 Section 3(2)
A sign shall not be registered as a trade mark if it consists exclusively of- (a) the shape or another characteristic which results from the nature of the goods themselves, (b) the shape or another characteristic of goods which is necessary to obtain a technical result, or (c) the shape or another characteristic which gives substantial value to the goods
A shape or other characteristic, i.e. sound mark is considered to fall into the category of a non-traditional trade mark as it is less common for a shape alone to be used as a trade mark. The test for distinctiveness however for any such mark is no different than what is considered to be a more traditional mark, i.e. words or a logo.
Where an application is made for a mark which consists of a shape or other characteristic which is derived purely from the goods themselves, where a shape or other characteristic is used to achieve nothing more than a technical function or such a shape or other characteristic could add value to a product the mark is likely to be found objectionable. For example:
Shape of the goods themselves:
An image of a plain, unadorned football to be used for sporting articles in Class 28 would be considered to be objectionable under section 3(2)(a) of the Act.
Shape of the goods necessary to obtain a technical result:
An image of a children’s building block for toys in Class 28. The specific shape of the block would be necessary to enable the blocks to be connected to others for building and therefore would be objectionable under section 3(2)(b).
Shape which gives substantial value to the goods:
Other characteristics: Sound
A repetitive high pitched sound would be considered to be an intrinsic part of a fire alarm. An application for a mark which therefore consists of such a sound, applied for in relation to fire alarms, is likely to be subject to an objection under Section 3(2)(b).
A visually striking and aesthetically pleasing shape may be objectionable under section 3(2)(c) if it was felt that the shape adds substantial value to the product.
5.8 Section 3(3)
Section 3(3) prohibits the registration of marks which could either be offensive or if they could be seen as deceptive. Section 3(3) states:
A trade mark shall not be registered if it is-
(a) contrary to public policy or to accepted principles of morality, or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
Marks which may be ‘contrary to public policy’ are those, for example, that make specific references to illegal drugs such as cocaine, or would encourage some other kind of illegal activity. Such marks are likely to fall foul of Section 3(3)(a). The same provision outlines that marks which are contrary to ‘accepted principles or morality’ cannot be accepted. This is a subjective area as what one person finds offensive may be perfectly acceptable to another and it is not the role of the Registry to act as an arbiter of morals. The test for such marks is therefore set at quite a high level, in essence the test is whether or not the use of such a mark would cause not just offence but outrage for an identifiable sector of the public. The sorts of marks which may face objection here are those with racist connotations, a mark which includes strongly offensive language (swear words) or maybe a mark which includes the misuse of religious symbols.
The second provision under Section 3(3) relates to marks which are likely to deceive. In order for a mark to be objectionable on these grounds there must be a real belief that a mark would deceive the public. Where a mark contains an indication that the goods claimed could be made of a material that is considered to be of a high quality such an objection is likely to arise. For example, if a mark contained the word ‘gold’ and the specification covered jewellery the consumer would have a realistic expectation that the items are made from gold and not costume jewellery. The examiner will outline, where possible, any way of overcoming such an objection.
5.9 Section 3(4)
Section 3(4) prohibits the registration of marks which contain words or imagery that is otherwise protected by UK or European law.
A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU law other than law relating to trade marks.
(4A) A trade mark is not to be registered if its registration is prohibited by or under-
(a) any enactment or rule of law,
(b) any provision of EU law, or
(c) any international agreement to which the United Kingdom or the EU is a party, providing for the protection of designations of origin or geographical indications.
(4B) A trade mark is not to be registered if its registration is prohibited by or under-
(a) any provision of EU law, or
(b) any international agreement to which the EU is a party, providing for the protection of traditional terms for wine or traditional specialities guaranteed.
(4C) A trade mark is not to be registered if it-
(a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and
(b) is in respect of plant varieties of the same or closely related species.
(4D) Subsection (4C)(a) refers to registration in accordance with any-
(a) enactment or rule of law,
(b) provision of EU law, or
(c) international agreement to which the United Kingdom or the EU is a party, providing for the protection of plant variety rights.
Marks containing a Red Cross would not be allowed under this provision, likewise the Olympic and Paralympic symbols could not be registered as they are protected under the Olympic Symbol etc (Protection) Act 1995.
Marks containing a Red Cross would not be allowed under this provision, likewise the Olympic and Paralympic symbols could not be registered as they are protected under the Olympic Symbol etc (Protection) Act 1995.
Similarly, marks which consist of a registered Plant Varietal Name (PVN) will be refused under this provision. Signs being or containing Protected Designations of Origin (PDOs) or Protected Geographical Indications (PGIs) will also be subject to an objection under Section 3(4) of the Act.
5.10 Section 3(5)
Section 3(5) prohibits the use of Royal emblems, protected emblems and flags.
A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).
A mark which will be objectionable under this section of the Act would be one where the flag of another country is contained within it and that flag is protected for example by Article 6ter of the Paris Convention.
5.11 Section 3(6)
Section 3(6) of the Act prohibits the registration of a mark where it is considered the application has been made in bad faith.
A trade mark shall not be registered if or to the extent that the application is made in bad faith.
An objection may arise under this section where the mark contains the name of a famous person and it appears the application was made by someone other than that individual. Such an objection can be overcome however by obtaining written permission from that individual
5.12 Section 4
In general terms section 4 sets out various signs which cannot be accepted as part of a trade mark. This includes any mark which contains Royal arms, Royal crowns, a representation of Her Majesty or other members of the Royal family or any other signs which may lead a person to believe that goods or services marketed under such a sign would have received Royal patronage or authorisation.
Along with the above section 4 also excludes the inclusion of a national flag of the United Kingdom if it could be seen as misleading or grossly offensive. It also precludes marks which contain the national emblems of other countries and international organisations.
5.13 Section 5
Section 5 states that marks which are either identical or similar to earlier marks and cover identical or similar goods and services shall not be registered. However in October 2007 the legislation was changed using section 8 of the Act to allow for notification of earlier rights where a conflict is deemed to exist. For this reason the Registry conducts a search for prior rights as part of the examination process. Earlier marks which are considered similar or identical are merely drawn to the attention of the applicant. They no longer act as a bar to registration as they previously did under relative grounds. If the earlier right is a UK registered trade mark however the Registry will write to ‘notify’ the owner of that mark that a later application is proceeding to publication, if the applicant chooses to continue.
Where the examiner raises earlier marks in the examination report that they consider to be similar or identical the applicant will be given a single opportunity to respond in order to convince the examiner to waive the notification. There are potentially a number of ways of doing this, i.e. giving reasons why the marks and/or goods or services are substantially different and therefore no notification is necessary, removing any goods or services which clash, obtaining consent from the owner of the earlier right or by withdrawing the entire application. If no response is received from the applicant, the application will proceed to publication and the notifications will be issued.
5.14 Section 41(2)
Section 41(2) allows for the filing of what is known as a ‘series’.
A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
Practically this means that an applicant can file a maximum of six marks (with the same identity) within a single application. Some additional fees may be incurred depending on the number of marks applied for. The series however will be subject to examination. As outlined in section 41(2), in order for a number of marks to be considered acceptable as a series, the marks should not differ in their material particulars. The examiner will consider whether the marks comply with these requirements and whether a single examination can be undertaken. If it is considered that more than one search is required in order to find all of the elements covered by the various marks a preliminary series objection and the applicant will be required to identify the marks he or she wishes to continue to examination. However, if the marks do not constitute a series, maybe because the font differs and substantially changes the identity of the mark, but one search can be undertaken, a series objection will be contained in the body of the examination report. Further information regarding series marks can be found in Part B under the heading “SERIES”.
6. Examinations and objections
The above lists the types of objection an application for the registration of a trade mark might face. When assessing an application however there are a number of requirements on the examiner.
Examiners must clearly outline and explain the objection they are raising in order that the applicant or their representative can fully understand the issue with their mark and can challenge the examiner’s opinions if necessary. The examiner will raise objections based on a factual and legal basis and will provide information, where appropriate, on what led them to object to the mark. This may be based on a dictionary definition of the words found in the mark, because of Internet research conducted, because of case law or any other factual basis.
6.2 Use of the Internet
The Internet is a key tool used for research during examination. If the findings from such research are used to base an objection upon the examiner will include the relevant hits they have found in the examination report. The applicant or representative will then have access to all facts and are able to challenge the findings where they disagree. Whilst it is not possible to be prescriptive over the nature of hits that can be used it is generally considered necessary to provide hits that pre-date the application, especially where an objection is to be raised under sections 3(1)(c) or 3(1)(d) and hits should originate from the UK.
Accordingly, where an Internet search has been conducted any relevant results should be sent to the representative or applicant with the examination report. If a search is conducted later any relevant results should be disclosed to the representative/applicant. If a hearing is scheduled within five working days of the later search, the representative/applicant should be given an opportunity to postpone the hearing.
Before an objection is taken under section 3(1)(d) it is necessary to pinpoint sufficient use of the sign by third parties prior to the date of the application to show that it was in use in the ‘customary language’ or ‘established practices of the trade’ at the relevant date. It is not possible to lay down a minimum number of uses required to show this as much depends upon the nature of the hits (e.g. use in an advert for the goods/services in a popular daily newspaper would carry much more weight than an instance of journalistic use of the sign in an article on a web site). In order to be relevant the use should be in the UK (e.g. UK website or extract from publications circulating in the UK). The references must show use that occurred before the relevant date. Extracts showing use on overseas websites (unless they include relevant extracts from UK publications) should not be used to support a section 3(1)(d) objection.
An objection under section 3(1)(b) and/or (c) may be appropriate where only a limited number of examples of use of the sign are found on the internet Examples of use of words in other jurisdictions are not usually conclusive without more evidence. This is because the same word can be descriptive in one country and distinctive in another. However, overseas use may be relevant where:-
a) the ordinary meaning of the word(s) identified in the usual reference sources suggests that the sign may serve in trade in the UK as a description and the use made of the sign in other English speaking countries is merely confirmation that the sign is apt for such use here,
b) the hits suggest that the sign in question had, at the date of the application, been adopted in other English speaking countries as the name of (or an abbreviation for) a new sort of product or service.
It should be borne in mind that objections under section 3(1)(c) can only be based upon the existence or likelihood of the sign being used for descriptive purposes in trade in the goods/services. One or two isolated examples of journalists using a word as a description will not, without more evidence, serve to show that an apparently meaningless or inapt word is apt for use in trade as a description. On the other hand, a persistent pattern of descriptive use by journalists (particularly in trade papers) is sufficient to establish that the sign is liable to be used in trade as a description.
Use after the date of the application is usually irrelevant. However, if an objection is raised under section 3(1)(c) which is based primarily upon the descriptive meaning of the word(s) identified in the usual reference works, then examples of descriptive use in trade after the date of application may be relevant. This is because such examples confirm that the word(s) had descriptive potential at the date of application. In the absence of any other indication, we should take the date that the web-page was last updated as the date of the article for examination purposes.
Use of the sign as a trade mark on the applicant’s own web site is irrelevant and care should be taken not to include such material in examination reports. However, evidence of the applicant using the sign in an obviously descriptive manner may be relevant.
6.3 Responding to the examination report
If an applicant disagrees with an objection that has been raised against their mark, or an objection to terms within their specification, (classification objections), they may discuss this with the examiner either via telephone or by making written submissions. Further information on overcoming objections can be found in Part D.
The individual circumstances surrounding each application are paramount. ‘Precedents’ cannot be decisive.
The comments made in the MADAME case (1966) RPC page 545 were re-stated by Mr Justice Jacob in the TREAT trade mark case (1996) RPC page 25:
In particular the state of the Register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the Registrar to put the marks concerned on the Register. It has long been held under the old Act that comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. Madame TM and the same must be true under the 1994 Act.
7. Amendments to an application
Section 39(1) states:
The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
If the application has been published, the withdrawal or restriction shall also be published.
(2) In other respects, an application may be amended, at the request of the applicant only by correcting – (a) the name and address of the applicant, (b) errors of wording or of copying, or (c) obvious mistakes, and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application. (3) Provision shall be made by the rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.
It is, of course, very difficult to determine what an “error of wording” or “obvious mistake” is, but the most important part of this section of the Act is the final few lines, which permit very few amendments to the mark itself. It would not be an obvious mistake if e.g. a mark written as SELECTA should have been filed as SELECTOR, trade marks often consist of misspellings of well-known words. Even if it was an error such a change would substantially affect the identity of the trade mark.
If an amendment to the trade mark or the list of goods and services is requested after advertisement, and the amendment is permitted, the amendment to the mark must be advertised (section 39(3), rule 18).
In the registrar’s view, “the application” for the purposes of section 39(1) consists of the items listed in section 32(2) of the Act. The Class number(s) entered on the application form are considered to be part of the statement of goods or services.
Other matters covered on the application form, such as the agent’s details and limitations or disclaimers are not covered by the restrictions set out in section 39(1) and can be amended, deleted or inserted subject to the provisions of the appropriate rules.
8. Acceptance and publication
Once an application has been accepted by the Registry it must be published for a period of two months. This period allows any third party the opportunity to oppose the acceptance of the mark if they have an issue with it, for example, it may be considered too similar to another mark. If any opposition is received it will be dealt with by the Tribunal Section. Where no opposition is received the mark will be registered and a certificate of registration will be issued to the applicant.
9. Post publication
Once accepted by the examiner, all applications go through a publication process. Marks are advertised for opposition purposes for a two month period. Providing no opposition is received the application will become registered. There are however some instances in which an application will not proceed to registration, even where no opposition is filed.
10. Observation (Post advertisement)
Section 38(3) of the Act provides that, once an application has been published, any person may at any time before registration, make observations as to whether a trade mark should be registered.
Where an application has been published, any person may, at any time before registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations.
Section 40(1) of the Act (as recently amended by The Trade Marks (Proof of Use) Regulations 2004) states that, where no notice of opposition is filed or opposition is withdrawn or decided in favour of the applicant, the registrar shall register the trade mark:
…unless it appears to him having regard to matters coming to his notice since the application was accepted that the registration requirements (other than those mentioned in section 5(1),(2) or (3)) were not met at that time.
Consequently, for applications published after 5 May 2004, objections based upon the existence of earlier conflicting trade marks can only be raised after publication in opposition or invalidation proceedings. Further references to “new matters” should be taken to exclude matters arising under sections 5(1)-(3) of the Act.
The registrar will consider any new matter which comes to his notice after publication which shows that the requirements for registration (other than those mentioned in section 5(1), (2) or (3)) were not met at the date of acceptance.
Where the circumstances suggest that the decision to accept the trade mark was the result of facts being misconstrued (such as evidence of use only showing use of a mark on a small proportion of the goods listed in the specification published), the registrar will consider the matter afresh.
Where an observer informs the registrar that a trade mark is descriptive or a sign commonly used in the trade, the observation will be regarded as a new matter. However, observations to the effect that the mark is generic will normally only be acted upon if the observer provides examples of customary use in the relevant trade (preferably by at least two other traders) or other supporting information (such as extracts from trade publications or reference works).
When a post advertisement observation is received
The registrar will give an initial opinion on any new matter which comes to his attention as soon as possible after publication. The registrar will write to the applicant indicating whether (or not), taking account of the observations (which will be attached) he now believes that the registration requirements were not met when the application was accepted.
If the registrar takes the view that the registration requirements were not met at the date of acceptance, the applicant will be asked to comment upon the observation; but he need not reply before the opposition period is over.
A copy of the letter to the applicant, setting out the registrar’s position in the light of the matter raised, will be copied to the party filing observations. It will be stressed that this is the registrar’s provisional view and that it may change after considering the applicant’s submissions or in the light of further observations.
Where the Application does not appear to have met the requirements for
registration at the time of acceptance
In addition to the applicant’s usual right to make submissions to the registrar on the late objection, the applicant will also be entitled to amend the specification so as to overcome the objection or to submit (further) evidence in support of the application. If the specification of an application is restricted the amendment will be open to a further one month opposition period under rule 18. Unless the registrar’s provisional assessment (that the application did not meet the requirements for registration at the time of acceptance) can be reversed or the objection otherwise overcome, the registrar will refuse to register the trade mark. However, notice of refusal will not be issued before the opposition period expires.
Applications allowed to proceed to registration
If after considering the observations and any submissions from the applicant, the Registrar decides that the mark should be registered, he will proceed accordingly. The only further action open to the party filing observations will be invalidity proceedings under section 47 of the 1994 Act.
Applications also subject to other opposition proceedings
Given that the registrar is not permitted to re-assess the acceptability of an application in the light of earlier trade marks (other than through opposition proceedings), it will often be the case that where the same application is subject to a late objection and opposition the two will be based on different grounds. In these circumstances the registrar will seek to deal with the observations in parallel with any opposition proceedings. The registrar has no power to extend the period for filing opposition and can only extend the time for filing a counterstatement in the circumstances set out in rule 13. Subject to these constraints, the registrar will consider an application from either party to stay the opposition proceedings to await the outcome of the late objection.
If the registrar decides to refuse the application, a notice of refusal will be issued. The outstanding opposition proceedings will then only have to be dealt with if the registrar’s decision to refuse registration is reversed on appeal. If opposition is filed on the same grounds as observations, the registrar will, in general, suspend any further action on the observations until the opposition proceedings are concluded. The registrar cannot act in a quasi-judicial capacity, as a tribunal determining an opposition between two parties whilst pursuing (or rejecting) the same grounds of objection in ex parte proceedings with the applicant. However, where the parties jointly request it, the registrar may agree to stay the opposition proceedings in order to deal with the observation first.
11. Late objections
Section 40 of the Act requires that, providing no opposition is filed, or where
Section 40 of the Act requires that, providing no opposition is filed, or where opposition against a mark has been unsuccessful, an application must be registered. It does however contain a clause that allows the registrar to raise a late objection if necessary.
Unless it appears to him having regard to matters coming to his notice since he accepted the application that it was accepted in error.
Whilst it is practice to raise any objections during the examination procedure, if further information becomes available to the Registrar a late objection can be raised. It is rare for this to happen and a response period will be set in order that the applicant can make submissions in support of the application, as they would have done should the objection have been raised during the examination procedure.
Unless confidentiality has been agreed all documents and correspondence on 1994 Act applications will be open to public inspection after the mark has been published. 1938 Act registrations will only be open to public inspection in respect of correspondence and documents filed after registration.
Section 67 provides that anyone may inspect the contents of any file once the mark in question has been published.
Section 67(2) provides that certain documents may also be seen before publication. These are:
the application form
any forms which have been filed to amend it, including particulars filed which covers registrable transactions, e.g. assignments.
The presumption is that, once an application has been published, the file is open to public inspection. Section 67 of the Trade Marks Act 1994 provides for there to be restrictions to this general presumption. There is no general exception which covers sales and/or advertising figures as such. There is provision for an applicant to request confidentiality for a particular document (or part of a document). To do so they must give their reasons.
If it had been the intention for all sales and advertising figures submitted in ex parte evidence to be kept confidential the rules might have been expected to reflect this. There will be occasions where it can be shown that, for specific reasons, public inspection of particular sales or advertising figures will be damaging to the applicant and in such a case favourable consideration will be given to a request for confidentiality. Depending on the weight of the case for confidentiality and the significance of the figures to the monopoly being sought, the Registrar may agree that the figures for particular periods be kept confidential either absolutely, or on condition that a supplementary summary, showing the figures in a less specific way, be submitted for the public record. For example sales for a particular period could be expressed as being not less than £XXX, or between £XXX and £YYY. In such a case the summary may be made available for public inspection but the actual figures kept in the confidential section of the file.
It is always open to the applicant or their representative to submit evidence in a form that avoids the need to refer to specific figures. For example, one applicant submitted evidence which provided details of the length of user, the number of outlets through which the goods had been sold and their location, and a “not less than” figure for sales through each outlet. The point being that it is not always necessary to provide precise sales figures in order to establish factual distinctiveness.
The registrar has agreed to confidentiality in cases where either sales figures were not central to the decision to accept the application, or specific reasons for keeping them confidential were provided. Most requests for confidentiality so far received have not included reasons to justify the request beyond generalities such as the exhibit “contains sensitive commercial information”. These have not been accepted. However, if specific reasons are provided for such requests the registrar must consider them and, if justified, agree to confidentiality.
The issue of confidentiality of documents submitted to the Patent Office (as it then was) was considered in the Diamond Shamrock Technologies SA case (1987 RPC page 91). This was a patent case, but the rules are similar. The issue was whether royalty payments and prices under a licensing agreement should be kept confidential.
At page 93, line 22, Mr Justice Whitford said:-
It is commonplace in connection with a variety of proceedings, and patent proceedings are no exception, that the parties to the proceedings want material to be kept confidential. There are matters which they do not want to be disclosed to the public at large. What is said in these letters is that this, that or the other information contained in the declarations or exhibits should be kept confidential because “it contains sensitive commercial information.
I think it is desirable that a more exact indication should be given as to the reasons why in truth the document ought not to be disclosed because it is easy enough to talk about the material being of commercial interest and to talk of it being sensitive. That fact in itself does not necessarily mean that the material, which would otherwise become public property because it was included in the documents which are going to be open to public inspection, is to be excluded from public inspection.” Where full reasons for the request are given, the applicant’s desire for commercially sensitive information to be kept secret should be balanced against its significance in the context of the application. If the application is only proceeding because of evidence of use there would have to be very strong commercial reasons why the sales figures should not be open to inspection.
The request for confidentiality must be made at the time the information is filed (or within 14 days of filing it).
13. Onus (During examination)
There is an onus on the Registrar to examine an application specifically according to the goods and services on which the mark is to be used. This principle is well established in case law and means that, when considering a mark against the requirements as set out above, an examiner must outline the goods or services to which any objection applies. It is therefore quite possible that an objection may apply to only some of the goods or services listed in the specification of the application and the examiner will clearly indicate, in their opinion, where the mark is or isn’t acceptable.
Geoffrey Hobbs Q.C., acting as The Appointed Person, heard arguments in the EUROLAMB trade mark case (1997) RPC 279 about whether there is an onus on the registrar to justify objections to applications.
He decided that:
a. Section 37 is neutral and there is no presumption in favour of or against registration;
b. The combined effect of sections 37(4) and (5) is to eliminate the discretion that the Registrar previously had and to put him in a position of having to make a judgment, yes or no, upon the materials before him as to the registrability of a mark;
c. There is nothing in the nature of a burden for the Registrar to discharge in order to justify his decision to refuse an application.
- Saving Provisions (Relevance)
The following statement was made by Geoffrey Hobbs QC in his capacity as the Appointed Person in relation to an appeal against the refusal of an application for the mark ‘AD 2000’ (1997) RPC 168.
Although Section 11 of the Act contains various provisions designed to protect the legitimate interests of honest traders, the first line of protection is to refuse the registration of signs which are excluded from registration by the provisions of Section 3. In this regard, I consider that the approach to be adopted with regard to registrability under the 1994 Act is the same as the approach adopted under the old Act. This was summarised by Robin Jacobs Esq. QC in his decision on behalf of the Secretary of State in Colorcoat TM (1990) RPC 511 at 517 in the following terms: ‘That possible defences (and in particular that the use is merely as a bona fide description) should not be taken into account when considering registration is well settled, see e.g. Yorkshire TM (1954) RPC 150 at 154 lines 20-25 per Viscount Simonds LC. “Essentially the reason for this is that the privilege of a monopoly should not be conferred where it might require honest men to look for a defence.
The ECJ in Libertel Groep BV and Benelux- Merkenbureau confirmed that:
…examination carried out at the time of application must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered.
Part B: Alphabetical list of examination practice
Names of airports will normally be acceptable for air transport services. Objections will only be taken under section 3(1)(b) and (c) where specifications include non-air transport services such as shuttle buses, taxis etc and car parking services. It is likely that consumers would expect there to be more than one undertaking providing transport services to and from an airport and that the sign would therefore be seen as descriptive of the destination or the intended purpose of the services, for example. This also extends to other transportation services such as freight and cargo services.
Animals (Images of)
Images of animals are often distinctive trade marks. However, care needs to be taken in respect of images of animals where there is a connection between the animal and the goods and services applied for. For example, a representation of a dog in respect of kennel services would be considered non distinctive. Some animals will be inherently non distinctive for certain goods e.g. cows or goats for milk, butter, cheese and other dairy products; sheep for wool products; and images of some animals in respect of leather, skin or hides. Such images are likely to be subject to an objection when used on corresponding goods unless the mark is presented in a fanciful way. For example, a laughing or dancing cow would be clearly fanciful for milk or dairy products and no objection will be deemed appropriate.
Care also needs to be taken in relation to goods aimed at children such as e.g. clothing and bedding etc., where pictorial representations of animals are frequently used as decoration. As a rule of thumb, the more appealing the representation, the more likely it is to be attractive to children and be seen as mere decoration and the less likely it is to be seen as a trade mark. An objection will be raised under section 3(1)(b) where appropriate.
Armorial bearings, heraldic devices and coats of arms
Trade marks containing armorial bearings, heraldic devices and coats of arms are generally acceptable at the examination stage. However, the Registrar will always advise applicants seeking protection for such marks to contact the Garter King of Arms (who is responsible for granting arms in England, Wales and Northern Ireland) and the Lord Lyon (who is responsible for granting arms in Scotland). This is to ensure that there is no conflict with granted arms and insignia holders.
Where the holder of an earlier right submits observations, following the acceptance of a mark, on the basis that the application appears to conflict with their own granted arms or insignia, such information will be considered by the Registrar. A late objection under sections 3(5) and 4(4) may be taken in accordance with rule 10 of the Trade Marks Rule (2008).
Please note that this this practice does not apply to trade marks containing or consisting of either Royal coats of arms or any other Royal insignia. Such trade marks will be subject to other objections, as explained in the section headed ‘ROYAL MARKS’.
Awards (Images of)
Representations of awards, medals or coins are considered non-distinctive if used in isolation, unless they contain a distinctive element.
Wine labels often include images of medals or coins which represent awards that the wine has won. There is no requirement for the applicant to prove that the claim is valid. The award or recognition will be taken in good faith.
‘Bio’ is a well-known abbreviation for the term ‘biological’ and is commonly added to other words to indicate a biological factor. Whether presented alone or with a descriptive prefix or suffix, the term ‘bio’ will be treated as if it were the word ‘biological’ and an objection under section 3(1)(b) and (c) will be raised where the word ‘biological’ (together with any other elements present) is considered descriptive and non distinctive for the goods/services claimed.
A cartoon character can often function as a distinctive trade mark when used in relation to most goods and services. However when it is used in relation to goods or services such as clothing, soft toys, or nursery services etc, the following points will be considered and objections raised as appropriate under section 3(1)(b):
- the image should be treated the same way regardless of whether it is two-dimensional or three-dimensional;
- the marks must be sufficiently individual as to differentiate them from standard variations for the goods where animals/cartoons are commonly used as decoration e.g. children’s clothes, children’s blankets; paediatrician service
- there is usually a wide range of product variation for toy shapes including plush toys (which often have cartoon-like features) in almost any animal. It is commonplace for animals to be given a human characteristic or to be dressed up in clothes. Therefore variation from the norm for these goods would rarely be sufficient for the mark to act as a badge of trade origin. However giving an inanimate object human characteristics is more likely to work, for example, a chocolate egg with facial features, arms and legs
The letters ‘CE’, presented in the stylised form as shown below, appear on many products that are traded in the single market or the European Economic Area (EEA).
The letters are used to signify that a product conforms with the requirements of specific EC Directives. Any mark containing these letters will face an objection under sections 3(4) and 3(3)(b). Consent cannot be obtained to register this as part of a trade mark.
Trade mark applications which contain the word ‘chartered’ normally take the form of an application to register the name of an organisation or other body, for example ‘The Chartered Institute of Surveyors’, or an attempt to register the name of a Chartered professional title as in ‘Chartered Surveyor’.
Chartered status is granted by the Queen and therefore use of this word is controlled. It is also protected under Company Law and can only be used as part of a trade mark if the body concerned has the legal authority within its charter to do so. Therefore all trade marks containing the word ‘chartered’ will be subject to objection under section 3(4).
The mark would also be objectionable on the basis that it is deceptive, under section 3(3)(b), as the mark infers chartered status when it has not been proved that the applicant is entitled to use such a qualification.
In all cases, the applicant must provide a copy of the Charter document in order to address the objections under sections 3(3)(b) and 3(4). Where the application is intended to protect the name of an organisation, provision of an appropriate Charter document is sufficient to overcome the objection. However, where the mark denotes the name of a professional title, more information may be required. In particular, the applicant must not only hold a Charter document per se, but the document must also confirm the applicant’s entitlement to hold a trade mark registration in respect of that professional title. If, on receipt of the Charter document, it cannot be determined whether or not this is the case, the examiner will consult with the Privy Council Office for further information.
Where the mark is also devoid of any distinctive character and/or descriptive, an objection under sections 3(1)(b) and (c) will also be taken. For example, signs which denote professional titles used by members of Chartered organisations (such as e.g. ‘Chartered Accountant’), are open to objection regardless of the applicant’s ability to prove its entitlement by way of a Royal Charter.
Where the mark as a whole is considered distinctive, such as ‘Chartered Institute of Accountants’ an objection under section 3(1)(b) and (c) would not be appropriate, as this denotes a professional body, namely a single entity. However the applicant will still need to provide proof of its entitlement to both use and register the mark in order to overcome objections under sections 3(3) and 3(4).
As cocktail names can be produced without the need for any major manufacturing process, in theory anyone can invent and name a new cocktail. It is this ‘ease’ of naming cocktails and publishing recipes on the internet that creates difficulty when determining the distinctiveness of cocktail names.
The Registrar will conduct an internet search to determine whether the mark is capable of indicating trade origin. If the results of the search suggest reasonably widespread use amongst e.g. hotels, bars, and restaurants, then a section 3(1)(b) and (c) objection will be taken.
Representation of the mark The representation of a colour mark must consist of a representation of the colour or colours without contours in one single JPEG file or on one single A4 sheet. Where there is more than one colour, the reproduction must show the systematic arrangement of the colour combination.
In Libertel C-104/01 the ECJ confirmed that to be represented graphically, colour marks must be presented in a way that is “clear, precise, self-contained, easily accessible, intelligible, durable and objective” as per Sieckmann C-273/00.
In the Libertel case the court determined that providing a sample of the colour(s) proposed for registration on paper is not sufficient by itself to satisfy the requirement for the clear representation of the sign. However, the court stated that the “Sieckmann criteria” may be satisfied by designating the colour using an internationally recognised colour identification code.
A mark consisting of colour alone will be considered to be appropriately represented if it is filed with a sample of the colour together with a written description of the colour (e.g. ‘dark blue’) and is accompanied by the relevant code from an internationally recognised colour identification system.
There are a number of colour identification systems in existence e.g. Pantone®, RAL and Focoltone®. This is not an exhaustive list and the choice of which system to use is for the applicant to decide. Where a sample of the colour and a description in words are used to represent a colour mark, the two must be integrated so as to disclose the mark applied for in an unambiguous manner - the colour shown and the stated colour code should not contradict each other.
A degree of interpretation of the mark is permissible. For example, it is acceptable to assume that third parties have the capacity to look up the colour which corresponds with a particular colour code. However, there are limits to what can reasonably be expected of third parties. It must be reasonably practicable for persons inspecting the register, or reading the Trade Mark Journal, to be able to gain an understanding from the representation of what the trade mark is.
Alternative ways of representing colour marks may be accepted as long as they satisfy the criteria set out above.
Representations which are precise but impossible to interpret without costly specialist equipment or services, or which place too high a burden on third parties, are likely to be rejected because they are not easily accessible. Accordingly, a mark defined as “a blue bottle of optical characteristics such that if the wall thickness is 3mm the bottle has, in air, a dominant wavelength of 472 to 474 nanometres, a purity of 44 to 48%, an optical brightness of 28 to 32%” was rejected by The Appointed Person in Ty Nant Spring Water Ltd’s application (BL O/241/99) because it would require third parties to use a spectrophotometer to ascertain whether a particular colour was or was not covered by the description, and in fact served to veil the identity of the sign (cobalt blue).
Combinations of colours
In Heidelberger Bauchemie GmbH (C-49/02), the CJEU introduced an additional requirement for marks consisting of a combination of colours in the abstract, without contours. In such cases, the Court confirmed that the representation must also include “a systematic arrangement associating the colours in a predetermined and uniform way”.
Unfortunately, it is not very clear what this means in practice. The Court offered no examples of the ways in which the requirement might be satisfied. However, the following representation of EuropeanTrade Mark (‘EUTM’) number 2177566 appears to plainly fall within the guidance.
Mark Description: The distribution and ratio of the colours to each other is 50-50, whereby the colour blue runs horizontally above the colour red, forming a striped whole.
Indication of colour: Blue: Ral 5015; Red: Ral 2002.
Alternative ways of graphically representing colour marks may be accepted as long as they satisfy the criteria set out above.
Colour(s) in the Abstract
The CJEU has made it clear that there is no reason why, in principle, colour(s) cannot be registered in the abstract, as opposed to specific applications of colour such as being applied to the exterior of the goods themselves, or to their packaging.
Descriptions such as “as shown on the form of application” have been found to be an inadequate means of limiting the mark to the precise form shown in the pictorial representation of the mark on the application form (see, for example, the Advocate General’s Opinion in Dyson Ltd v Registrar of Trade Marks (C-321/03) subsequently endorsed in the CJEU’s judgment of 25 January 2007). Consequently, “as shown on the form of application” will no longer be accepted as limiting the mark. Instead, more precise wording such as, “in the [arrangement/position] depicted in the pictorial representation of the mark” should be used.
Applications made for a colour per se, accompanied by a sample of the colour and a form of description which implies (rather than categorically defines) how the colour is intended to be used is not considered acceptable. The decision of the Court of Appeal in Société Des Produits Nestlé SA v Cadbury UK Ltd (Case  EWCA Civ 1174 refers). The original application had been made by Cadbury for a specific shade of purple, and the sample of the colour was accompanied by the following description:
“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”.
The Court summed up its view in paragraph 50 by stating:
The use of the word “predominant” opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the colour purple may predominate. It is an application for the registration of a shade of colour ‘plus’ other material, not of just an unchanging application of a single colour, as in Libertel.
Applicants should consider whether the way colour is used forms an essential part of the subject matter of their trade mark. For example, if evidence of acquired distinctiveness is likely to show that a specific colour has come to be recognised as a trade mark when used in a particular manner (e.g. on the sides of the overhead canopy of a fuel service station), it may be advisable to define the mark in this way from the outset. Applicants should note that it is not possible to amend one’s trade mark in ways which substantially affect the identity of said mark after the application has been submitted.
Assessing distinctive character
In Libertel (C-104/01) the Court decided that colour per se may have a distinctive character and may be capable of distinguishing the goods and services of one undertaking from those of other undertakings. However, as colour per se is not normally used by traders as a means of brand identification (unlike, for example, words and pictures), consumers are not in the habit of making assumptions about the origin of goods and services based solely on their colour or the colour of their packaging. It therefore follows that single colours will only be deemed capable of denoting the origin of a product or service in exceptional circumstances. Marks consisting of a single colour will usually be liable to objection under section 3(1)(b) because they lack the capacity to distinguish. In some cases, single colours may also attract additional objections under section 3(1)(c) and (d) if the colour sends a descriptive message and/or it is customary in the trade i.e. the colour red for fire-fighting services, or the colour green for ecological goods/services. There may be occasions where colour applied to the goods themselves may be inherently more distinctive than when the colour is applied to the packaging; for example, blue for strawberries, in Class 31, would have the capacity to denote trade origin yet the same colour applied to packaging of strawberries, in Class 16, would be non-distinctive.
The examination of single colour marks requires careful analysis, not least because there is a public interest in not unduly limiting the availability of colours for other traders. Each case must be assessed individually.
Two or more colours
A combination of colours may be registrable, but all will depend on how the colours are presented and what they are applied to. When applications consist merely of colours applied to the goods or their packaging, it will be necessary to consider how unusual the colour combination is in relation to the goods and whether prima facie the combination is likely to strike the relevant consumer as an indication of trade source. For example, it is unlikely that the average consumer of washing tablets would, without extensive and exclusive use, view colour combinations such as green and white or yellow and white as an indication of trade source; it is more likely that they would be taken to indicate the presence of two active ingredients and therefore be given no trade mark consideration.
If multiple colours are presented as a figurative mark (for example, two colours presented within a geometric shape such as a square or circle), then as few as two colours could be accepted; however if they are simply the colours of the packaging of the product they are less likely prima facie to indicate trade source.
In addition, when considering whether colour combination marks are liable to objection under section 3(1)(b), as with single colours, consideration under section 3(1)(c) and (d) must also be given.
The term ‘company’ or ‘limited’ paired with a word (or words) which describes the goods and/or services intended for protection is unlikely to meet the requirements for registration on the basis that the resulting combination would still be descriptive and/or devoid of any distinctive character. For example, the sign ‘Soap Company’ would not be acceptable as it merely describes a company that produces soap. Similarly, the sign ‘The Organic Food Company’ would also be unacceptable as there are likely to be a large number of organic food producers which would refer to themselves as being the definitive organic food company.
The addition of ‘company limited’ or ‘Plc’ may provide some capacity to indicate trade origin, rather than just as a generic reference to a particular type of business activity. For example the mark ‘The Puppet Company’ would be considered to be descriptive whereas ‘The Puppet Company Limited’ would indicate trade origin and considered to be acceptable.
The addition of a company name to words describing characteristics of the goods or services, rather than the generic name of the goods themselves, will usually be sufficient to bestow distinctive character e.g. the mark ‘Soft and Gentle’ would not be acceptable for soap whereas ‘Soft and Gentle Limited‘ would be seen as fanciful and therefore acceptable.
Section 3(3)(b) states:
(3) A trade mark shall not be registered if it is -
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origins of the goods or service).
In Elizabeth Emanuel v Continental Shelf 128 Ltd, C-259/04, the CJEU stated in paragraph 47 of its judgment that the application of this provision “presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived”. An objection under section 3(3)(b) should therefore only be raised where there is a real potential for deception of the public, regardless of the distinctiveness of the mark as a whole. In cases where a trade mark refers to a particular place-name, an objection under section 3(3)(b) will only be justified where:
- the trade mark refers to a place-name which has a current reputation for, or association with, particular goods or services; and
- the application seeks to protect those goods or services (either because they are explicitly listed within the specification, or because they are ‘caught’ within the scope of wider terms used).
A mark is acceptable if there is no realistic possibility of deception. For example, the mark ‘Hartley’s Strawberry Jam’ for ‘jams and preserves’ would be acceptable, as would the mark ‘Britvic Orange Juice’ for ‘fruit juices’. It would be assumed that the proprietor would only use the marks on strawberry jam and orange juice respectively, otherwise they will fall foul of Trading Standards legislation.
If an applicant seeks to exclude goods or services from the specification in response to a section 3(1) objection, the mark should be reconsidered to establish whether it has now become deceptive under section 3(3). To illustrate, the mark ‘Titanium’, applied for in respect of ‘building products’ would, at first examination, face an objection under section 3(1)(b) and (c) on account of its capacity to describe the goods (i.e. those made of titanium). It would not, at the examination stage, face any deceptiveness objection under section 3(3), on account of the fact that it would appear to be against a trader’s own interests to use such a mark on anything other than building products made of titanium. However, if the applicant subsequently sought to exclude titanium goods as a means of overcoming the section 3(1)(b) and (c) objection, a section 3(3)(b) objection would be raised as it would now be deceptive for goods not made of titanium.
Section 3(3)(b) objections are applicable to marks which indicate a particular desirable quality of the goods. A desirable quality could be defined as something you pay extra for e.g. silk or cashmere clothing. It can also be based on a cultural distinction, for example, where one perceives halal or kosher foodstuffs to be of a superior quality. For some terms such as ‘organic’, there may be regulatory arrangements which must be adhered to before the term can be used in trade.
If the mark indicates a desirable quality and the goods or services do not comply with that desirable quality, then there is the real likelihood that consumer’s decision to purchase would be based on an expectation that the goods possess that ‘desirable quality’. In such cases, an objection will be taken.
Where a trade mark includes reference to a particular geographical location, and it is being used in respect of goods or services for which that location has a particular association, it is reasonable to believe that the relevant consumer would genuinely expect the product to have originated from the referenced location. Consider, for example, the following:
WHYTE’S SOMERSET CIDER Intended for use in respect of ‘cider’
On the basis that Somerset has a well-known reputation for producing cider, the relevant consumer would, at the point of selection and/or purchase, expect the product to have been produced in Somerset. Furthermore, the quality associated with cider produced in Somerset (as opposed to anywhere else in the world) may well influence the consumer’s decision to select and/or purchase that particular product over any other.
In such a case, where the geographical reference contained within the mark is understood to be an objective indicator of quality (resulting from Somerset’s reputation for cider), deception would occur wherever the product sold under the trade mark does not correspond to the geographical reference as presented in the trade mark. So in this case, the mark shown above would deceive the public if used in respect of ciders produced outside of Somerset.
This logic will apply in any and all scenarios where a trade mark seeks to take advantage of a known geographical reputation by protecting corresponding products. It is not limited to foodstuffs. The following examples reflect the practice in relation to both quality and geographical origin:
Lyon’s cashmere for ‘jumpers’
Objectionable because cashmere is more desirable than other fabrics
Artic leather for ‘clothing’
Objectionable because imitation leather is inferior to the genuine article, and can be passed off as (real) leather
Brassrite for ‘plumbing fittings’
Objectionable because brass fittings are perceived as being a better quality than their plastic equivalents
Moonsilk for ‘underwear’
Objectionable because silk is more desirable than other fabrics
Storm diamond for ‘jewellery’
Objectionable because one would pay more for real diamonds
Poh perfectly organic hampers for ‘sale of foodstuffs and beverages’
Objectionable because one would pay more for organic produce
Swisstex for ‘watches’
Objectionable because switzerland has a recognised reputation for producing high quality timepieces
Highland scotch for ‘alcoholic beverages’
Objectionable because the consumer would have an expectation that the product is genuine scotch whisky (see dedicated section on scotch and scotch whisky)
In each of the examples listed above, the list of goods/services should be restricted to the specific goods/services contained in the specification otherwise the application would be refused, for example-
Moonsilk for ‘silk underwear’
Poh perfectly organic hampers for ‘sale of organic foodstuffs and organic beverages’
Both would be acceptable.
Decorative images appearing on footwear
Where a trade mark consists of decoration to be applied to a shoe, the applicant may wish to show it in context i.e. showing its actual position on a shoe. It is commonplace for those elements which are not intended to be part of the trade mark to be shown in broken lines, which is an acceptable form of presentation. Alternatively this can be supported by inserting a mark text on the application form, for example-
The mark consists of five parallel stripes placed on the side of footwear as shown in the attached representation. The dotted lines do not form part of the mark and are entered to show the position of the mark on the goods.
Such marks will only be considered acceptable if they are sufficiently distinctive, as confirmed by the General Court’s decision in K-Swiss Inc v OHIM (T-3/15) which considered the trade mark as shown below:
Description of the shape of the goods
Section 3(1)(c) excludes trade marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods. This would refer to words which describe the shape of the product, as well as a naturalistic representations of the shape itself.
For goods that may come in a variety of forms such as, for example, chocolate products, soap, and jewellery, an objection may be appropriate if it describes the shape of the product (as opposed to the generic name of the product itself). To illustrate, the word ‘bunny’ filed in respect of chocolate products, will face an objection under section 3(1)(c) because it is commonplace for such products to be in the shape of animals e.g. bunnies. Not all words describing shapes will be considered to be descriptive; one must weigh up the balance of probability. For example, although one cannot rule out the possibility that chocolates might be made in the shape of a tulip, the likelihood is less than, say, chocolates produced in the shape of bunny rabbits. As a consequence, and in the absence of evidence to the contrary, the word ‘tulip’, applied for in respect of ‘chocolate confectionery’ would not attract an objection under section 3(1)(c).
The word ‘direct’ is descriptive when used in respect of services sold directly to the public, instead of through a broker or other intermediary, or for the specific goods themselves. It will be usual to object under sections 3(1)(b) and (c) when used alone or in combination with the name of the goods/services provided e.g. ‘DIRECT SWIMWEAR’ or ‘SWIMWEAR DIRECT’. However, this rule will not normally apply where the mark’s secondary element does not describe the product intended for protection (whether a good or a service). For example, the phrase ‘SWIMMING DIRECT’, intended for use in respect of swimming equipment, would not face an objection because the word ‘swimming’ denotes an activity, not a product. In contrast the phrases ‘DIRECT SWIMMING AIDS’ and ‘SWIMMING GOGGLES DIRECT’, would both face objection.
Generic individual elements of top level domains (gTLDs) such as ‘.com’ or ‘.co.uk’ (whether a prefix or a suffix) are considered to be totally non-distinctive. However, domain names presented in their entirety (e.g. ‘www.ipo.gov.uk’ or ‘ipo.gov.uk’) can be registered as trade marks provided they are distinctive in totality. As a general rule, one should consider whether the remainder of the mark (i.e. the elements other than ‘www’, ‘.com’ or ‘.co.uk’ etc.) is descriptive or non-distinctive. If so, there is likely to be an objection under sections 3(1)(b) and (c). For example, the signs ‘cars.com’ and ‘www.soap.com’ would be unacceptable as they merely describe the provision of cars and soaps via the Internet.
In PHOTOS.COM (C-70/13), the following was stated at paragraph 25:
” However, in paragraphs 24 to 28 of the judgment under appeal, the General Court held as follows:
24 It is appropriate to examine the word sign PHOTOS.COM as a whole. According to settled case-law, the distinctiveness of trade marks composed of words and a typographical sign, such as that at issue in the present proceedings, may, in part, be assessed by examining each of its terms or elements, taken separately, but must in any event depend on an appraisal of the composite whole. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that in combination they cannot present a distinctive character (see [judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM (suchen.de)], paragraph 31 and the case-law cited).
25 The parties agree on the fact that the word mark PHOTOS.COM, considered as a whole, reproduces the characteristic structure of a second-level domain name (“photos”) and a TLD [top level domain] (“com”), separated by a dot. As the Board of Appeal pointed out, that mark has no additional features – in particular, graphic features – because the dot is typically used to separate the second level domain from the TLD.
26 Furthermore, the addition of the element “.com” to the word “photos”, which is descriptive and devoid of distinctive character, does not render the sign distinctive as a whole. As the Board of Appeal pointed out, the distinctive part of a domain name is not the TLD, which is generic, but the second-level domain – which, in the present case, is devoid of distinctive character.
27 Additionally, it is important to note that, even if the registration of a sign as a Community mark is not conditional upon a finding of a certain level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark, the fact remains that – as the Board of Appeal found – there is no additional element to support the conclusion that the combination created by the commonplace and customary components “photos” and “.com” is unusual, fanciful or might have its own meaning, especially in the perception that the relevant public might have of the goods and services concerned (see, to that effect, [DeTeMedien v OHIM], paragraph 32).
28 Accordingly, in the absence of special characteristics peculiar to the sign at issue, the relevant public’s perception of that sign will be no different from its perception of the combination of the two words comprising the sign. It follows that, as the Board of Appeal rightly pointed out, the relevant public will not be able to distinguish the goods and services covered by the trade mark application from goods and services of a different commercial origin. Consequently, the sign is devoid of distinctive character.”
The addition of ‘.com’ or ‘.co.uk’ to words which describe characteristics of the goods or services (as opposed to describing the generic name of the goods themselves), will usually be sufficient to bestow distinctive character upon the mark in totality. For example, even though the phrase ‘Twist and Seal’ is itself likely to be objectionable for storage jars on the basis of it describing a characteristic of the goods (i.e. storage jars with a ‘twist and seal’ action), the addition of an URL suffix such as ‘.com’ is likely to give the resulting sign i.e. ‘www.twistandseal.com’ in its totality a trade mark character.
Top-level domain names introduced in 2014
To date, the average consumer has become familiar with a fairly restricted range of generic top-level domains (gTLDs), such as .com, .co.uk, .net and .org. However, the body responsible for managing gTLDs - the Internet Corporation for Assigned Names and Numbers (Icann) - is increasing the choice of gTLDs to promote innovation. The first new suffixes opened for registration in January 2014, and Icann plans to facilitate a measured rollout of new domains. Accordingly, new gTLDs will be introduced steadily over time, and will include:
- standard or Generic TLDs - these will include generic terms such as ‘.culture’, ‘.music’ and ‘.trusted’.
- community TLDs - these will include gTLDs such as ‘.catholic’, and ‘.thai’
- geographical TLDs - these will include, for example, ‘.nyc’, ‘.berlin’, and ‘.toyko’
- brand TLDs - companies and organisations will be able to apply for their own TLDs using their trade marks, for example, ‘.unicef’, ‘.motorola’, ‘.hitachi’, and ‘.tesco’
Any trade mark containing a new gTLD will be assessed in its entirety, and its capacity to meet the requirements for registration will be based on whether or not it contains a distinctive element that will enable it to distinguish. For example, an application to register the mark ‘WWW.JAZZ.MUSIC’ in respect of musical entertainment services, digital content or broadcasting would face an objection under sections 3(1)(b) and (c) as it describes a category of music.
The single letter ‘e’, when presented as a prefix, is commonly used to denote ‘electronic’ (for example, in the context of conducting business through an electronic medium). There are a number of well-established acronyms and terms which use the prefix ‘e’ in this way, for example, the expressions ‘e-commerce’, ‘e-mail’, ‘e-learning’ and ‘e-software’. Such use is supported by definitions for the letter ‘e’ as found in a number of established English dictionaries. For example, the New Oxford Dictionary of English defines it as follows: e - denoting use of electronic data transfer in cyberspace for information exchange and financial transactions, especially through the Internet.
A sign consisting of the single letter ‘e’ prefixing a word which describes the goods or services applied for may be objectionable under sections 3(1)(b) and (c), and in some cases a section 3(1)(d) objection may also be appropriate. When considering such an application, the context of the mark and the specification is important. The Internet will be searched where necessary, but it should be remembered that the fact that a term is not already in descriptive use does not preclude an objection under section 3(1)(c) if the likelihood of normal descriptive use of the term is foreseeable at the date of application.
In general, it is more likely that an objection will arise where the letter ‘e’ is combined with a description of a product (whether a good or a service) used in e-commerce, particularly goods in class 9 and services in class 38. However, each case must be treated on its own merits. So, for example, there would be no objection to ‘e-doors’ or ‘e-soap’ because (i) there is no such thing as electronic soap (ii) such goods are not normally associated with e-trading, and (iii) doors and soap sold over the Internet are the same as doors and soap sold in any other way. All considerations are relevant. However ‘e-software’, ‘e-book’ and ‘e-learning’ are open to objection. It should be noted that the Registrar makes no distinction between the letter ‘e’ being presented in either upper or lower case. The guidance set out above applies to both.
The logo shown below, which is commonly referred to, and recognised as being, the ‘EU Eco Label’ is awarded to products which provide a high level of environmental protection.
Any mark which contains either this logo, or anything which could lead to confusion with it, will face an objection under section 3(4). Consent cannot be obtained to register this as part of a trade mark.
Environmental or ecological terms
The terms ‘ECO’ and ‘ENVIRO’ are commonly used as a combining form denoting ecology, ecological or environmental and are widely used in relation to both the environment and environmentally friendly products. Whether used alone or as a prefix, the words ‘ECO’ or ‘ENVIRO’ will be treated as if they were the word ‘ecological’ or ‘environmental’ and an objection under section 3(1)(b) and (c) will be raised where the totality is considered descriptive.
Similarly, the word ‘GREEN’ also has a meaning in relation to ecology and environmentally friendly products. Therefore, an objection may be appropriate under sections 3(1)(b) and (c) when ‘GREEN’ is presented alone, or combined with other descriptive words such as, for example, ‘green cleaning products’, ‘green packaging’ or ‘green energy’.
The words ‘Euro’ and ‘European’ are interchangeable (see the Appointed Person decision EUROLAMB ( RPC 279).
Whether presented alone or with a descriptive prefix or suffix, the word ‘EURO’ will be treated as if it were the word ‘European’ and an objection under section 3(1)(b) and (c) will be raised where the totality is considered descriptive.
The Euro is also the currency of the EU and will therefore be considered objectionable for any services relating to the financial sector, and for printed matter.
The word ‘extra’ means “being more than what is usual or expected; additional” (Collins English Dictionary) and as such has a promotional or laudatory meaning. This was confirmed by the General Court in EXTRA (T-553/14). This means that the word “EXTRA” alone would be objectionable as would a common misspelling such as ‘xtra’, under section 3(1)(b)&(c).
Famous (names, pictures and representations of well-known buildings)
In all cases, consideration has to be given to the type of building. If it is a tourist attraction and is open to the public, then an objection should be raised, for example Tower Bridge, Eiffel Tower, Edinburgh Castle. Buildings which are famous but are unlikely to be the subject of mementos and ornaments are generally acceptable for example Pentonville prison is a famous building but it is unlikely that anyone would want to produce memorabilia with the name Pentonville on it.
Mementos and ornaments bearing the name and/or representation of famous public buildings are commonly sold as souvenirs and commemorative merchandise, and have no distinctive character in their own right. Such marks will be objectionable under section 3(1)(b) for products such as ornaments, ashtrays, confectionery, biscuits, key rings, t-shirts, films, DVDs printed matter, photographs and tourist services.
Famous fictional characters/stories
Names of well-known fictional stories or characters
The names of fictional characters/stories will be accepted prima facie unless they are well known to the extent that they have passed into common language and culture. The level of recognition, fame and historical use associated with some fictional names means that they are unlikely to be perceived as indicators of trade origin. For example, ‘SHERLOCK HOLMES’ is a name that has been used by many traders over the years in order to describe both a series of stories and a character that appears therein. Because of the extent of its use, today’s relevant public would not expect products bearing the name ‘SHERLOCK HOLMES’ to originate from the estate of Arthur Conan Doyle. In this type of scenario, the name of the character is devoid of any distinctive character, and is descriptive of any books, films etc. which feature that character. Objections would therefore be taken under sections 3(1)(b) and (c). However ‘SHERLOCK HOLMES’ applied for bananas or wedding dresses for example, which have no association with the character, would not face an objection.
The Court of Appeal confirmed this approach in TARZAN ( RPC 450). Although the applicant, Edgar Rice Burroughs Inc. of Tarzana, California, had been granted certain exclusive rights by the estate of Edgar Rice Burroughs (author of the Tarzan stories) to produce films, records and merchandise for distribution within the United Kingdom, registration was refused on the basis that the name of the lead character had passed into language and had become a household word. The word ‘TARZAN’ now appears in most dictionaries as referring to a strong, agile and virile man. It would not therefore be seen as a trade mark.
On the other hand, where a fictional character name has been used by a single undertaking, and/or where the Registrar believes that the relevant public perceives said character name to be under the control of a single undertaking, then there is greater likelihood that it will possess distinctiveness, and will have the inherent ability to denote commercial origin. By way of example, ‘SPIDER MAN’ is the name given to a fictional superhero who frequently appears in both comic books and films published by, produced by, or associated with Marvel Comics. The relevant public will be aware of the character’s long-standing association with the Marvel brand, and will assume that use of the name is either under the control of, or sanctioned by, Marvel comics, and so would recognise its capacity to function as a trade mark.
In cases where a fictional name has passed into language, the question of who coined it is not decisive in terms of assessing its inherent distinctiveness. Similarly, the question of whether the applicant has copyright or some other exclusive right to publish the printed material commonly associated with the title/character concerned is not of itself decisive. The question is whether the sign is likely to be taken as a badge of origin.
Depending upon the nature of the mark in question, and although not an exhaustive list, an objection may be taken in respect of goods such as printed matter, posters, photographs, figurines, films, videos, TV programs, organisation of plays and shows, toys, badges and fancy dress costumes.
In deciding whether a fictional character is ‘well known and long established’ to the extent that it has entered the language, care should be taken to avoid taking into account the applicant’s own efforts to promote the name after the date of application. If the name in question has already entered the language prior to the date of application, subsequent concerted promotional activity by the applicant would not overcome any objection.
Representations of well-known fictional characters
Similar considerations apply to representations (i.e. illustrations) of well-known fictional characters. However, it should be borne in mind that (unlike with a name) there are many ways of depicting the same character and a representation of even a widely used fictional character may be acceptable if it has distinctive stylisation.
The suitability for acceptance and registration of a sign consisting of the name of a famous individual or a well-known group very much depends on the goods and services covered by the application, and the level of fame enjoyed by that individual or group. It is possible that when used in relation to certain goods or services, the average consumer will merely see the sign as an indication that the goods or services are about the person or group rather than an indication of the trade origin.
The names of famous individuals or groups may serve as trade marks for goods and services such as printed publications, musical recordings, films, videos, TV programmes etc. on the basis that they are likely to imply some form of commercial control, and that the release/marketing of such goods and services has been authorised by the famous individual/group. Consequently there will not normally be an objection to the registration of a famous name for these goods. For example, the sign ‘Take That’ would be deemed inherently distinctive for musical recordings.
In respect of image carriers such as posters, calendars, photographs, transfers and figurines, the name of the famous person or group is likely to be seen as the subject matter of such goods, and objections under sections 3(1)(b) and (c) will be appropriate. Factors relevant to the assessment of famous names in the context of image-bearing products were considered by Mr Richard Arnold QC (as he then was) sitting as the Appointed Person in Linkin Park (O-035-05):
First, if one imagines a consumer who wants a poster depicting LINKIN PARK asking a shop assistant whether that shop stocks such things, he would be very likely to say “Do you have any LINKIN PARK posters?” I accept that he might use the alternative formulation, but in my judgment this is less likely. In the question “Do you have any LINKIN PARK posters?” the mark is clearly being used to describe a characteristic of the goods being sought, namely their subject matter.
The objection will, of course, depend on the fame of the person or group. As stated in the decision of the Appointed Person in respect of the mark ALEX FERGUSON (O-0946-06):
The more famous the personage(s) or event(s), the more likely it is that there will be a market for such goods and the less likely it is that the name will be regarded as acceptable for registration in relation to goods of that kind on the basis of the approach currently applied by the Registry in the United Kingdom.
If the person/group has only enjoyed limited fame an objection may not be appropriate. An Internet search should be helpful in establishing the degree of fame enjoyed by that person or group.
Badges of Allegiance/memorabilia
A badge of allegiance is something worn or displayed by supporters to show their support to a particular team or musical group. This would include goods such as T-shirts, mugs, textile articles, scarves, printed matter, etc.
The name of a famous sporting club or musical group may serve to identify the trade source of badges of allegiance even if the possibility of other traders producing unofficial merchandise cannot be ruled out. Consequently, such marks will normally be accepted for such goods.
In the case of Arsenal v Reed EWHC2695(Ch), Laddie J. held that the trade mark ARSENAL was validly registered under the 1994 Act, even though it could and had been used by others in a non-trade mark sense. He concluded that this did not automatically make the trade mark ARSENAL non-distinctive for scarves etc. Although Arsenal is the name of a famous football club rather than the name of an individual or group, a similar point arises: namely, whether the name of a person or organisation which others wish to use in order to demonstrate their support/allegiance should be registrable as a trade mark for relevant goods. The decision in the ARSENAL case indicates that such protection should not automatically be refused or invalidated in these circumstances.
Names of football clubs such as Aston Villa, Ipswich Town and Manchester City only refer to the club as a whole when used on the type of goods and services expected from such undertakings, for example photographs and hospitality services. However care should be taken in relation to publications, as the name of the club would then be seen as purely subject matter.
However, where the name of the sporting club is further qualified in some way, e.g. Manchester City 2013/14, then this clearly identifies the subject matter, i.e. publications, memorabilia about Manchester City’s team of 2013/2014 and as such, an objection may be applicable.
Names of Deceased Famous Individuals or Defunct Groups
In these circumstances the name is more likely to be seen by consumers as merely an historical reference to the subject matter of the goods or services, rather than the trade source of the goods. However, each case must be judged on its own facts taking account of the length of time that has passed since the person concerned has died, or the group has become defunct, and the relationship (if any) between the goods/services in the application and those associated with the dead person or defunct group.
In respect of names of famous composers, such as Beethoven or Vivaldi, for musical recordings or entertainments services, the names are unlikely to be seen as a trade mark for such goods or services but merely a reference to the music being performed. However, the names are likely to be acceptable for goods such as paints or bathroom fittings for example.
Pictures and Photographs of Famous Persons (living and deceased) and Groups
Pictures and photographs of famous persons/groups present similar issues to famous names. However, depending upon the goods, they may be more likely (compared to a name) to be taken as mere decoration and therefore lack distinctive character. ‘Personality or image’ rights do not exist in the UK, consequently a photograph of a famous individual would not act as a trade mark in respect of image carriers such as photographs, posters etc as it would be seen as purely subject matter. If such goods are removed from the specification of goods the objection may be waived.
Section 3(6) – Bad Faith
Where third parties apply to register the name of a famous individual or a recently deceased famous individual an objection under section 3(6) may be appropriate. However, this will depend upon whether the application covers goods and/or services with which the famous individual is associated, and who has applied for the mark. For example, an application to register the name of a famous fashion model for ‘clothing’ or ‘cosmetics’ would be liable to an objection because it is an obvious attempt to take unfair advantage of the person’s reputation, unless of course that mark was applied for by the model themselves. Conversely, an application to register a name of a famous fashion model for ‘agricultural machinery’ would not be liable to a bad faith objection.
An objection under section 3(6) to the name of a famous individual can be overcome by obtaining consent from that person, if it appears that the mark has not been applied for in their name. Applications to register the names of famous musical groups will not normally face an objection under section 3(6) at the examination stage. This is because to firmly establish who are the rightful owners of the names of musical groups often requires evidence and is therefore best left to be determined in opposition proceedings.
Famous painting (Representations of)
When famous paintings or parts of paintings are contained within a mark it will be seen as mere decoration, for example the Mona Lisa on souvenir-type goods such as a t-shirt or mug. The sign will therefore fail to perform the function of a trade mark, namely to act as a badge of origin, linking the goods/services to a single undertaking. An objection under 3(1)(b) is therefore appropriate. On printed matter the image may be seen as subject matter and an objection under section 3(1)(b)&(c) will be taken.
Figurative representations associated with the goods/services
Figurative representations which are either a representation of the goods themselves or are indicative of the goods concerned, would be objectionable under sections 3(1)(b) and (c). For example,
For umbrellas would be objectionable under section 3(1)(b)&(c) as it is merely a representation of the actual product.
For milk, butter, cheese and other dairy products would be objectionable under section 3(1)(b)&(c) as the image would indicate that the goods are made from cows milk.
For timber etc would be objectionable under section 3(1)(b)&(c) as the image would indicate that the goods are natural wood.
The same principles apply to applications filed in respect of services. For example, simple representations of motor cars would not be acceptable for car repair, car leasing or taxi services; a head for hairdressing; clothed figures for hire of clothing and a house for estate agencies etc.
Whilst the above representations would not be accepted, if they were fanciful, for example a laughing cow, the mark may be perceived by the relevant consumer as a distinctive sign that can serve to indicate origin.
When considering services, images of human figures performing or connected with a given service, especially if dressed in commonly recognised uniforms or outfits, are not acceptable unless shown in a stylised, cartoon-like or fanciful way. For example, the device of a plumber or tradesperson for relevant services would not be considered acceptable if the marks concerned did not incorporate other distinctive matter.
`First’ can be descriptive, for example FIRST SHOES, in respect of footwear for children, as it is common to use the word in relation to children’s first shoes. In this context objections should be raised under sections 3(1)(b) and (c). The word ‘first’ may be acceptable in combination with other descriptive or non-distinctive words for example FIRST NATIONAL BANK, as the combination of the words do not describe the services being provided.
‘Flexi’ is a well known abbreviation for ‘flexible’. Whether used alone or as a prefix, the word will be treated as if they were the word ‘flexible’ and an objection under section 3(1)(b) and (c) will be raised where the totality is considered descriptive. This will normally only apply when flexibility is a desirable characteristic of the goods/services applied for foe example ‘FLEXIPIPE’ (for pipes) would not be acceptable as it is desirable for pipes to be flexible.
Section 3(4) states:
A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU Law.
Protected Denominations of Origin (PDOs), Protected Geographical Indications (PGIs), and Traditional Specialities Guaranteed (TSGs) which are generally referred to as Geographical Indications (GIs), are terms used in the course of trade to establish an association between a place and certain goods in order to evoke a quality standard and to benefit from the region’s good reputation; for example, the PGI ‘Roquefort’ for cheese, the PDO ‘Champagne’ in respect of sparkling wine, and the TSG ‘Traditionally Farmed Gloucestershire Old Spots Pork’ for pork and all products derived from the pig.
A GI constitutes a collective right, subject to certain conditions, to all those trading in the goods of the geographical area concerned. In order to avoid misappropriation, counterfeiting and misuse, international treaties and national law protect such indications. GIs cover food, wines and spirit drinks.
Applications in Classes 29, 30, 31, 32 and 33 containing GIs will face an objection under section 3(4) where the specification of the application contains the same or similar goods to those of the GI.
If the mark consists solely of a GI an objection will be taken under section 3(4) as the term is protected and under section 3(1)(b) and (c) as it is a geographical place name and/or the type of product. A section 3(3)(b) objection would also be taken as it would be deceptive if the goods did not originate from the area, or contain the specific product.
If the mark contains a GI, an objection under sections 3(4) and 3(3)(b) is appropriate. This objection can be overcome by limiting the goods to those protected by the GI. Some examples are as follows-
Mark – NESCO RIOJA Goods - Wine
An objection under section 3(4) and 3(3)(b) would be raised but would be overcome by limiting the specification to . ‘Wine complying with the specifications of the PDO Rioja’.
Mark - NESCO RIOJA Goods - Alcoholic beverages
An objection under section 3(4) and 3(3)(b) and 3(4) would be raised but would be overcome by limiting the specification to either ‘Rioja wine’ or ‘Wine, all being Rioja’ ‘Wine complying with the specifications of the PDO Rioja’. If the applicant responds and requests that the goods should also include gin and vodka this would be acceptable for a specification of ‘Wine complying with the specifications of the PDO Rioja; gin; vodka’.
Mark - PARMA NESCO Goods - Foodstuffs
An objection under section 3(4) and 3(3)(b) would be raised in respect of ‘ham’ but would be overcome by limiting the specification to ‘Ham complying with the specifications of the PDO Prosciutto di Parma’. If the applicant responds and requests that other goods should also be included, this would depend on whether the goods are considered to be similar to those which are protected and if they could ‘include’ the protected product. For example, ‘pizzas’ would not be acceptable (unless they are limited to pizzas containing Parma ham) as they could include Parma ham as a main ingredient. Therefore, the specification should be amended to read as ‘Pizzas with ham complying with the specifications of the PDO Prosciutto di Parma’,. In contrast, ‘butter’, for example, would be acceptable unqualified.
The Regulations protecting Geographical Indications also refer to ‘misuse’, ‘imitation’ and ‘evocation’ of GIs. Accordingly, the Registrar will raise an objection under Section 3(4) in instances where the mark ‘imitates’ (mimics, reproduces elements of, etc.) a Geographical Indication, with the result that the product designated by the PDO/PGI is ‘evoked’ (called to mind). By way of example-
Mark - GERSEE ROYALTY Goods - Potatoes; live animals
The mark clearly brings to mind or evokes the PDO ‘Jersey Royal potatoes’. An objection would therefore be raised under section 3(4) on the basis that the mark is evocative of the PDO ‘Jersey Royal potatoes’ in respect of ‘Potatoes’. It is acceptable, however, for ‘live animals’ as these are not considered to be comparable products.
Mark - FETTER Goods - Cheese; dried fruit
Again, the above mark clearly evokes the PDO ‘Feta’ and an objection will be raised under section 3(4). However, ‘dried fruit’ is acceptable, as this is not a dairy product.
In both of the examples above, it is not possible to overcome the objection under section 3(4) by limiting the specification because the marks do not incorporate the precise GI or a significant element thereof. In the ‘FETTER’ example above, a limitation stating, ‘Cheese complying with the specifications of the PDO Feta’ cannot apply, as the mark does not contain the registered Geographical Indication ‘Feta’.
In accordance with section 5(4)(a) of the Act, where marks consist of or contain a registered Geographical Indication which has attracted an objection under section 3(4), the details of the conflicting GIs will be provided to the applicant in the examination report.
Geographical place names
The law regarding registration of geographical place names as trade marks has been explained and clarified by the Court of Justice of the European Union (‘CJEU’) in its judgments on cases Windsurfing Chiemsee v Boots Attenberger (‘Chiemsee’) C-108/97 and C-109/97 and by the European General Court in cases Nordmilch eG v OHIM (‘Oldenburger’) T-295/01 and Peek & Cloppenburg KG v OHIM (‘Cloppenberg’) T-379/03.
The circumstances around the two Chiemsee judgments related to commercial activity which took place on or around the shores of Lake Chiemsee in Bavaria, Germany and, in particular, attempts made by one provider of sports goods to prevent others from using the term ‘Chiemsee’ in their course of trade. On referral to the CJEU, the Court was tasked with determining the extent to which geographical place names (such as the name of a lake used for water sports) should be entitled to protection as trade marks.
In reaching its decision, the CJEU emphasised the need to consider a range of factors when assessing the inherent distinctiveness of such a sign, including inter alia the extent of any current association between the place name and the goods or services intended for protection, and the perception of those relevant consumers likely to encounter the sign when used as a trade mark.
The Court’s conclusions are effectively set out in paragraphs 31 through 36, which are set out below:
“31 Thus, under Article 3(1)(c) of the Directive [equivalent to section 3(1)(c) of the UK Trade Marks Act 1994 or ‘UKTMA’], the competent authority must assess whether a geographical name in respect of which an application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.
32 In the latter case, when assessing whether the geographical name is capable, in the mind of the relevant class of persons, of designating the origin of the category of goods in question, regards must be had more particularly to the degree of familiarity amongst such persons with that name, with the characteristics of the place designated by the name, and with the category of goods concerned.
33 In that connection, Article 3(1)(c) of the Directive [section 3(1)(c) UKTMA] does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons or at least unknown as the designation of a geographical location or of names in respect of which, because of the type of place they designate (say, a mountain or lake), such persons are unlikely to believe that the category of goods concerned originates there.
34 However, it cannot be ruled out that the name may serve to designate geographical origin within the meaning of Article 3(1)(c) [section 3(1)(c) UKTMA], even for goods such as those in the main proceedings [being, in that particular case, items of sports clothing], provided that the name could be understood by the relevant class of persons [to include the shores of the lake or the surrounding area].
35 It follows from the foregoing that the application of Article 3(1)(c) [section 3(1)(c) UKTMA] does not depend on there being a real, current or serious need to leave a sign or indication free.
36 Finally, it is important to note that, whilst an indication of the geographical origin of goods to which Article 3(1)(c) [section 3(1)(c) UKTMA] applies usually indicates the place where the goods were or could be manufactured, the connection between a category of goods and a geographical location might depend on other ties, such as the fact that the goods were conceived and designed in the geographical location concerned.
The judgment confirms that Article 3(1)(c) of the Directive (3(1)(c) UKTMA) will apply either:
- where the sign applied for designates a geographical place name which, in the minds of the relevant public, is already associated with the goods/services listed in the application;
- where there is no current association, but the name is liable to be used in the future by undertakings as an indication of the geographical origin of the goods/services concerned
The decision confirms that when assessing whether the name is liable to be used as a designation of the geographical origin of the goods/services, the registering authority must consider the degree of familiarity amongst the relevant class of persons with the geographical name in question, the characteristics of the place designated by that name, and the nature of the goods/services concerned. At the same time, there is acknowledgement that it is not necessary for goods to be manufactured in a place before the name is liable to be excluded from registration as a trade mark for those goods.
In all cases, and notwithstanding the fact that the wording of section 3(1)(c) refers specifically to ‘geographical origin’, the ‘association’ between place name and product, which the Court has confirmed is central to the assessment, need not be limited to a consideration of whether the word designates the ‘place of manufacture’ (or, in the case of services, the ‘place of rendering’). It could equally apply to the place in which the product has been designed, or simply where it has been marketed and/or sold. To use an obvious example, the word ‘China’ used on a range of electronic products would undoubtedly be perceived as a reference to the place of manufacture i.e. quite literally, the product’s geographical place of origin. Equally, the word ‘Blackpool’ used on a t-shirt, novelty hat or other souvenir/gift is likely to be perceived as a reference to geographical origin (even though the relevant consumer is unlikely to assume the product was actually manufactured in Blackpool). Although in each of these examples the ‘association’ between product and place name is subtly different, both cases would attract an objection under section 3(1)(c).
This does not necessarily mean that objections will be taken against trade marks designating geographical locations on account of them denoting nothing more than a place of sale (if that were the case, almost any and every geographical trade mark would attract an objection on the basis that products can, in theory at least, be supplied from almost anywhere). Rather, it means that consideration of the geographical significance will be assessed in a fairly broad context and will seek to identify an association (or the future likelihood of an association), in the mind of relevant consumer, between the geographical place name and the goods/services applied for.
Geographical place names with a known association to goods/services listed in the application
In situations where the examiner is aware of a known and established association between, on the one hand, a geographical area/locality (which is the subject of the trade mark application) and, on the other, the goods or services intended for protection, then an objection under section 3(1)(c) is likely to be raised.
In the case of names of countries (which, barring names of continents, will naturally denote the largest ‘type’ of geographical area), it is unlikely (although not inevitable) that a UK consumer will perceive such terms used in the context of goods offered for sale as being anything other than a reference to place of manufacture or commercial origin. To illustrate the point, the sign ‘Germany’ is unlikely to be deemed inherently distinctive for any type of product because of the extent of its commercial activity (and the reputation it enjoys because of that activity). From being used on a foodstuff supplied in a supermarket, to being used on a piece of highly specialised dental apparatus, to being used in respect of a financial service, the relevant consumer’s perception of the sign will be consistent.
The size of the geographical location will be a consideration under section 3(1)(c), although it may not always be the determinative factor. Applying the logic set out in Chiemsee, the name of a city, town, village or any commercial ‘area’ is just as likely to attract an objection under section 3(1)(c) as is the name of a country, provided it is understood by the relevant consumer as enjoying an association with the goods and/or services intended for protection (or is deemed liable to do so in the future). The city of London enjoys a reputation for all manner of products, be they financial services, tourist attractions, accommodation, fashion items and souvenirs, so the sign ‘London’ would face an objection for such goods/services and potentially more. At the same time, the city of Stoke-on-Trent, with a significantly lower geographical footprint and population count (36 square miles compared to London’s 607 square miles, and 469,000 people compared to London’s 8.5 million) has a disproportionately strong reputation for pottery products. As a result, and notwithstanding its relatively small geographical footprint, an application for the place name ‘Stoke-on-Trent’ would attract an objection where it relates to ceramics and pottery products.
Beyond the more conventional forms of geographical place names (being countries, cities, and towns), section 3(1)(c) can equally apply to any other designation of geographical area be it inter alia a district, a mountain, a lake (see Chiemsee, for example), a commercial district, see Canary Wharf  EWHC 1588 (Ch) a natural spring, a resort, or a place of natural beauty. Wherever it is considered that the relevant consumer will make an association between the place name and the product(s) intended for protection, then an objection will be likely. Equally, where it is considered that other traders may genuinely seek to use the geographical place-name in their future course of trade (most likely, again, because of the existence of an association between the place and the product) then an objection will apply. This means that a sign such as ‘the Brecon Beacons’ would be objectionable for leisure and sporting activities, and a sign such as ‘Padstow Harbour’ would be objectionable for seafood.
Geographical place names without any known association for the goods/services listed in the application
Examiners will often be required to assess a geographical place name’s inherent distinctiveness without the benefit of clear evidence to demonstrate an existing reputation. In Chiemsee, the CJEU confirmed that an existing or current reputation or association is not an essential requirement for finding a sign to be objectionable under section 3(1)(c), meaning that there will be geographical place names which do not enjoy the type of reputation mentioned above, but which nevertheless will face an objection.
Where the geographical place name intended for protection has no obvious reputation, it must still be considered how the mark will be perceived in trade. In order to do so, consideration will be given to all facts related to the place name including, but not limited to, the size of the location, and the extent and nature of commercial activity that goes on within its boundaries. Assessing the place name ‘Canary Wharf’ in the context of section 3(1)(c), Mr Iain Purvis QC, sitting as Deputy Judge of the High Court in Canary Wharf Group Plc v The Comptroller of Trade Marks  EWHC 1588 (Ch)) stated the following:
A large number of services falling with the Nice Classification (possibly most services)… are of a kind that one would expect to be available locally in any major centre of population in the UK. The names of most cities and towns would therefore be capable, when used in the UK, of designating the geographical origin of those services and therefore would be excluded from registration under section 3(1)(c) in the absence of acquired distinctiveness.” (Paragraph 22)
This paragraph, which specifically refers to services as opposed to goods, suggests that most, if not all, “major” centres of population within the UK will at least have the potential to be perceived as designating geographical, rather than commercial, origin. So objections against the names of most major UK cities and towns may be appropriate even where those locations are not shown to have demonstrable reputations for all the various services listed across the Nice Classification.
Although the Canary Wharf decision makes it clear that the size of the location is not the exclusive consideration, it is arguably the most significant, and the size of the location will always be a dominant factor. The Canary Wharf judgement used the term “major centre of population”. When assessing place names which are not ‘major centres of population’ and which have no clear association with the goods/services intended for protection (or any basis for believing there will be a future association), there will clearly be a strong case for acceptance (see, for example, the European General Court’s comments in Peek & Cloppenburg KG v OHIM (‘Cloppenburg’) T-379/03. For example, Abertillery Blues Festival is prima facie distinctive, as it is such a small town (less than 12,000 population) that it is unlikely to be a) known UK-wide, and b) expected to have more than one blues music festival. However, Abertillery Estate Agents, for example, would face an objection as it is likely that every town and city, including the smaller ones, will have a dedicated local estate agents.
It is important to remember that the Canary Wharf decision explained considerations for services only. In relation to goods, it should not automatically be assumed that most towns and cities are likely to produce them. Whilst every town, regardless of size, would likely offer library services, not every town would produce tea bags, and so the consideration of reputation becomes more prevalent. For example, Oxford Leisure Centre would face an objection under 3(1)(c), however, Oxford Tea Bags would not.
Each case will be assessed on its own merits. The examples above have been selected in order to illustrate the more fundamental principles for assessing geographical-type trade marks. In addition to the scenarios set out above, the following paragraphs provide tailored guidance in relation to some specific types of geographical trade marks.
In respect of place names which designate overseas locations, the assessment will be the same as it is for UK locations (see previous references to ‘China’ and ‘Germany’ above). Nevertheless, it should also be borne in mind that towns, cities and regions located in countries outside of the UK are unlikely to be as familiar to UK consumers as those which are within the UK. In practice, therefore, it may be easier to register the name of a small or medium-size location in (say) Poland, than it would be to register the name of a comparably-sized location in the UK for the same product. Again, each case will be assessed on its own facts.
Where an application seeks to protect the name of a small geographical area with no apparent reputation for any particular product, there may be a case for raising an objection where the services claimed are of a local nature. Consider, for example, attempts to protect place-names such as ‘Christchurch’ or ‘Lydney’ (small towns in Dorset and Gloucestershire respectively) for dentistry services and/or local bus transport services. In each case, notwithstanding the relatively small size of the geographical area, the lack of a particular reputation, and the potential for the place-names to be unknown to those UK consumers based outside of either Dorset or Gloucestershire, there may still be a case for objection under section 3(1)(c) on the basis that such terms should be kept free for others to use - most notably, other dentists and bus service providers in Christchurch and Lydney. When considering the question of locally-provided services in the context of Canary Wharf, Mr Purvis QC stated the following at paragraph 24:
(The names of small towns and villages) would cover many place names which are unknown to the majority of potential consumers of the services in question in the UK. Such names are capable of designating geographic origin to people living in or near the town or village in question, but perhaps not to the ‘average consumer’. The CJEU in Windsurfing Chiemsee noted in paragraph 33 that names which were ‘unknown to the relevant class of persons’ were not ‘in principle’ prohibited from registration. On the other hand, it could be said… that the public policy underlying the restriction on registration of geographical terms is not served by allowing monopolies to be obtained over the names of small towns for the kind of services already being provided by numerous traders in those towns.
Natural Produce (in particular, processed and unprocessed foodstuffs)
The names of places which are likely to be the source of natural produce are unlikely to be registrable as trade marks for such goods even if the place identified by the mark has no specific reputation. A place will have to be obscure before its name can be registered as a trade mark for unprocessed products of the kind frequently sold from roadsides and farm shops, such as fruit and vegetables, flowers, potatoes, water, eggs and milk. This may not be the case in respect of processed foodstuffs, which are less likely to be associated with local producers and providers. In the case of such products, the names of a larger, more populous areas may be objectionable if the examiner considers them likely to be perceived as a reference to where the foodstuff was processed.
A number of applications seeking to register postal address as trade marks have been made in recent years. This may reflect the growing trend to promote and market new commercial and residential developments by reference to postal address in which they are found. In most cases the sign intended for protection has commonly consisted of only part of the full postal address i.e. ‘5 Grand Plaza’ or ‘1 Central Square’. In such cases, and notwithstanding any intentions of the part of the applicant to use the sign as a trade mark as opposed to a mere address, an objection will be taken wherever it is found that the sign does exist as an actual postal location. Where the applicant contests that such a sign has been used as a trade mark (as opposed to a simple address), then they may use the proviso to section 3(1), which allows such objections to be overcome where it can be demonstrated that the sign has acquired distinctive character through the use made of it.
It should also be noted that full postal addresses (such as, for example, ’12 High Street, Kidderminster, KM6 8TR’) will be subject to an objection under section 3(1)(b) on the basis that they are devoid of any distinctive character. The objection will apply regardless of context.
Get up (‘Surplus’)
When considering whether a trade mark, has any distinctive character, one must consider whether the sign, as a whole, will identify the trade source of the goods or services to the average consumer.
Consideration will be given to the impact of the configuration or presentation, the extent of the descriptiveness of the word element, and the interplay between the two. The more the word element appears to be a generic description of the product, the less likely it is that the average consumer will perceive the sign in its totality as being a trade mark, and the less likely it is that such perceptions will be changed by minor elements of stylisation and/or get-up. The distinctive element must also be of a sufficient size in the mark as a whole to be noticeable to the average consumer. The distinctive element must be visible and legible as a matter of first impression.
Consider, for example, the following trade mark filed in respect of computer programming:
The stylised font used in the above example is reasonably generic and does not imbue the mark with a trade mark character.
Where the application is for a shape and includes a distinctive word or figurative element, the mark will generally be acceptable. This is because the mark cannot be said to consist exclusively of a sign which may serve in trade to designate the kind of goods, and cannot be said to be devoid of any distinctive character.
The following examples show marks which all contain a descriptive word element combined with a particular form of presentation and/or additional figurative elements. Although the word elements are descriptive when considered in their own right, the unusual presentation in each of these marks i.e. the ‘get up’ or ‘surplus’ renders the marks as a whole distinctive and therefore acceptable
In contrast, the following marks which also consist of descriptive words combined with an additional figurative element are open to objection on the basis that their additional elements are either imperceptible in normal use, or they reinforce the descriptive message of the words.
Where the word ‘gold’ will be seen in a laudatory or descriptive manner, an objection under sections 3(1) (b) and (c) will be raised. The Appointed Person has upheld the refusal of BONUS GOLD ( RPC 859) for financial services, accepting that the word ‘gold’ is used in a laudatory fashion in that particular sector. Clearly, alongside its use as a laudatory term, the word ‘gold’ will have its literal and obvious meaning as a precious metal or colour, and so objections based on that characteristic will be equally valid.
Green crosses on a white background are generic for pharmacy and medical goods and services. White crosses on green backgrounds are generic for first aid goods and services. Such devices are not specifically covered by the Geneva Convention (see Red Crosses), but would be objectionable under section 3(1)(b). They would be considered to be non-distinctive if used alone for goods and services in those fields. Use in combination with additional distinctive elements, however, would not face an objection.
Holograms can operate as trade marks provided they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and can be represented via an MP4 file or a graphic or photographic reproduction.
The acceptability of holograms, like words or other types of trade marks, must depend upon whether it is, or has become, a distinctive sign; that is, whether the average consumer will perceive the moving image(s) as meaning that the goods or services are exclusively associated with one undertaking. Consideration should also be given to whether other economic operators are likely to need to use the same or similar image(s) in the ordinary course of their business. For example, a hologram of a teapot pouring tea into a cup will not be distinctive for e.g. café services or for tea, whereas a hologram showing a spinning gyroscope for tea would be.
Trade marks containing the expression ‘House of…’ will normally be accepted even if accompanied by a descriptive or non-distinctive word unless the word ‘house’ is established within the relevant industry. For example, the sign ‘HOUSE OF FASHION’, intended for use in respect of clothing, would not be acceptable because the term ‘fashion house’ is well-known and in common use. The same would apply to a sign such as ‘HOUSE OF FINANCE’, for use in respect of financial services, on the basis that ‘finance house’ is a known term. In contrast, a sign such as ‘HOUSE OF SPEED’, intended for use in respect of, say, computers or kitchen appliances would be acceptable.
I or i
The single letter ‘i’, whether presented in lower or upper case, will be considered acceptable unless the examiner identifies (for example, as a result of undertaking Internet research) that the letter is being used in a descriptive way, either on its own or as a prefix in combination with other descriptive words.
International civil defence sign
The International Civil Defence sign consists of an equilateral blue triangle completely surrounded by an orange background, as illustrated below:
Use of this symbol within the UK requires the consent of the Secretary of State for Defence under the provisions of section 6(1) of the Geneva Conventions Amendment Act 1995. As a result, trade mark applications which consist of or contain either the symbol or anything which so nearly resembles it to the point of being capable of being mistaken for the symbol, are open to objection under section 3(4) for all goods and services.
The word ‘just’ has a number of meanings including ‘we specialise in’. For example, the mark ‘JUST EDUCATION’, applied for in respect of educational services, will merely indicate a specific specialism in educational services, see the High Court judgment Just Employment (a firm) v Just Employment Law Ltd [ EWHC 2203 (Ch)]). For certain goods, the word ‘just’ also denotes purity or concentration, for example, the words ‘JUST JUICE’ in respect of fruit drinks would be objectionable. The same would apply to “Simply”.
Labels (Representations of)
Figurative representations of labels are considered to be devoid of any distinctive character, and an objection under section 3(1)(b) will be appropriate in most cases. In certain cases, a composite label device may be found to be commonly used in trade e. g. a basic label shape decorated with grapes or vines may be seen to be common in trade where the goods concerned are wines.
The following mark would be open to objection under section 3(1)(b) as labels similar to the one depicted are commonly found on the necks of wine or beer bottles.
Images of landscapes for goods such as foodstuffs, especially pastoral scenes on milk and dairy products, mountain scenes on mineral water etc, are considered unacceptable because they are commonly used as mere decorative matter. An objection under section 3(1)(b) would be appropriate.
Letters and numerals
Letters and numerals may be acceptable where they have no meaning in respect of the goods and services claimed in the application, for example, the mark ‘X1’ for fruit juice. However, letters and numerals which designate characteristics of the goods/services and/or which are customary in the trade are excluded from registration by sections 3(1)(c) and/or (d). The following are given as examples:
- date of production of goods/provision of services for example ‘1996’ and ‘2000’
- size of the product for example. ‘XL’ for clothes, ‘1600’ for cars, ‘34R’ for clothing, and ‘185/65’ for tyres
- quantity for example ‘200’ for cigarettes
- dates for example. ‘1066’ for history books, ‘1996’ for wines
- telephone codes for example ‘0800’ and ‘0500’
- time of provision of the product for example ‘8-10’, and ‘24/7’
- power of the goods for example ‘115’ for engines and or cars where it denotes BHP (Brake Horse Power)
- memory size for example ‘32GB’ for computer storage devices
- strength for example. ‘8.5%’ for lager
Distinctiveness - Well known practices of trade to be considered
Numerals such as 18 or 21 are commonly used on jewellery to denote milestone birthdays. Similarly, single letters are often adorned on certain items of jewellery as mere decoration to signify the wearer’s name(s) through initials. Single letters can also be used descriptively on other goods, for example the letters ‘L‘ and ‘S’ are often used to denote performance characteristics of a range of cars or sizes on clothes.. Such non-trade mark use is unlikely to indicate the origin of the goods, and so an objection under section 3(1)(b) and or (c) would be appropriate. However, in instances where research or general knowledge fails to identify a history of non trade mark use of letters/numbers in a particular trade or for the goods/services claimed, the application will be accepted.
Abbreviations, acronyms or initials
Trade marks consisting of abbreviations, acronyms or initials will be accepted unless research indicates that the letters represent descriptive words used in trade to denote the goods and/or services intended for protection. For example ABS (Advanced Braking System) for braking systems, CAD (Computer Aided Design) for computer software, PMS (PreMenstrual Syndrome) for pharmaceutical products. In such cases an objection under section 3(1)(c) will be taken.
Abbreviations, acronyms or initials coupled with their full meaning
The CJEU judgment in the combined cases Alfred Strigl Deutsches Patent- und Markenamt and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH (C-90/11 and C-91/11) confirmed that the trade marks ‘Multi Market Funds MMF’ and ‘NAI-Der Nature-Aktien-Index’ would be seen as descriptive for their respective goods and services. In respect of the term ‘multi market funds’ it had been established that this was descriptive for the services claimed, namely financial services, but the Court went on to find that the three-letter combination ‘MMF’ would be understood as an abbreviation for the accompanying word elements, but only if it appeared in combination with the word elements. The Court was unconcerned with determining whether or not the three-letter combination ‘MMF’ was already established as an abbreviation for the term ‘multi market fund’, or with the extent to which it might have other meanings. This identifies that there does not need to be current use of an abbreviation in order for an objection to be raised, so long as the abbreviation represents the additional descriptive word combination.
Therefore where the mark consists of a letter and word combination and the letter sequence clearly and unambiguously represents the initial letter of each accompanying word in the mark, an objection under section 3(1)(c) will be raised. For example, the sign ‘MGS Missile Guidance System’, applied for in respect of ‘electronic apparatus’, would face objection under section 3(1)(c).
In instances where the word element is not descriptive but is considered to be devoid of any distinctive character pursuant to section 3(1)(b), the combination will be considered to be acceptable. For example ‘SFR Super Fast Ride’ in respect of ‘cars and vans’ would be acceptable because the term Super Fast Ride is merely non distinctive for cars and vans, it is not directly descriptive. Therefore the combination with the abbreviation SFR makes the mark acceptable as a whole.
Where the word ‘link’ is used as a prefix or suffix for a descriptive word, and where the resulting combination has a clear meaning, the resulting sign should be objected to under sections 3(1)(b) and (c) for example ‘LINK HEATHROW’ for bus or train services; ‘COMPUTERLINK’ for network communication apparatus; ‘FASTLINK’ for computer software and telecommunication services.
Other combinations containing the word ‘link’ which do not create either a descriptive or non-distinctive whole will usually be acceptable. For example ‘TABLE LINK’ for tables; ‘BABY LINK’ for baby toys; ‘PAPER LINK’ for paper clips are acceptable.
M’ or ‘m’
The single letter ‘M’ used as a prefix (whether in upper or lower case) denotes the word ‘mobile’ in the context of conducting banking, bill payments and commerce via wireless handheld devices (Collins Dictionary refers). An application for a word which describes the goods or services applied for and is prefixed with the letter ‘m’ may be objectionable under sections 3(1)(b) and (c), and in some cases
Magazines and magazines titles
By their very nature, magazine titles tend to contain descriptive elements. This is to enable the average consumer to know, more or less, the content of the magazine. Nevertheless, consumers are used to relying on them as indicators of commercial origin and so consequently they can function as trade marks.
This approach was confirmed in The Adult Channel (R772/2000-4)) to accept the mark in respect of entertainment services and publications. Whilst not binding upon the Registrar, the reasoning set out in this decision is logical, and reflects the IPO’s own practice The decision stated:
24 Furthermore in the specific field of printed matter, and particularly in that of newspapers, the tolerance of ‘descriptive’ marks has been traditionally broader than in other sectors. This established trade practice should be taken into consideration when assessing the descriptiveness of the mark in relation to the nature of the specified goods, whose relevant consumers, in the case the relevant readers, are so familiar with this practice that they see marks, which they would not acknowledge as such in other areas of trade, as normal.
Whilst consumers may be familiar with such trade practices, this does not mean that wholly descriptive terms intended for use in respect of magazines and closely related goods and services are always automatically acceptable. The most descriptive of terms will still be objectionable even where used on magazines. For example, the mark ‘SEA FISHING MAGAZINE’, applied for in respect of magazines would attract an objection under sections 3(1)(b) and (c).
The mark would also be objectionable for the following goods and services as they are considered closely related to magazines:
Class 9: Electronic magazines (downloadable). Class 16: Printed matter; books; printed publications. Class 41: Publishing services; Non downloadable electronic magazines.
The signs ‘NURSES MAGAZINE’ and ‘NURSING MAGAZINE’ would be objectionable. This is because they are purely descriptive marks which consist essentially of the name of the subject matter (as plainly as it can be) plus the name of the publication type. The signs ‘NURSING TIMES’ and ‘NURSING WEEKLY’ would be acceptable, however, as they are not immediately and exclusively descriptive.
According to Collins Dictionary, MASTER relates to “a person with exceptional skill at a certain thing”, for example MASTER BUILDER and MASTER CRAFTSMAN. MASTER is consequently much more likely to be meaningful in relation to services rather than to goods. For example ‘MASTER BRICK’ would be acceptable in respect of bricks, but ‘MASTER BRICKLAYER’ would be objectionable for building services.
A further meaning given for the word ‘master’ is “a machine or device that operates to control a similar one” (Collins Dictionary). The word therefore can also be used in trade to describe goods with a control function, for example, a ‘MASTER CONTROL’.
As a general rule, signs containing the word ‘master’ should be assessed as follows:
- ‘master’ (alone) is acceptable for goods/services which do not have a control function (e.g. beds, or cleaning services), or for goods/services not provided by ‘artisans’ (that is, a worker in a skilled trade, especially one that involves making things by hand). Conversely, the word is objectionable for goods/services with a control function provided by artisans
- ‘master’ combined with descriptive words is acceptable for goods which do not have a control function e.g. ‘MASTERBUS’ or ‘BUSMASTER’ intended for use in respect of buses, and ‘SWINGMASTER’ intended for use in respect of golf clubs. However, the word is objectionable when combined with goods which do have a control function for example ‘MASTERSWITCH’ for electric switches, or ‘MASTERKEY’ for keys
- ‘master’ combined with a word which does not directly describe goods or services provided by an artisan is acceptable for example ‘OFFICE MASTER’ intended for use in respect of cleaning services. Conversely, the word is objectionable when combined with a word describing products or services provided and/or rendered by artisans for example ‘MASTER PRINTERS’ for printing services, or ‘MASTER BAKER’ for bakery services
Motion marks can function as indicators of trade origin provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are either graphically represented (as below) or held on digital files, ie namely MP4. Both of these criteria must be considered when deciding whether or not to accept the mark. In the example shown below of a coin being dropped into a money box, considerable effort had been invested in ensuring that the representation was acceptable in accordance with all the Sieckmann criteria i.e. the representation should be “clear, precise, self-contained, easily accessible, intelligible, durable, and objective”. This criteria applies equally to digital files in respect of a motion mark.
The trade mark is an animated sequence consisting of 35 still images that make up the sequence changing within a timeframe of approximately six seconds and which starts with the smiling pig device which then blinks, wiggles its ears, looks upwards with its eyes, receives six gold coins falling from above at regular intervals into the pig device’s coin slot, wiggles its ears as the gold coins fall inside and smiles, wiggles its bottom to shake the gold coins around inside and finishes the sequence with a broad smile.
This application was filed for a wide variety of goods and services in classes 4, 9, 35, 37, 38 and 39, with the core services being related to the provision of gas and electricity.
In this example, the mark satisfies both criteria, namely that it is suitably represented and is distinctive for the goods and services applied for.
Simple animations are now used so extensively on websites and other digital media meaning that the consumer is less likely to perceive them as trade marks, than the more traditional word or figurative trade marks. An objection under sections 3(1)(b) and/or (c) would therefore be appropriate for non-distinctive and descriptive animations.
Multi component marks (Trade marks made up of a number of components, each of which is descriptive)
Marks which consist of a number of descriptive elements are themselves descriptive if the combination creates a descriptive totality. However there may be instances where the combination and placement of descriptive elements creates a distinctive totality. For example ‘THE SIX BLADED RAZOR’ for razors would be objectionable, whereas ‘RAZOR BLADED SIX’ would be acceptable.
In Campina Melkunie BV v Benelux-Merkenbureau (C-265/00 the CJEU determined that a trade mark composed of multiple elements, each of which is descriptive of the goods/services in the application, is excluded from registration under section 3(1)(c) unless there is a perceptible difference in the meaning created by the sum of its descriptive parts.
For the purposes of determining whether the ground for refusal set out in section 3(1)(c) applies to such a mark, it is irrelevant whether or not there are synonyms capable of designating the same characteristics of the goods or services referred to in the application for registration. This may apply even where the combination of descriptive parts creates a word or phrase which has not been seen before and is unlikely to be used by other traders.
These principles were confirmed in the CJEU’s decision in BioID v OHIM (C-37/03 P), where, taking into account that the fact that Bio is an abbreviation of the adjective ‘biometrical’ and ID is the abbreviation of the noun ‘identification’, the previously unseen combination as a whole, means ‘biometrical identification’.
Therefore, that abbreviation, which is indistinguishable from the goods and services covered by the trade mark application, is not of a character which can guarantee the identity of the origin of the marked product or service to the consumer or end-user from the viewpoint of the relevant public.
In addition, in the light of the recurrent nature of the typographical features of the abbreviation BioID and the absence of any particular distinctive element, the characters in ‘Arial’ type-face and characters of different boldness do not enable the trade mark applied for to guarantee, to the relevant public, the identity of the origin of the goods and services covered by the trade mark application.
Furthermore, the two graphic elements placed after the abbreviation BioID, namely a full stop (.) and a sign (®), do nothing to enable the relevant public to distinguish, without any possibility of confusion, the products or services covered by the trade mark application from others which have another origin. It follows that those graphic elements are not capable of fulfilling the essential function of a trade mark, […], in relation to the relevant goods and services.
Nevertheless, if the combination of descriptive elements is unusual and creates an impression that is sufficiently far removed from being simply a composite description of the goods/services, the trade mark may be registrable. For example whilst the mark ‘MULTIBLADE’ would not be registrable for razors, the mark ‘MULTICLOSE’ is registrable. This is because although razors commonly have multiple blades (and ‘Multi’ is therefore descriptive) which are designed to provide the user with a close shave (and ‘close’ is therefore descriptive of the intended purpose of the product), the terms ‘Multi’ and ‘Close’ would be an unusual combination and not a natural one to use as a description of these characteristics of the product.
A multi-media mark is one that incorporates eg, motion and sound. These marks can operate as trade marks provided they are capable of distinguishing the goods or services of one undertaking from those of another.
The acceptability of multi-media marks, like words or other types of marks, must depend upon whether it is, or has become, a distinctive sign; that is, whether the average consumer will perceive the mark as a whole as meaning that the goods or services are exclusively associated with one undertaking. Consideration should also be given to whether other economic operators are likely to need to use the same or similar media in the ordinary course of their business.
My and my first
Use of the word ‘My’ in combination with other personalised descriptive words in relation to services which can be tailored to suit the needs of an individual are likely to be objectionable, for example:
‘MY PERSONAL TRAINER’ - for training services ‘MY PERSONAL BANKER’ - for financial services ‘MY WEDDING PLANNER’ - for planning services
However, in respect of goods, the use of ‘My’ may be acceptable as they are less likely to be personalised. Take the example ‘MY BOOK SHELF’. The shelf is only likely to be personalised by the user after purchase, with their unique selection of books not be personalised by the producer of the furniture itself.
Where the mark consists of the words ‘MY FIRST…’ it will be objectionable for any goods which are commonly and/or specifically produced for children. This is because certain goods are bought as a landmark gift, making them a “first”. For example, the following marks would all be objectionable:
‘MY FIRST CD PLAYER’
‘MY FIRST BIKE’
‘MY FIRST BRA’
Names of colours
Names of colours, such as ‘RED’, ‘BLUE’, ‘YELLOW’ would normally be objectionable under sections 3(1)(b) and (c) for most goods on the basis that they may be provided in that colour.
In certain circumstances, the mark may also serve to designate a particular type of goods, for example BLUE cheese, BROWN sugar, RED wine etc.
The word ‘green’, whilst obviously being the name of a colour, also has a meaning in relation to ecology and environmentally friendly products. Therefore, an objection may be appropriate under sections 3(1)(b) and (c) where the word is presented alone, or combined with other descriptive words such as, ‘GREEN CLEANING PRODUCTS’, ‘GREEN PACKAGING’ and ‘GREEN ENERGY’.
Similarly words such as ‘EMERALD’, ‘PEACH’, ‘APRICOT’, which, despite having alternative meanings, are nevertheless recognised as having a strong connotation with definitive colours, and are therefore equally objectionable. However, if the other meaning is more dominant, then the mark is likely to be acceptable. For example whilst words such as SAPPHIRE or FLAMINGO have a colour connotation, they are more renowned for their principle meaning.
Dictionary words which are descriptive but obscure and unlikely to be used by others can be accepted, for example, the words ‘LUNA’ (alchemists name for silver) and ‘CARNELIAN’ (an alternative name for CORNELIAN, a red gem stone which is less well known).
In respect of services and goods that are unlikely to be or incapable of being coloured (computer software, for example) such marks may be acceptable.
Where a mark consists of the name of a place where natural springs are known to exist, a geographic objection under sections 3(1)(b) and (c) should be raised if the specification consists of goods such as bottled water for example. Depending on the size of the geographical location, and other factors such as the extent of its exploitation by third parties, such an objection may be overcome if the applicant provides evidence to show that it owns exclusive rights to the spring.
Newspapers -geographical words in newspaper titles
The titles of newspapers often combine geographic names with other words commonly used in the trade such as ‘Echo’, ‘Chronicle’ and ‘Gazette.’ As is the case with magazine titles, the public are used to seeing such combinations and perceiving them as trade marks. Therefore, newspaper titles may be accepted where they consist of geographic names combined with words commonly used in the trade e.g. ‘SUNDERLAND CHRONICLE’ or ‘GWENT ECHO’. However, care should be exercised where the totality describes the goods. For example, the expressions ‘MONMOUTH NEWS’ and ‘BEDFORD GUIDE’, intended for use in respect of newspapers and magazines etc. would still be open to objection under section 3(1)(c) on the basis that the totality describes both the nature and general area of circulation of the goods. This is because in contrast to “Chronicle” and “Echo”, the terms “News and “Guide” are totally descriptive.
Trade marks may consist of words in languages other than English. Where marks contain Welsh or Gaelic words they will be treated in the same way as trade marks consisting of the equivalent English words for the purposes of section 3(1). Where marks contain words from languages other than those mentioned above the following will be considered.
There are no grounds for refusing registration of trade marks on the basis that they are descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question. In contrast, non-English word marks which are likely to be recognised as a description of a characteristic of the goods or services (or otherwise be descriptive of the goods/services) in the application will be objectionable.
The Most Commonly Understood European Languages
Historically, the most widely understood European languages in the UK have been French, Spanish, Italian and German. However, the percentage of other European languages spoken in the UK is growing, with more than 3 million EU nationals living in the UK as of 2015. Whilst the majority of UK consumers cannot be assumed to be fluent in all or any of these languages, most of them will have an appreciation of some of their more common words. In addition, such is the population size of EU nationals in the UK, consideration must be made of all European languages and their meanings in regards to potential objections.
Non-English Descriptions which are most likely to be understood
The average UK consumer will be familiar with the non-English names of certain products and/or services, and the local name for their geographical origin. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’, and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively.
Non-English Words which resemble English Descriptive Words
The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. So for example, the Italian word ‘caffe’ should be rejected as a trade mark for coffee because the average UK consumer of coffee would be likely to see that it simply means ‘coffee’.
Further Considerations which apply to Non-English Descriptive Marks for Services
Unlike for goods, services are less likely to be imported into the UK, so the UK average consumer is not accustomed to seeing such terms.
Consequently, with certain exceptions, such as travel, transport and language services, non-English words may be registrable for some services even where the meaning of the words would be apparent to the relevant average UK consumer. For example, the use of ‘Pret a Manger’ (ready to eat) in relation to a catering service provided in the UK is unlikely to be regarded by the trade as simply descriptive use, even if they know what the French words mean.
The approach in so far as the specialist consumer of services goes, however, is slightly different. For example, the average consumer is unlikely to understand the meaning of the Spanish language term ‘Paellera’. A paellera is the large circular pan used for cooking paella. Although the average consumer is unlikely to be aware of this, a chef or kitchen worker in a Spanish restaurant would. From their perspective the term is purely descriptive, and because they are the relevant consumer, the mark is objectionable.
Goods or Services aimed at Minority Groups
Where the goods or services are aimed at a specific consumer who is far more likely to understand the language of the mark rather than the average UK consumer as a whole, this should be taken into account in determining whether the mark is objectionable under section 3(1)(c).
For example, the Arabic word (which translates into English as ‘Niqab’) would not be registrable for niqabs in class 25 because this would be a normal way for traders of these goods to market them as they are primarily used by the Arabic speaking community. The same would apply if the application includes more general descriptions of the same goods, such as ‘clothing.’
If the same Arabic word was accompanied by a distinctive figurative element, however, the mark would no longer be considered objectionable. The same applies to other minority languages. This is because the addition of a distinctive figurative element will carry the overall impression of the mark.
Non-English Words which have become customary in the Current Language or in the Bona Fide and Established Practices of the Trade
Non-English words which have become generic in the trade for goods or services (by customers or traders) are excluded from registration under section 3(1)(d). The Japanese word ‘Karaoke’ has entered into the English language as a descriptive term and is therefore not acceptable for entertainment services. Neither is the Chinese term ‘‘Dim Sum’ acceptable for savoury snacks.
Characters (e.g. Chinese, Japanese, Cyrillic)
Characters in script such as Chinese, Japanese, Arabic, or a non-Roman alphabet language are not assumed to be acceptable prima facie. They must be transliterated to find out their meaning. If the words transliterate into something which is descriptive for the goods/services, an objection must be raised.
Under this consideration, it is important to bear in mind that specific goods are often included in more general terms used in specifications. For example the Arabic characters خمار transliterates as ‘yashmak’ would clearly be descriptive for `yashmaks’, and would also be covered by a general term such as ‘outer clothing’ in Class 25. If, however, a mark is applied for with either Chinese, Arabic, Cyrillic alphabet etc. terms, and is accompanied by a distinctive figurative element, no translation will be necessary. This is because the addition of a distinctive figurative element will carry the overall impression of the mark.
Specific Greek or Cyrillic letters
The lambda , psi , omega , beta , and sigma symbols , and the words ‘DELTA’, ‘OMEGA’, ‘GAMMA’ and ‘BETA’, are all registered in many classes and successfully serve the purpose of a trade mark. However, Greek letters are frequently used as symbols for electrical purposes, and so care must be taken when considering goods proper to class 9. Similarly, some Greek letters have significance in mathematics e.g. ‘delta’, ‘pi’ and ‘sigma’ and are therefore devoid of any distinctive character for calculators and the like.
The European Union have adopted a reverse Greek letter epsilon to indicate aerosol dispensers which meet certain standards. For this reason the letter ‘epsilon’ is objectionable for aerosols and related goods and services.
Section 3(3)(a) of the Trade Marks Act precludes the registration of marks which ‘contrary to public policy or to accepted principles of morality’. The term ‘public policy’ is intended to deny protection to marks which could induce public disorder, or increase the likelihood of criminal or other offensive behaviour. Caution will always be required where marks appear to have criminal connotations, e.g. are associated with counterfeiting, illegal drugs or violence, or which exhibit racial, religious or discriminatory characteristics; or appear to be trivialising criminal activity. It must be decided whether such marks should benefit from or be denied the advantages of protection by intellectual property law and, if in doubt, examiners should refrain from erring on the side of caution which was covered in the JESUS case BL/O/021/05:
the right to freedom of expression must always be taken into account without discrimination under section 3(3)(a) and any real doubt as to the applicability of the objection must be resolved by upholding the right to freedom of expression, hence acceptability for registration,
The applicability of the objection must be decided objectively and non-discriminately,
Otherwise there would be a risk that the vociferousness of those with an axe to grind might illegitimately diminish the free speech rights of those whose views they oppose”, paragraph 8.
For a mark to be considered objectionable it does not need to offend a significant proportion of UK consumers. It is sufficient that a mark which is likely to cause serious offence to a minority of consumers in the UK for it to be objectionable under section 3(3)(a).
The notion of ‘accepted principles of morality’ is somewhat harder to define than that of ‘public policy’, and the assessment depends on the degree of censure involved (see TINY PENIS (BL/O/538/01).
If a mark is merely distasteful, an objection under section 3(3)(a) is unlikely to be justified, whereas if it would cause outrage or would be likely to significantly undermine religious, family or social values, then an objection will be appropriate.
The outrage must be amongst an identifiable section of the public. A higher degree of outrage amongst a small section of the public will be sufficient to raise an objection, just as a lesser degree of outrage amongst a larger section of the public will also suffice.
In order to make the assessment, the consideration must be objective, not subjective. Objectivity means being neither out of date nor a trend setter; not setting some kind of moral standard but also not being insensitive to public opinion.( See HALLELUJAH RPC (1976) 93 (22).
The nature of the goods or services can influence the degree of likely offence, for example ‘SCREW YOU’ would be objectionable for most goods and services but acceptable for goods sold to adults via sex shops.
Offence caused by misuse of religious symbolism
There are a large number of different religious beliefs held and practised in the United Kingdom. Care should therefore be taken when assessing marks which consist of or contain elements with religious significance and which may provoke offence beyond mere distaste, or even outrage, if used to parody a religion or its values. Where a sign has a very sacred status to members of a particular religion, its mere use as a commercial trade mark may itself be enough to cause outrage. In JESUS (BL/O/021/05) the Appointed Person said:
The power of the word JESUS to give rise to the relevant concern is not diminished by the nature of the goods in the different categories specified” paragraph 26.
An objection under section 3(3)(a) can also be appropriate when the mark consists or contains images which would be considered offensive. For example, objections should be raised against explicit full frontal nudes and offensive (scandalous) back views. No objection should be raised to outline drawings of nude figures which are not explicit.
Examples of marks considered to be objectionable under section 3(3)(a):
Offence is caused by the fact that an accepted religious value is likely to be undermined to a significant extent if this word is used as a trade mark (JESUS BL/O/021/05);
Although the word ‘junkie’ may have been intended to convey a positive message (in the sense of someone being ‘addicted to Christianity’), this by itself is not enough to outweigh the general offence likely to be caused by the appropriation of the word ‘Jesus’ for use in an explicitly commercial contex (JESUS JUNKIE BL O/133/10);
when spoken in some regional dialects, the expression is phonetically identical to, and visually similar to the expletive (FOOK BL/O/182/05)
This mark would be contrary to public policy as it promotes counterfeiting;
Examples of marks which have been accepted under 3(3)(a):
‘START YA BASTARD’
In respect of ‘engine lubricants’, this is considered to be fairly inoffensive and therefore acceptable;
In relation to ‘adult board games’ this is a fairly mild expletive and not considered to be contrary to accepted principles of morality;.
Bonk is a fairly mild slang word and therefore acceptable;
Applied for in respect of ‘beer’, this is considered to be fairly mild bad language. Also the words are somewhat hidden as presented.
Again in respect of ‘beers’, the mark is considered to be fairly inoffensive.
Olympic and Paralympic symbols or words
The following symbols and words are protected under the Olympic Symbol, etc (Protection) Act 1995 and the London Olympic Games and Paralympic Games Act 2006.
The Olympic motto (‘Citius, Altius, Fortius’ which means ‘Faster, Higher, Stronger’), the Paralympic motto (‘Spirit in Motion’), and the words ‘Olympic(s)’, ‘Paralympic(s)’, ‘Olympian(s)’, ‘Paralympian(s)’, ‘Olympiad(s)’ and ‘Paralympiad(s)’ are also all protected under the Olympic Symbol etc (Protection) Act 1995 (as amended by the London Olympic Games and Paralympic Games Act 2006). Protection also applies to those signs deemed sufficiently similar to the Olympic / Paralympic Symbol, the Olympic / Paralympic motto and the words ‘Olympic(s)’, ‘Paralympic(s)’, ‘Olympian(s)’, ‘Paralympian(s)’, ‘Olympiad(s)’ and ‘Paralympiad(s)’ to the extent that they are likely to create an association with those protected signs in the mind of the public. Where an application is made consisting of, or containing, any of the aforementioned Olympic/Paralympic symbol or words (or those which are deemed to be similar in accordance with the law).
An application containing any of the above will be objectionable under section 3(4).
Organisations (names of)
Words which describe the nature of an organisation are not excluded from registration under section 3(1)(c), unless the words may also serve in trade to describe characteristics of the goods/services. For example, the sign ‘NATIONAL INSTITUTE FOR THE DEAF’ describes an organisation but not the services provided by it. Consequently, there is no objection under section 3(1)(c).
In contrast, the sign ‘NATIONAL BREAKDOWN’ (for vehicle recovery and repair) may be the name of an organisation, but may also describe a characteristics of the services that organisation provides i.e. breakdown services with national coverage. Consequently, the mark would be objectionable under section 3(1)(c).
The inclusion of words such as ‘Institute’, ‘Foundation’, ‘Association’ and ‘Society’ will generally mean that the name describes the organisation rather than goods or services. However, where the name of an association is commonplace, it will nevertheless face an objection, e.g. ‘RESIDENTS ASSOCIATION’ or ‘HOUSING ASSOCIATION’. In this instance, because one or more of these associations would exist in most towns and cities, such signs would not indicate the goods and services of any one particular association.
A pattern mark type is a sign which consists exclusively of a set of regularly repeated elements. Such marks must be represented by submitting a reproduction showing the mark and a description detailing the nature of the regularly repeated elements.
Pattern marks may cover any kind of goods or services; however they are more commonly filed in relation to goods such as clothing, fabrics, furniture, tiles etc. Repeating patterns made up of geometric shapes or designs are commonly applied to the surface of such goods to make the goods attractive to the consumer.
Although these marks may be presented in the form of a square or rectangle, they should none the less be assessed as if they covered the entire surface of the goods for which protection is sought. Where the applicant claims protection for goods such as beverages, the assessment of the pattern should be made in respect of the packaging of such a product.
In many cases, the average consumer would consider a pattern as no more than a decoration on the product itself, or the packaging. Such marks would be incapable of distinguishing the goods and would be open to objection under Section 3(1)(b).
The following mark was applied for as a repeating pattern for loud speaker enclosures
The distinctive character of pattern marks must be assessed with regard to goods for which cover is sought. In this instance such patterns depicted above are commonly applied to the surface of goods such as loudspeaker enclosures for decorative purposes, and are therefore not capable of guaranteeing the origin of the goods to the average consumer.
By contrast, if a pattern is fanciful, unusual and/or arbitrary, departs from the norm or customs of the sector or is, more generally, capable of being easily memorised by the targeted consumers, it may be capable of distinguishing. For example
These originate from the World Health Organisation (WHO). Non-proprietary names are generic names for specific substances in the fields of (a) veterinary substances (b) pesticides and (c) pharmaceuticals.
Applications in class 5 which consist of a mark identical to (or with minor variations on) a protected sign in this category are open to objection under sections 3(1)(b) and (d) where the specification contains pharmaceutical substances, veterinary substances or pesticides.
Where the protected sign is used in combination with a distinctive mark or another distinctive element e.g. ‘Tesco’ or ‘Boots’, the trade mark in its totality could be considered acceptable for an appropriately limited specification.
Phonetic equivalents of objectionable words (misspellings)
Common misspellings and language presented in so-called ‘text speak’ are objectionable if the corresponding ‘conventionally-spelled’ word is descriptive or non distinctive. This is because the average consumer would only perceive the descriptive or non distinctive message being conveyed rather than any trade mark message. For example, the following marks would all be objectionable:
‘COLOR’ (‘colour’) for paint
‘XTRA’ (‘extra’) for chewing gum
‘CUT N BLOW DRY’ (‘cut and blow dry’) for hairdressing services
‘LRN 2 TXT’ (‘learn to text’) for training services
Conversely, uncommon misspellings of words may be acceptable because the average consumer would perceive the difference between the trade mark and the descriptive or non distinctive word. As a rule, misspellings endow the sign with a sufficient degree of distinctive character when:
- they are striking, surprising, unusual, arbitrary,
- they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to
‘KOMMUNIKATION’ (‘communication’) for telecommunication services.
‘DIETETIX’ (‘diatetics’) for dietician services
‘SERIAL’ (‘cereal) for breakfast cereals
Plant varietal names
If the Registrar establishes that a trade mark consists of, or reproduces in its essential elements, an earlier registered plant variety denomination, an objection will be raised. A trade mark will not be registered under the provisions of Sections 3(4)(4C) & (4D) if the mark consists of a registered Plant Varietal Name (PVN) in respect of Agricultural, aquacultural, horticultural and forestry goods.
Plant varietal names can be registered as trade marks unless research shows that the name has become generic for the plant variety concerned. Objections will be raised under sections 3(1)(b)&(c). For example an application for “YELLOW FAIRY” in respect of plants, would be acceptable as it is not a well known variety of roses. In contrast an application for “KING EDWARD” in respect of vegetables, would face an objection as it is a well known variety of potatoes.
Public houses and restaurant names
Pub names can be registered as trade marks. However, with section 3(1)(d) precluding from registration those trade marks ‘which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade’, the most common pub names are likely to face an objection under that provision. It follows that the most common and familiar pub names are unlikely to be seen as indicators of trade origin and therefore cannot be distinctive and an objection will also be taken under section 3(1)(b).
An objection will only be taken if it can be shown that there are many public houses with the same name. For example, taking into account the fact that Internet research confirms there to be over 500 active ‘Red Lion’ pubs in existence across the UK, the mark ‘Red Lion’ would be objectionable under section 3(1)(b). In contrast, and due to its infrequent use in trade, a mark such as ‘Inn on the Green’, of which there are only 8 in the UK, would be acceptable. The same logic applies to restaurant and takeaway names. If it can be shown that there are many restaurants or takeaways using the same name, e.g. ‘GOLDEN DRAGON’ an objection will be taken under section 3(1)(b).
Section 3(4) states:
A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law.
Section 3(4) precludes the registration of a sign which contains the Red Cross, because its unauthorised use is prohibited.
The Red Cross symbol, the words ‘Red Cross’, the Red Crescent symbol, the words ‘Red Crescent’ and the Red Lion and sun symbol, the words ‘Red Lion and Sun’, the words Geneva Cross and the Geneva Cross symbol and the Swiss heraldic emblem are all protected under section 6(1) of the Geneva Conventions Act 1957.
Given the special significance of these symbols, use of the above within the UK must be authorised by the Ministry of Defence.
Phonetic equivalents of the words Red Cross, Geneva Cross, Red Crescent or Red Lion and Sun, for example applications such as ‘Redd Kross’ or ‘Red Kresent’ or ‘Red Lyon and Son’, or a combination of any word and one of the protected symbols would also be objectionable under section 3(4).
Further, any image consisting of a white or silver cross with vertical and horizontal arms of the same length on a red background, i.e. the heraldic emblem of the Swiss Confederation as shown below, or any other design so nearly resembling that presentation as to be capable of being mistaken for the Swiss Confederation heraldic emblem will also be objectionable under 3(4)
Cross devices not in Red and White
Applications made in black and white, greyscale or any other colour combinations which contain the device of a cross with equal vertical and horizontal arms, or a crescent moon, or a lion and sun, will not attract objection.
Section 3(5) states:
A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).
Section 4(1) states:
A trade mark which consists of or contains -
(a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it, (b) a representation of the Royal crown or any of the Royal flags, (c) a representation of Her Majesty or any member of the Royal Family, or any colourable imitation thereof, or (d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal Family.
The registration of any word or figurative mark which consists of, or contains, elements which correspond to, or are heraldic imitations of, any of the provisions set out above, will face an objection.
Royal arms and similar emblems (section 4(1)(a))
Section 4(1)(a) prevents registration of marks containing the Royal Arms or Arms which are likely to be mistaken for them; it also covers the ‘principal armorial bearings’ of the Royal Arms. Conventional representations of the Royal Arms are shown below:
(English Version) (Scottish Version) The perception as to whether or not the mark in question contains the Royal Arms or a device likely to be mistaken for the Royal Arms ought to be taken from the perspective of the average consumer.
The prohibition also covers the ‘principal armorial bearings’ of the Royal Arms. This would mean the shield, motto, supporters and crest, both individually and separately. For example a mark containing a unicorn supporter with other distinctive elements which have no royal connection, would be open to an objection under sections 3(5) and 4(1). However, elements within the principal armorial bearings, for example the tudor rose on the base, would not be objectionable. Some elements of Royal Arms are protected as separate elements in their own right, for example the three lions and the harp.
Representations of the Royal Crown or Royal Flags (section 4(1)(b))
If a mark includes a device of the Royal Crown or a closely resembling image, an objection is appropriate under sections 3(5) and 4(1)(b).
Conventional representations of the Royal Crown are shown below:
Royal Coronets are considered in the same way as Royal Crowns and are shown below:
In contrast, the Royal Warrant Holders Association has already advised that crowns similar to those shown below may be used for business purposes, without infringement of the Royal Crown. This is because they are not considered to be heraldic imitations of the protected crowns.
Representations of the Royal Family (section 4(1)(c))
Marks containing representations of Her Majesty, or any member of the Royal Family, are open to objection under sections 3(5) and 4(1)(c) unless the consent of the Queen or the relevant member of the Royal Family is provided.
It should be noted that this provision also applies to ‘colourable imitations’ of the Royal Family. This would include humorous images of members of the Royal family. By way of example, the image below is considered to be such an imitation and so would be subject to an objection under sections 3(5) and 4(1)(c):
Names of the Royal Family (section 4(1)(d))
Names of the Royal Family may not be registered in, or as, trade marks without the consent of the Queen or the relevant member of the Royal Family. The following is a list of those regarded by the Queen as members of The Royal Family for the purposes of the Trade Marks Act 1994:
Her Majesty The Queen
His Royal Highness The Duke of Edinburgh
Their Royal Highnesses The Prince of Wales and The Duchess of Cornwall
Their Royal Highnesses The Duke and Duchess of Cambridge
His Royal Highness Prince George of Cambridge
Her Royal Highness Princess Charlotte of Cambridge
His Royal Highness Prince Louis of Cambridge
Their Royal Highnesses The Duke and Duchess of Sussex
His Royal Highness The Duke of York
Her Royal Highness Princess Beatrice of York
Her Royal Highness Princess Eugenie of York
Their Royal Highnesses The Earl and Countess of Wessex
The Lady Louise Mountbatten-Windsor
Her Royal Highness The Princess Royal and Vice Admiral Sir Timothy Laurence
Mr. and Mrs. Peter Phillips
Miss Savannah Phillips
Miss Isla Phillips
Mr. and Mrs. Michael Tindall
Miss Mia Tindall
Miss Lena Tindall
The Viscount and Viscountess Linley
The Honourable Charles Armstrong-Jones
The Honourable Margarita Armstrong-Jones
The Lady Sarah Chatto and Mr. Daniel Chatto
Mr. Samuel Chatto
Mr. Arthur Chatto
Their Royal Highnesses The Duke and Duchess of Gloucester
Their Royal Highnesses The Duke and Duchess of Kent
Their Royal Highnesses Prince and Princess Michael of Kent
Her Royal Highness Princess Alexandra, the Honourable Lady Ogilvy
Sarah, Duchess of York
Royal places of residence (section 4(1)(d))
The names and pictorial representations of Royal places of residence are objectionable under section 3(5) if they would be, in the words of section 4(1), “likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation”. The Registrar holds a list of Royal Residences as supplied by the Lord Chamberlain which, although not exhaustive, gives an indication of Royal places which will be objectionable. The following are all recognised as being official Royal residences, and so they (along with others not found on the list) shall not be registered unless consent is given by or on behalf of Her Majesty or the relevant member of the Royal family:
Buckingham Palace, London
Clarence House, London
Kensington Palace, London
Wren House, Kensington Palace, London
St. James’s Palace, London
Windsor Castle, Windsor, Berkshire
Palace of Holyroodhouse, Edinburgh
Hillsborough Castle, County Down, Northern Ireland
The Royal Lodge, Windsor, Berkshire
Bagshot Park, Surrey
Thatched House Lodge, Richmond,
London Barnwell Manor, Barnwell,
Northamptonshire Gatcombe Park, Minchinhampton, Gloucestershire
Sandringham House, Norfolk
Balmoral Castle, Aberdeenshire
Craigowan Lodge, Balmoral, Aberdeenshire
Delnadamph Lodge, Balmoral, Aberdeenshire
Birkhall House, Balmoral, Aberdeenshire
Highgrove House, Gloucestershire
Llwynywormwood, Myddfai, Llandovery, Carmarthenshire
Tamarisk, Isles of Scilly
Castle of Mey, Thurso, Caithness
Whilst the residences in the list above cannot be accepted, without consent, there have been exceptions. For example, the word ‘Balmoral’ was accepted for registration in relation to clothing. In that case the applicant had many years of use without any consumer being confused that the Royal family had, in some way, authorised the term.
Marks consisting of or incorporating the words ‘Royal’ or ‘Regal’ (section 4(1)(d))
Section 3(5) and 4(1)(d) relates to the use of any words in such a manner as to be likely to lead persons to think that the applicant has, or recently has had, Royal patronage or authorization.
Examples of goods or services where the word ‘royal’ may indicate Royal patronage are inter alia high quality porcelain and glassware, luxury foods, organic food, confectionery, alcoholic beverages, clothing, organisation of sporting events, exhibitions, flower shows, tourism, medical and charitable services.
The word may also indicate patronage or authorisation when used on high value products and/or prestigious or ‘public interest’ type services with which the Royal family may be associated or presumed to be associated e.g. Royal Cornwall Agricultural Show (this could infer a relationship with the Duchy of Cornwall).
The word ‘royal’ is unlikely to indicate Royal patronage or authorisation for everyday items such as e.g. insurance or financial services, double glazing services, provision of electricity, or for goods which are far enough removed from any association with the Royal family such as skateboards, computers, computer games or T-shirts. In such cases a section 4(1)(d) objection would not be needed.
‘Royal’ presented in combination with other words which point away from the totality implying patronage (e.g. the term ‘Royal Flush’) can be accepted prima facie for any goods/services unless the combination is descriptive, likewise its use in combination with another registrable word or device (e.g. ‘Rayburn Royal’ or ‘Royal Hartex’) can also be accepted.
The word ‘Regal’ is less likely to lead to an association or authorisation with the Royal family and is generally acceptable.
Other words, devices or letters likely to lead persons to think that the applicant either has or has recently had Royal patronage or authorisation (section 4(1)(d))
When a mark contains an indication of Royal Warrant, an application can only proceed with evidence of the granting of the Warrant and its current validity. For example:
The portcullis and crown device, being a sign associated with the Houses of Parliament, is objectionable under section 4(1)(d). As the Royal Crown is also incorporated into the device an objection under section 4(1)(b) and 3(5) is also appropriate.
Overcoming objections raised under section 3(5) and 4(1)
Objections under these sections can only be overcome if the applicant obtains the consent of the Queen, or the family member concerned, through the Lord Chamberlain. Consent must include an agreement to the use and registration of the royal element as a trade mark.
The address of the Lord Chamberlain is
Scotch and Scotch Whisky
In 2009, the Scotch Whisky Regulations established a set of laws for regulating various aspects of the production, labelling and marketing of Scotch whisky products. Because some of the provisions within those regulations focused specifically on the labelling and branding of such products, the Regulations have had an impact on the law and practice relating to trade marks.
The relevant provisions within The Scotch Whisky Regulations 2009 (‘the Regulations’) are as follows:
6 (1) A person must not label, package, sell, advertise or promote any drink as Scotch
Whisky or Scotch if it is not Scotch Whisky.
(2) A person must not label, package, sell, advertise or promote any drink in any other way that creates a likelihood of confusion on the part of the public as to whether the drink is Scotch Whisky.
10 (1) A whisky or whisky-based drink must not be labelled, packaged, advertised or promoted in a way that includes the name of a protected locality or a protected region unless-
(a) in the case of whisky, the whisky is Scotch Whisky that has been distilled in that locality or region; or
(b) in the case of a whisky-based drink, the only whisky in the drink is Scotch Whisky that has been distilled in that locality or region.
Any mark that contains the words ‘Scotch’ or Scotch Whisky e.g. ‘John O’Groats Scotch’, applied for in classes 29, 30, 32 and 33 will face an objection under section 3(4) and can only be registered for a limited specification, i.e. Scotch Whisky, or goods which contain Scotch whisky.
In the case of labelling and packaging, Section 6 of the Scotch Whisky Regulations 2009 makes it very clear that any labelling or packaging which implies the product contained within is Scotch Whisky can only be used on goods which are actually Scotch Whisky or contain Scotch Whisky as a prominent constituent ingredient.
In comparison to the conditions set out in section 6 of the Regulations, the provisions set out in section 10 are less restrictive and apply solely to those marks which make reference to five protected Scotch Whisky-producing localities and regions as listed in the statute. Those localities and regions are as follows:
The Regulation stipulates that any whisky or whisky-based drink applied for under a trade mark which makes reference to any of these regions should be limited to reference only Scotch Whisky produced in the stated locality or region.
Where a mark contains any of the five protected regions listed above and does not contain any direct reference to Scotch or Scotch whisky in either the mark or the specification, then the mark is acceptable. For example, ‘Kodak Highland Gin’ would be acceptable providing there were no whisky based products in the specification.
The aforementioned practice in respect of objections taken under section 3(4) is separate from the Registrar’s general approach to deceptiveness practice pursuant to section 3(3)(b) as explained elsewhere in this Guide. Each provision will be considered on its own merits and it is possible that a trade mark which contains a word such as ‘Highland’, and which is intended for use in respect of alcoholic drinks, will attract both an objection under section 3(3)(b) on the basis that it is evocative of Scotland and would therefore be deceptive if used on whisky produced outside of Scotland, and an objection under section 3(4) on account of it being one of the five protected localities and regions. It could also be objectionable under section 3(1)(c) if it is purely descriptive of a product likely to come from the Highland region.
The following examples demonstrate how both section 3(3)(b) and 3(4) in respect of marks which are evocative of Scotland are treated:
Loch Castle Scotch Whiskey
Class 32: Carbonated drinks.
Class 33: Alcoholic wines; whisky; whisky-based liqueurs; vodka.
This application would attract an objection under section 3(3)(b) on the basis that it deceives the consumer as to the nature and quality of the goods, and an objection under section 3(4) on the basis that it indicates intended use of the term ‘Scotch Whisky’ on drinks other than Scotch Whisky. In this case, the applicant would be required to delete the claim to ‘carbonated drinks’, ‘alcoholic wines’, ‘whisky-based liqueurs’ and ‘vodka’, and amend the term ‘whisky’ to ‘Scotch Whisky’.
The final acceptable specification woud therefore be as follows:
Class 33: Scotch Whisky.
Loch Castle Scotch Whiskey
Class 32: Carbonated drinks
Class 33: Alcoholic wines; whisky; whisky-based liqueurs; vodka.
This application would attract objections under both sections 3(3)(b) and 3(4), but only in so far as the class 33 claims to ‘whisky’ and ‘whisky-based liqueurs’ are concerned (the mark does not contain any reference to either ‘Scotch’ or ‘Scotch Whisky’, so the carbonated drinks and alcoholic wines are unaffected by either 6(1), 6(2) or 10(1) of the Regulations).
The applicant would be invited to limit the terms ‘whisky’ and ‘whisky-based liqueurs’ to ensure they denote Scotch Whisky products produced in Speyside (it being one of the five regions and localities listed in the Regulations), but the other terms could remain unchanged. An acceptable re-worded specification would therefore read as follows:
Class 32: Carbonated drinks.
Class 33: Scotch Whisky and Scotch Whisky-based liqueurs produced in Speyside; alcoholic wines; vodka.
Class 32: Carbonated drinks.
Class 33: Alcoholic wines; whisky; whisky-based liqueurs; vodka.
This application would be subject to an objection under section 3(3)(b) only, and that objection would only apply to ‘whisky’ and ‘whisky-based liqueurs’. The mark does not contain any of the terms listed in the Regulations, and deception would only occur in respect of those products associated with Scotland i.e. ‘whisky’ and ‘whisky-based liqueurs’.
An acceptable re-worded specification would read as follows:
Class 33 Scotch Whisky and Scotch Whisky-based liqueurs; Alcoholic wines; vodka.
Words and devices such as ‘THISTLE’, ‘TARTAN’, ‘BRAE’, ‘HIGHLAND’, ‘GLEN’ or ‘LOCH’ strongly suggest Scotland and/or Scottish origin. In the case of goods for which Scotland has a reputation, such as whisky, knitwear, salmon, spring water, beef, biscuits etc., an objection under section 3(3)(b) may be appropriate. This would apply even to those marks which contain additional distinctive character. The section 3(3)(b) objection could be overcome by a limitation of the specification but of course, the mark as a totality must also be distinctive.
If applied for in combination with, or as part of, a word which , in its totality, suggests Scottish origin e.g. ‘GLENOBAN’, ‘GLENOCITE’, ‘GLENCOE’, the mark will be open to objection under section 3(3)(b) for goods for which Scotland has a reputation, unless the specification is limited accordingly.
This is a large administrative region in Scotland and consequently may be open to objection on geographical grounds prima facie (object under sections 3(1)(b) and (c)). It is also open to objection under section 3(3)(b) and 3(4) if applied for in relation to goods for which Scotland has a reputation (unless the specification is limited accordingly).
This relates to or implies Scottish goods and would only be deceptive under 3(3)(b) if used on goods or services for which Scotland has a reputation, unless the specification is limited accordingly.
Representations of tartans
Where a mark consists of a representation of a tartan pattern which traders in general should be free to adopt for ornamentation purposes in their labels or as the pattern on their clothing goods, an objection under sections 3(1)(b) and (c) would be appropriate.
Representations of thistles
Unless highly stylised, thistle devices are open to objection under sections 3(1)(b) and (c) in respect of goods for which Scotland is widely famed (e.g. whisky) because such devices are commonly used by traders for the purpose of indicating the Scottish origin of the goods. If the goods do not originate in Scotland, an objection under section 3(3)(b) may also arise. If they only form a small part of the background of a label no objection need be taken. The word THISTLE is acceptable without any geographical limitation.
SERIES (Applications to register a series of trade marks)
The Act allows for more than one mark to be included in a single application, providing the marks are substantially the same with only minor variations. This is referred to as a “series” application.
Section 41(2) of the Act states:
A series of trade marks means a number of trade marks which resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.
In her decision in LOGICA BL O/068/03, Professor Ruth Annand sitting as the Appointed Person stated that section 41(2) contains three conditions:
- the marks in the series must resemble each other in their material particulars;
- the differences between the trade marks must not comprise matter which, when considered as a separate element of the trade mark, would be regarded as having distinctive character;
- the differences between the trade marks must not comprise matter, which when considered in the context of the trade mark as a whole, substantially affects the identity of the trade mark
The key issue to consider is whether or not the differences between the marks in the application for a series substantially affect their identity. The test is not simply whether the marks in the series would be regarded as being confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same. Furthermore, it is not enough for the marks to share the same conceptual identity if the differences in the visual or aural identities of the marks are significant enough to set them apart.
The following are examples of series applications which are considered to be either acceptable or not acceptable. They have been broken down into various categories which cover the majority of categories that are filed as series mark, but they are not intended to be comprehensive:
Acceptable as a series of six trade marks:
Class 9: Television, video and radio apparatus.
In this case, the different numerals are likely to be perceived as simple model numbers which following the dominant and distinctive element i.e. the word ‘Fenton’. Notwithstanding variation in the numerical element, the overall identity of each of the six marks remains the same due to the strength of the distinctiveness of “Fenton”, and so they are acceptable as a series.
Unacceptable as a series:
Class 13: Guided missiles and projectiles, all being weapons.
Here the numerals are not seen as a separate element but as an integral part of the marks. The identity of each of the marks resides in the specific combination of two letters and three digits in totality. The alteration of the last digit therefore substantially affects the overall identities of the marks.
Acceptable as a series:
MERKINS LODGEMENT CENTRE
MERKINS LODGMENT CENTRE
Class 42: Provision of temporary accommodation.
The differences in the spelling of the second word in each of these marks are considered to be insubstantial to the point that they may not even be perceived by the reader, and have no effect on the phonetic identity/impression of the marks.
Unacceptable as a series:
Class 41: Production, distribution and presentation of television programmes.
Although the second mark is phonetically identical to the first, it is visually quite different. Further, the primary word, when viewed in isolation, may not even be perceived as a variation on the familiar word ‘paint’. Therefore this is not a series because the material particulars of the marks differ substantially and, in consequence, so do the visual and conceptual identities.
Acceptable as a series:
Xerox Colour Laser
Class 9: Facsimile telegraphy transceiver apparatus, and parts and fittings therefore.
In each of the four marks, the additional wording which follows the house mark ‘Xerox’ is clearly different. However, in the context of the goods intended for protection, those uncommon word elements are also entirely descriptive and devoid of any inherent distinctive character. As a result, they make little impression upon the core identity of the five trade marks, and constitute an immaterial difference.
Unacceptable as a series:
POWER LAWN MOWERS
POWER GARDEN KIT
Class 7: Machines and machinery all for use in gardens.
The common element in the marks is a well-known (descriptive) dictionary-defined word. The material particulars and distinctive character of the marks (particularly the second mark) depend partly on the combination of words.
Where marks with a low distinctive character are concerned, virtually any perceptible difference between the marks is likely to prevent them from qualifying as a series. In this example, changing some of the words does alter their identities.
Changes in stylisation
Acceptable as a series:
Class 16: Books; printed matter; periodicals; post cards.
Although the third and fourth marks contain additional matter, the material particulars of each mark are substantially the same, the differences are non-distinctive and the visual, aural and conceptual identities of the marks are substantially unaffected by the differences.
Unacceptable as a series:
Class 30: Prepared meals.
The word ‘Taste’ per se is descriptive for the goods claimed, being either a reference to the prepared meals having an attractive taste, or an exhortation to the customer to taste the product on which the sign is used. That aside, neither mark in this series consists of the word ‘taste’ alone: the first contains stylisation, colour and punctuation; the second contains punctuation. The stylisation and colour make a significant contribution to the first mark’s overall distinctiveness, but are non-existent in the second mark. As a result, the marks do not form an acceptable series.
Variation of size of distinctive features
Acceptable as a series of two marks:
Class 29: Meat, fish, poultry and game; seafood and seafood products; prepared meals.
In this case, the only difference between the two marks is in the configuration and positioning of otherwise identical word elements. This difference has no impact upon the overall distinctive character of either mark, and does not affect or change their so-called ‘material particulars’.
Unacceptable as a series of three marks:
Class 30: Pies; meat pies; tortillas; snack foods; condiments, sauces, spices and seasonings; rolls, biscuits, bread, cakes; confectionery; honey; yeast; baking powder.
The size of the distinctive element ‘ASDA’ varies from mark to mark in each of the examples above. ‘ASDA’ is overshadowed in the third version and is no longer seen as the dominant element of the trade mark. The differences plainly have a substantial effect on the visual identities of the marks.
Acceptable as a series of two marks:
Class 25: Clothing.
Despite some stylistic differences, the two marks have the same material particulars - being the distinctive word CHESSMAN. In contrast to the “TASTE” example above, the variations in presentation here are so minimal they are deemed non-distinctive and have no substantial effect on the identities of the marks. Unacceptable as a series of two marks:
Class 16: Books; printed matter; magazines.
The second mark is a signature and such is the heavy stylization that its material particulars are no longer just the name ‘Susan Jeffields’. The differences affect the identities and distinctive character of the marks.
Acceptable as a series of two marks:
Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee. Although the second mark is shown in the colours blue and red, the colours add little to the material particulars of the second mark. The colours are non-distinctive per se and their presence or absence does not substantially affect the visual identity of the second mark. They both retain the same material particulars being the stylised words ‘Aunt Bessie’s’, the figure of a cook, and the oval-shaped background device. As a result, these two marks do constitute an acceptable series.
Unacceptable as a series of two marks:
Class 01: Chemical preparations and substances.
The marks consist of a simple geometric shape alone, i.e. a triangle within a circle. In these circumstances the colour has a significant impact on the appearance of the mark and they are therefore not considered a series. Colour is likely to play a greater role in the identity of a simplistic mark but less so where a mark consists of more complicated shapes.
Acceptable as a series of two marks:
Class 35: Business promotion services
Although the two suffixes are different (i.e. ‘.co.uk’ and ‘.com’), both are generally recognised as being identifiers of a commercial organisation. The difference between these two suffixes is not considered to substantially affect the identities of the marks.
Acceptable as a series of two marks:
Class 35: Business promotion services
In this case, the suffixes ‘.eu’ and ‘.de’ are recognised as being geographical references - the former indicating that the website (or the business responsible for the website) is based within the European Union, the latter indicating a base in Germany. As with the previous example, the conceptual similarity between these two geographical suffixes distinction means that their material particulars remain the same.
Unacceptable as a series of four marks:
Class 35: Business promotion services
The first three suffixes denote different categories of top level domain names and are therefore conceptually different. The fourth example is not a valid domain name suffix. For example the designations ‘edu’ is reserved for use by educational establishments and music defines a category of entertainment.
Acceptable as a series of three marks:
BLINK RIO DE JANEIRO
BLINK COSTA BLANCA
Class 43: Travel agency services.
The three marks shown above all consist of the distinctive word ‘BLINK’ coupled with three different geographical references - ‘RIO DE JANEIRO’, ‘MARAKESH’ and ‘COSTA BLANCA’. Taking into account the fact that the mark is intended for use in respect of travel agency services, and given that these three cities are all holiday destinations, their presence within the three marks adds little in terms of distinctive character. As a result, the use of these three different geographical references does not affect the marks’ suitability as a series of three.
Unacceptable as a series of three marks:
BLINK RIO DE JANEIRO
BLINK COSTA BLANCA
Class 29: Milk.
The geographical names listed in the marks above have no reputation for, or connection with, milk. As a result, they all contribute to the distinctiveness to each mark when considered in totality, and alter the resulting conceptual identity.
Unacceptable as a series of three marks:
Class 25: Footwear; boots; half boots; shoes, slippers; galoshes; sandals.
Whilst the first mark is the name of a geographical location, the second and third marks are two variations denoting the same sports team (where the three letter combination ‘utd’ is a recognised abbreviation of the word ‘united’). As a result, the conceptual identity of the first mark is clearly different from that of the second and third marks. The second and third marks are acceptable as a series of two; the first mark stands alone.
Position of distinctive element
Acceptable as a series of three marks:
Class 36: Financial services.
Because the word ‘ear’ is the distinctive element and is positioned at the beginning of each of the three marks, it will be seen as the trade mark and the remaining words are merely descriptions of the services. Consequently, the marks’ identities remain the same.
Unacceptable as a series of three marks:
Class 36: Financial services.
Presented in this way, the words ‘financial’, ‘investment’ and ‘insurance’ now alter the conceptual meanings of the marks as a whole. Presented like this, these words form part of the material particulars of the marks and varying the first word in each changes the identities of the marks.
Acceptable as a series of two marks:
Class 6: Safes for use in hotel bedrooms
Both marks consist of the same two recognisable words i.e. ‘room’ and ‘lock’. In the first mark, the two words are conjoined; in the second, they are separated in conventional fashion via the use a space. Regardless of these presentational differences, both marks would be perceived and understood in an identical fashion, and so there is no difference in their material particulars.
Unacceptable as a series of two marks:
Class 01: Fertilisers and compost.
In this case, even though both marks consist of the same sequence of letters, the differences in punctuation and presentation make a clear difference to each mark’s overall identity. The first mark is likely to be understood as being a conjoining of the words ‘Grow’ and ‘right’ to create the sign ‘Growright’. In contrast, the use of spacing in the second mark means it would be perceived as a combination of the two words ‘Gro’ (being a misspelling of the word ‘grow’) and ‘Wright’ (being a recognisable surname).Therefore, the visual and conceptual identity of each mark is different.
Acceptable as a series of three marks:
Class 28: Toys, games and playthings.
These marks are clearly recognisable as the same character, albeit one presented in three different poses. The character retains the same visual features through all three representations, with nothing notable added or subtracted in any of the poses. As a result, each of three marks contains the same material particulars, and so are acceptable as a series.
Unacceptable as series of three marks:
Class 28: Toys, games and playthings.
In this example, the third mark consists of the character playing a musical instrument. The presence of the instrument results in it having a different identity to that of the first two marks - from a conceptual point of view, it becomes a fantastical creature playing an electrical guitar (as opposed to simply being a fantastical creature as per the first two marks). This means that the third mark cannot form an acceptable series with the first two (although marks one and two would be acceptable as a series of two).
Series of bilingual marks in English and Welsh or English and Gaelic
Judgements from the courts make clear that trade marks should be considered in relation to the average consumer of the category of goods (see Windsurfing Chiemsee C-108/97 and C-109/97), in the territory in respect of which registration is applied for. Applied in a national context, this means that a UK trade mark application must be assessed by reference to consumers throughout the UK (see Bovemij Verzekeringen NV v Benelux Merkenbureau C-108-05). Any visual and aural differences due to language used in a series of bilingual marks must be given due weight, and where such differences alter the identity of the mark, they should not be accepted as a series. For example, the expressions ‘Welsh Water’ and ‘Dwr Cymru’ (being the Welsh language equivalent of ‘Welsh Water’) would not be accepted as a series because, considered in a UK-wide national context, each has different identities.
However, it may be possible to accept applications for English and Welsh and/or English and Gaelic series where the applicant agrees to a territorial limitation confining rights in the nonEnglish variant to the geographical area in which the bilingual nature of the marks is recognised and understood.
For example, in the case of an application consisting of the marks ‘Welsh Water’ and ‘Dwr Cymru’ applied for as a series of two, the resulting series objection may be overcome via recordal of the following territorial limitation under section 13(1):
The rights conferred in respect of the second mark are limited to goods/services provided in Wales.
Applicants should also note that where a combination of English and non-English variants of the same word is intended for use in immediate proximity to each other, then such terms may be applied for as a single mark.
The above rational does not relate to non-UK native languages. For example, a series of two marks consisting of English and a language other than Welsh or Gaelic would not be acceptable as a series, e.g Good Water and Agua Bueno (Spanish) would not be a series.
Shapes (Representations of the Goods Themselves)
There have been several cases before the English and European Courts which have provided guidance in relation to the examination of applications for shape marks. The main points arising from these form the basis for our examination practice.
There is no distinction in law between different types of marks with regard to the test for descriptiveness/distinctiveness. This was confirmed by the CJEU in Linde (joined cases C- 53/01 to 55/01. The assessment for compliance with section 3(1)(b)&(c) must take account of the public interest underlying that provision, which is to keep free from a monopoly those shapes which reflect a characteristic of the goods.
The Courts have stated that whilst the legal test for distinctiveness is the same for shape marks as for other marks, recognition must be given to the differing perceptions of the average consumer in relation to non-traditional trade marks, such as shape, sound, colour etc. As explained in Procter and Gamble v OHIM (Joined Cases C-468/01P to C-472/01P) this is because,
average consumers are not in the habit of making assumptions about the origin of the products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element.
Applications which represent the shape of the product need to be considered under section 3(1) and section 3(2) of the Trade Marks Act.
In cases such as Procter and Gamble v OHIM and Henkel (C-218/F01), the CJEU stated that the test for a shape-of-the-goods mark under section 3(1)(b) was whether or not it enabled an average consumer, “without conducting an analytical or comparative examination or paying particular attention” to distinguish the goods concerned from those of other traders. The Court observed that in order for a shape-of-the-goods trade mark to possess sufficient distinctive character in order to fulfil its essential function of indicating trade origin it must depart significantly from the norms or customs of the sector.
In Procter and Gamble, the Court rejected the appellant’s argument that the marks were distinctive because inter alia the type of product was relatively new and there were no similar dishwasher tablets on the market at the time the applications were filed. The Court repeated the conclusions from Henkel, and pointed out that “the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character.”
Consequently, it would appear that in deciding which shapes are the ‘norm’ for the sector, account should also to be taken of which shapes are likely to become the norm.
Consideration is not whether the appearance is memorable or eye catching; it is whether the shape by itself would convey trade mark significance to the average consumer. Consider, for example, the following three dimensional mark:
Class 32 Beverages
This shape was deemed to be objectionable as it did not indicate trade origin.
The Phillips v Remington judgment (C-299/99), explained that a two-dimensional image can act as a representation of the goods in the same way that an obviously three-dimensional image can. Regardless of whether the shape is shown as a line drawing or as a photograph, or any other realistic and naturalistic representation, the sign can be considered as being a representation of the goods themselves.
For example the following two dimensional mark was applied for in respect of vehicles and toy vehicles:
In respect of vehicles or toy vehicles, the sign is plainly a three-dimensional representation of the goods (despite the lack of colour). For such goods a section 3(1)(b) & (c) objection would apply.
However, where the three-dimensional shape is deemed to be ‘outside the norms and customs of the trade’, it may be acceptable. There are certain car shapes which may have sufficient originality for them to be capable of denoting trade origin, and therefore being trade marks by themselves, for example the Volkswagen BEETLE may be considered distinctive. However, on the balance of probability, the shape in the earlier example is not in such a category and looks like a generic type of 1960’s sports car. In this case, it would be necessary to prove acquired distinctiveness. Through such use it could be proven that this particular shape may have become to be recognised as being an Aston Martin trade mark.
It may be easier to show that a shape has the necessary distinctive character where there is evidence showing that, contrary to conventional thinking, consumers in the relevant sector do in fact rely upon the appearance of the shape of the product as a means of identifying the origin of the product. An example of this is the use of vehicle radiator grille designs as a means for signifying commercial origin. This practice of the automobile sector was relevant to the courts judgment in the DaimlerChrysler ‘Jeep’ grille case (T-128/01), where it was found that the appearance of the grille did have the necessary capacity to distinguish the product of that vehicle manufacturer from those of other economic operators in that trade.
Shape of packaging
In Henkel, the CJEU ruled that for the purposes of sections 3(1) and 3(2), the shape of packaging is to be treated as representing the shape of the goods themselves where those goods rely on packaging in order to be sold. For example, most liquid and gas products such as beverages, cleaning fluids and hair spray require packaging to ensure they are contained. In other cases, an objection to a trade mark consisting of the packaging of the goods may only arise under section 3(1)(d) if it is found to be already common in the sector, or under section 3(1)(b) if it is found to be non-distinctive for another reason.
Section 3(2) states the following:
A sign shall not be registered as a trade mark if it consists exclusively of - (a) the shape or another characteristic which results from the nature of the goods themselves, (b) the shape or another characteristic of the goods which is necessary to obtain a technical result, or (c) the shape or another characteristic which gives substantial value to the goods.
Marks which consist exclusively of shapes cannot be registered if the shape itself performs a purely technical function, adds value to the goods, results from the nature of the goods or any characteristic which is intrinsic to the goods applied for. For example -
The basic shape of a locking wheel nut would not be acceptable under Section 3(2) (a) and (b) as it has a purely functional nature.
When the Philips case ( ETMR 816) was before the English Court of Appeal, Aldous L.J. observed that the purpose of section 3(2)(a) is to keep free basic shapes of goods that should be available for use by the public. For example the three headed shaver, shown below, was considered to be unacceptable because the shape results from the nature of the goods themselves.
However, it is important to bear in mind that there may be more than one such basic shape, or several usual variations e.g. door handles may be round or lever style. To this extent, there is some overlap with section 3(2)(b).
In Philips, the CJEU ruled that that this provision
…must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result.
This does not automatically mean that a shape is unregistrable where all of its features serve some functional purpose. If it can be shown that an essential feature (which may include the overall impact arising from the way the individual features are arranged) is not only attributable to a technical result i.e. the shape is not one which would be adopted for its functional efficiency automatically or logically by other traders, it will not be caught by 3(2)(b). In Ekornes ASA’s Trade Mark, [BL O-017-06], the Appointed Person reversed a decision of the registrar to refuse to register the shape of a chair (as shown in the representation below) on the grounds that its essential features were all functional:
The Appointed Person found that, although all the features of the chair were in one sense functional, there was nevertheless an excess of form over function.
Shapes which consist exclusively of functional features attributable only to the technical result, without any additional imaginative presentation, will be caught by section 3(2)(b). An objection under 3(2) cannot be overcome by demonstrating acquired distinctiveness, because the basis for taking a 3(2) objection does not relate to distinctiveness. The basis of the objection is to ensure monopolies are not conferred on functional shapes.
The CJEU has held that the word ‘necessary’ in the equivalent article of the Council Directive 89/104/EEC does not mean ‘the only’. Accordingly, the Court has confirmed that
…the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained. (LEGO)
This prevents a limited amount of economic operators in a given trade area permanently monopolising shapes which achieve a particular technical result. It is in the public’s interest that legal protection of purely functional shapes is confined to patent rights, the protection for which is time-limited.
This subsection covers shapes which add substantial value to the goods, disregarding any value attributable to a trade mark (i.e. source identification). It is appropriate to consider whether a substantial proportion of the value of the product to the consumer is attributable to its shape. In many cases, this will require a comparative evaluation of the value of the shape in question as compared to those used found in competing products. However, this approach may not assist when assessing purely ornamental products (e.g. figurines) where the shape of the product will inevitably also account for a substantial part of the value of competing products.
Absolute Grounds Practice for dealing with shape trade marks
There is no requirement that shapes of goods are only registrable upon evidence of acquired distinctiveness; however, if there is an objection under section 3(2), evidence of use will not assist that objection. Where an application faces objections under sections 3(1) and 3(2), the 3(2) issue must be addressed before, or alongside, any evidence put forward in relation to distinctiveness.
If the essential features of the shape are a characteristic of the goods or their intended purpose (kind, quality, quantity etc), the mark will be open to objection under section 3(1)(c), when the shape intended for protection equates to a representation of the product itself. In order to avoid an objection under section 3(1)(c), the mark must be sufficiently different from a shape which is:
- characteristic of the product;
- normal or customary in the sector concerned;
- likely to be understood by the average consumer as the product itself, so as to permit an average consumer, without conducting an analytical or comparative examination or paying particular attention, to distinguish the goods concerned from those of other traders”
In other words, the shape must not be descriptive, but must stand out from the crowd, and, in the case of new product developments, must not be a shape likely to be understood by the average consumer as just being the product itself.
The amount of attention that an average consumer pays to the goods and the significance he or she attaches to their shape varies from product to product. Consequently, if it is well known that a particular shape is a customary means of distinguishing the source of a particular category of goods, and/or if there is evidence to that effect, then alternative shapes which stand out to a lesser degree may still be deemed inherently distinctive. The following example applies this practice in the context of a perfume bottle:
Where there is no evidence that consumers customarily rely upon the shape of the product itself, or its packaging, to distinguish the goods of different undertakings, there will be a greater requirement for the shape to stand out from the normal range of product variations before it can be deemed capable of distinguishing the goods of one undertaking from those of others. For example, the following shape mark was accepted for alcoholic beverages:
In comparison, the shape shown below was found to lack distinctive character when used in the context of dairy products. In making the decision, the Registrar took account of the fact that such products are relatively low in cost, are generally purchased without a great deal of care and attention, and are commonly found with subtle variations in the shape of their packaging:
For some sectors e.g. soft toys and jewellery, where product shape varies greatly, it will be more difficult (although not impossible) for such three-dimensional signs to perform the function of a trade mark, at least for certain categories of goods.
A new shape may still not strike an average consumer as having a trade mark significance if the difference between the shape of the product and other existing products appears to be attributable to a technical advance or is merely attributable to a decorative or ornamental purpose. In the following case, which sought to protect the shape of an agricultural implement see the “Club tine” (O/005/99)  R.P.C. 24), the shape was shown to be different to others in that area of trade.
In the mark as filed, the larger bulbous end was acknowledged as being a visibly different shape from that commonly found on similar third-party products, but was also found to have a technical function making the product hard-wearing. The opposite end was designed solely for facilitating connection to other agricultural apparatus. Since the entirety of the shape is one which is necessary to obtain a technical result, it was held to be objectionable under section 3(2)(b). It was also held to be devoid of any distinctive character because the average consumer for such goods would not attribute any trade mark significance to a shape whose features were attributable to a purely functional purpose.
In assessing an application against section 3(2)(b), consideration should be given to what the nature of a ‘technical result’ is likely to be for that category of goods. The term should be interpreted broadly. In addition to the most obvious types of technical function, the expression can also apply to scenarios where:
- the shape enables connection to another article;
- the shape serves a strengthening function;
- the shape utilises few materials;
- the shape facilitates convenient storage or transportation
Shapes which are, or have been, the subject of a claim in a patent application are not excluded per se by section 3(2)(b). However, the fact that functional claims have previously been made about a particular shape will be taken as prima facie evidence that those aspects of the shape identified as being functional in the patent claim are necessary to achieve a technical result.
If all significant aspects of the shape applied for are attributable only to the achievement of a technical result, the sign will fall foul of section 3(2)(b). The test is whether there are any significant aspects of the shape or its arrangement which are not only attributable to the achievement of a technical result. Trivial embellishments are unlikely to be sufficient to resist an objection under section 3(2)(b).
The ‘floral cheese’ shape shown below was subject to an objection under section 3(1)(b) because the average consumer would not place any trade mark significance on the ‘fancy’ edging of this basically round cheese. This is because the curves appear decorative and designed to give the individual slices of the cheese an attractive rounded end when sliced and served at the point-of-sale. However, no section 3(2)(c) objection was raised because, although attractive, the shape was not considered to give substantial value to the goods.
In contrast, the shape of an ornamental lamp shown below appears to add substantial value to the goods, and so this mark was subject to an objection under section 3(2)(c):
Although it is an unusual shape, the novelty appears to be attributable to its purpose as an ornamental lamp rather than as an indication of its trade source. Applications of this type are therefore also liable to face objections under section 3(1)(b) and (c) because the shape is characteristic of ornamental lamps.
See Just practice.
Slogans are registerable provided, as is the case with any other type of word mark, that they are not descriptive and/or non-distinctive. By way of example, the following slogans have been accepted prima facie:
GET BETTER LOOKING
Optical apparatus, optician’s services
(play on words)
THE FRUIT, THE WHOLE FRUIT, AND NOTHING BUT THE FRUIT
(play on words)
GOING YOUR WAY
Eggs and egg products
(play on words)
NATURAL JUST GOT SEXY
Clothing, footwear, and headgear
TOUSLE ME SOFTLY
YOUR LIFE YOUR WAY
Financial and care services
SHAKE YOUR TAIL FEATHER
These were all found to be acceptable for the reasons shown in the third column. However these reasons should not be taken as general criteria for slogans.
Because slogans are not ‘traditional’ trade marks they have, to some extent, been considered by commentators (and in case law) as a particular category of mark (i.e. separate from word marks, device marks, shape marks etc.) There is a danger in adopting such an approach where, as has been pointed out, it “…tends to draw attention away from the basic legal requirement for the designation as a whole to be capable of functioning effectively as a stand-alone trade mark”. The simple question is whether, [as of the date of application,]…the designation had the power, when used in relation to goods of the kind specified, to individualise them to a single undertaking” (Deliberately Innovative, BL O-325-07).
The two main CJEU judgments on so-called ‘slogan marks’ are OHIM v Erpo Mobelwerk GmbH (C-64/02, ‘The Principles of Comfort’ and, Audi AG v OHIM (C-398/08, ‘Vorsprung durch Technik’).
In Vorsprung, the Court noted that the public’s perception of different categories of marks was not necessarily the same, and that it could therefore be more difficult to establish distinctiveness in relation to marks of certain categories (such as advertising slogans), when compared with marks of other categories. However, it held that any difficulties in establishing distinctiveness in relation to advertising slogans did not justify laying down specific criteria which were stricter than those applicable to other types of mark;
“38. …difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature - difficulties which it is legitimate to take into account - do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law referred to in paragraphs 33 to 34 of the present judgment (see OHIM v Erpo Möbelwerk, C-64/02 P).”
The Court has stated that whilst qualities such as ‘imaginativeness’ and ‘originality’ are not necessary requirements for a slogan to be deemed inherently distinctive (meaning that their presence does not itself equate to distinctiveness per se - see Principles, paragraph 50), the Court has also stated that such qualities are nevertheless likely to assist a slogan’s inherent capacity to denote trade origin. At paragraph 47 of Vorsprung, the Court stated that:
…it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.
A mark that is free from objection under section 3(1)(c) may still be devoid of any distinctive character if it conveys a message that could apply to any undertaking, and is therefore not capable of individualising the goods or services of one undertaking. The following list is not intended to be exhaustive as far as highlighting types of slogan marks which might give rise to a section 3(1)(b) objection, but it does provide some insight into the types of signs which might be caught by the provision.
There are a number of factors to be considered when assessing the acceptability (or otherwise) of slogan-type marks. These include the following:
Plain descriptive language
By their very nature, some advertising slogans describe the quality of goods or services to which they relate, and a sign will be refused registration if it exclusively designates the kind, quality, quantity, etc. of the goods and/or services intended for protection. If a slogan is purely descriptive it is likely to face an objection under sections 3(1)(b) and 3(1)(c). For example, an objection was taken against the phrase ‘NEVER CLEAN YOUR SHOWER AGAIN’ in respect of cleaning preparations, because it describes in plain language the intended purpose of the goods. The fact that the statement may not be literally true is not decisive, not least because consumers are accustomed to a certain amount of overstatement in advertisements. The mark ‘LOOKS LIKE GRASS… FEELS LIKE GRASS… PLAYS LIKE GRASS’, intended for use in respect of synthetic playing surfaces, would likely face an objection under section 3(1)(c) for similar reasons.
However, the ‘obviousness’ of the description need not result in an objection if the slogan is constitutes an unusual way of conveying a descriptive message e.g. ‘THE SHOES YOUR FEET HAVE BEEN ACHING FOR’ for use in respect of footwear. To further illustrate, the slogan ‘HOW TECHNOLOGY SHAPED THE WORLD’ would not be acceptable for publications, information and/or exhibition-type services, even though the Registrar has accepted ‘THE BEST WAY TO PREDICT THE FUTURE IS TO CREATE IT’ for technology-related services. In the case of the latter, this was because the slogan was not considered to be a normal way of designating the services, nor to be a commonplace phrase.
Common descriptive phrases
The fact that the mark is composed of a well-known phrase will not result in refusal unless the use of that phrase also designates an essential characteristic of the goods or services e.g. the phrase ‘IT’S NOT ROCKET SCIENCE’ would be deemed distinctive when intended for use in respect of shoe polish. The mark ‘AN EYE FOR DETAIL’ (for clothing) was refused because it is a common phrase which, considered in relation to the goods, designates not just a characteristic of the consumer, but also the quality of the goods i.e. clothing of such quality that it will be appreciated by those consumers with an eye for detail.
Normal use in advertising to be considered
If other traders are already using the slogan in trade as a description of the goods and services, the application will probably fail. Further, if a slogan is a term that could be used by others in the trade, even if not in a descriptive sense, then the application will fail because such a statement will not be considered as a badge of trade origin by the average consumer. Such marks will face a section 3(1)(b) objection as they are purely promotional. Examples would include phrases such as ‘Simply the best’ or ‘The natural choice’. In contrast, the mark ‘FROM THOUGHT TO FINISH’ has been accepted for goods and services in Classes 9, 16, 35, 41 and 42 because it is not a normal means of designating goods and services in the development field, the mark being a play on the well-known phrase ‘From start to finish’.
Ambiguity and Imagination
Ambiguity may enhance a slogan’s prospects of registrability as the concept conveyed by the mark is not clear and obvious. For example, the Registrar has accepted the mark ‘NATURE’S REAL THING’ for foodstuffs in classes 29 and 30 because the reference to natural products is somewhat allusive. However, the expression ‘BEST BUY’ (presented on a coloured background resembling a price tag) was refused registration by the General Court despite the applicant’s argument that it had no precise descriptive meaning to consumers.
Where a slogan is original and imaginative in respect of the goods or services concerned, it has a greater chance of being accepted for registration, for example, ‘CATCH A WRINKLE IN TIME’ for cosmetic preparations. Where a slogan uses words (humorous or otherwise) that have several meanings or retain a similarity (or difference) of meaning between words that are pronounced or spelled the same, are likely to be acceptable. This will include those that are unique, non-descriptive, and ‘slick’ that is, catchy.
Straightforward value statements that could apply to any undertaking are devoid of any distinctive character e.g. ‘CARING FOR THE PLANET’.
Inspirational or motivational statements
These types of slogans are considered to be non-distinctive, particularly for intended for use in respect of services e.g. ‘YOU CAN DO IT WITH US’ for driving schools, ‘GO FOR IT’ for training courses, and ‘WE’RE BETTER, CONNECTED’ for telecommunications. In such cases, each sign would merely be perceived as a motivational statement intended to reinforce the personal benefits of being connected to others. Where the expression makes only an opaque reference to the product (whether a good or a service), it may be acceptable e.g. ‘JUST DO IT’ for sports shoes.
Customer service statements
Similarly, straightforward statements about customer service that could apply to any undertaking are also devoid of any distinctive character e.g. ‘PUTTING CUSTOMERS FIRST’.
Purely promotional statements
The mark ‘SAY IT WITH CHAMPAGNE’ is composed of a generic and well-known advertising strap line (‘Say it with…’) followed by the name of the goods (‘Champagne’). This mark therefore fulfils a purely marketing function i.e. it is an invitation to the public to send a message through the gift of champagne. Similarly, the General Court ruled that the phrase ‘REAL PEOPLE, REAL SOLUTIONS’, whilst not having any directly descriptive qualities, nevertheless has nothing about it to displace its purely promotional message. This example is to be contrasted with an expression such ‘THE PRINCIPLES OF COMFORT’ which (at least in English) is an uncommon term with no clear meaning.
Fundamentally, the assessment of slogans is the same as for any other mark, i.e. does it have the capacity to serve as a badge of origin in the perception of the average consumer of the goods and services? Unadorned marks which are purely informational, or generic, or promote the benefits of a product or service category in a general sense are unlikely to be capable of distinguishing one particular product or service from another.
Non-distinctive statements used on clothing
Certain types of slogans can sometimes serve a purely decorative function when used on items of clothing. Slogans such as ‘I ♥ My Boy Friend’ and ‘Here comes Trouble’ can often be used to decorate goods, particularly clothing such as tee shirts, sweatshirts and baseball caps. Used in this context, consumers are unlikely to perceive such statements as being indicators of trade origin, especially when seen as a personal statement by/about the wearer/user rather than indicating the trade origin of the product. Slogans which are likely to be seen as such will therefore be open to objection under section 3(1)(b).
It is necessary to assess both (i) the mark; and (ii) the context in which the mark is likely to be used. In the ROCKSTAR decision (BL O-344-10), the Registrar acknowledged that the phrase ‘rock star’ would not be perceived as a literal statement about the wearer, but argued that it would still appeal to the consumer as an aspirational statement. At paragraph 15, the decision states:
The practice of displaying messages, phrases and decorative images across the front of casual clothing is well established, with the normally-basic design of tee shirts and sweatshirts (in comparison to more tailored clothing) making such items an effective platform for displaying messages which are intended to be no more than a statement by, or about, the wearer. Such messages might be commemorative (as in ‘Village Cricket Team Spanish Tour 2010’), political (as in ‘Ban the Bomb’), provocative (as in ‘Kiss Me Quick’), or may serve some other communicative function. In such cases, the use of messages is clearly not intended to denote trade origin. Furthermore, the relevant consumer understands that to be the case.
Each case must be assessed on its merits and where it is equally or more plausible that such a slogan is capable of being seen as a fancy trade mark, no objection will be raised. In assessing such marks, it is helpful to consider whether the sign is a common statement or phrase, or whether it is used is commonly used in trade on clothing. The concept of ‘notional and fair use’ is accepted as a fundamental principle underpinning the assessment of trade marks, and it requires an appreciation of how a mark is likely to be used in the marketplace (for example, and in the context of clothing, looking beyond the most obvious and conventional of use on swing-tags and sew-in labels). In certain cases, Rule 62 may be useful as a means of providing the applicant with an opportunity to demonstrate his/her intention to use the sign as a trade mark rather than as mere decoration. The effectiveness of using Rule 62 will vary, and will depend upon case-specific factors such as the nature of the mark, and the nature of the use demonstrated.
Smell Marks (Olfactory Marks)
Smell or olfactory marks are currently not acceptable. This is because the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective and the current state of technology does not allow these types of marks to be represented in such a way. Although the ECJ Court found that an olfactory mark was, in principle, capable of registration, in practice it is going to be difficult to represent such marks in an acceptable format. A mark description or a sample or specimen cannot replace the representation, because a description of a smell or taste is neither clear, precise nor objective and a sample is not durable.
In Sieckmann (C-273/00) the CJEU ruled that a mark consisting of a smell does not satisfy the requirements of graphical representation if it is presented: (i) in the form of a chemical formula; (ii) via a written description; (iii) via the deposit of the odour sample; or (iv) via any combination of the aforementioned methods. In light of this decision, it is therefore highly unlikely for a smell mark to be acceptable under section 3(1)(a) as it is not currently possible to capture the smell graphically.
Assessing distinctive character
It is therefore highly unlikely for a smell mark to be acceptable under section 3(1)(b) as the consumer does not normally associate smells as providing any distinctive trade mark origin, even where the smell is not an inherent or natural characteristic of the goods.
Representation of a sound mark
A sound mark must be represented by submitting either an audio file reproducing the sound or an accurate representation of the sound in musical notation.
In Shield, C-283/01, the CJEU confirmed that sounds “must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings””. The representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In respect of sound marks which consist of a melody or tune, these can be represented using musical notation. To this end:
- applications for sound marks must clearly state that they are sound marks as the mark type; and
- representation requirements are met by representing the sign in the form of an MP3 file or an image of a musical stave divided into measures and showing, in particular, a clef, musical notes and rests (indicating relative value), and sharps, flats and naturals (accidentals). This will render timing and pitch intelligible to third parties
The requirements of section 1(1) (and therefore also section 3(1)(a)) are not met by a written description of the sound i.e. that the sign is a particular piece of music, or a list of the notes of which it is comprised, or the sound an animal makes. Simple sequential musical notation, without indications as to timing and pitch, will also not meet the necessary requirements.
Assessing distinctive character
Like words or other types of trade marks, the acceptance of a sound mark will depend upon whether it is, or has become, distinctive; that is, whether the average consumer will perceive the sound as denoting the commercial origin of the products it is being used in respect of. Consideration should be given to whether other economic operators are likely, without improper motive, to wish to use the sound in the ordinary course of their business. The following mark was accepted prima facie for financial services as it was considered to possess sufficient distinctive character for the services applied for.
The following are examples of sound marks that would not be accepted without evidence of factual distinctiveness:
- very simple musical sequences (for example, those consisting of only one or two notes);
- entire melodies and/or songs (for example, the ‘Greensleeves’ melody, which may be used as a chime by ice cream van in the context of providing ice cream and confectionery);
- electronic jingles commonly associated with amusement arcade machines (for such machines and the entertainment services they provide);
- well-known popular music, intended for use in respect of entertainment services (for example, amusement park services;
- nursery rhyme melodies, intended for use in respect of products aimed at children;
- melodies associated with particular regions or countries, intended for use in respect of products originating from, or provided in, that area
Pieces of classical music may be acceptable prima facie. However, it is difficult to see how more than a few bars of classical music can function as a trade mark. Consequently applications to register whole or large sections of classical pieces are likely to face objection on the grounds that they are not likely to be taken as a trade mark.
Stars (Devices/Images of)
Representations of stars can be used in trade in order to indicate quality, especially where a service is concerned, as in a hospitality service such as a hotel. Other services (such as e.g. gas central heating maintenance) can be marketed on the basis of differing levels of service provided to the customer, where stars (and the amount of stars, in particular) can be used to denote the level of service - the customer may purchase a one star, two star, or three star contract. Furthermore, it is common to rate products (including services) on review sites via the use of ‘stars’. Consequently devices of stars would not have any distinctive character for such goods and services including marketing services.
In General Court cases T-686/13 and T-687/13, the EUIPO Board of Appeal was criticised for applying a blanket approach of refusal to star devices across the board. Consequently, for an objection to be appropriate, there must be some link between the use of stars and the goods or services applied for.
State Emblems and Symbols (Other than UK)
57 (1) A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorisation.
(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the competent authorities of that country.
(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention or the WTO agreement, be registered in relation to goods or services of the same, or a similar kind, as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.
(4) The provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.
Whilst section 57 prevents certain signs which are protected under Article 6ter of the Paris Convention from being registered as a trade mark or as part of a trade mark, the actual Absolute Grounds objection raised by the examiner (and, therefore, the legal basis for any subsequent refusal) will be pursuant to section 3(4). Where an application consists of or contains content which is identical to the protected sign, or anything which is plainly an imitation of the protected sign, an objection will be raised.
The expression ‘State Symbols’ covers armorial bearings, flags, other State emblems, and official signs and hallmarks which have been notified to the World Intellectual Property Office (WIPO) and included in the Article 6ter database of marks. Flags of States are protected under Article 6ter without any need to be incorporated into the WIPO database.
The following examples are presented as a guide to the practice. Here are two well-known protected national symbols:
In the examples below, examples 1 and 2 contain a normal representation of the national symbol and therefore an objection will be raised. Examples 3 and 4 contain sufficient stylisation that the average consumer would not take them to be an imitation of the corresponding protected symbols, and so an objection under section 3(4) would not be appropriate.
Example 1: Not Acceptable
The words ‘My Lucky Star’ are prominent in the mark, but the presence of the protected national symbol, though small, is sufficient to warrant an objection under section 3(4).
Example 2: Not Acceptable
The device element is not an exact representation of the national symbol, but it is an imitation from a heraldic point of view, and would be taken by the average consumer to be the national emblem. Again, the mark would face an objection under section 3(4). The presence of the letters RW makes no difference to this assessment.
Example 3: Acceptable
This is clearly a representation of a four-leafed clover, but it contains sufficient differences that the average consumer would not take it to be an imitation of the protected national symbol.
Example 4: Acceptable
This is an acceptable trade mark; although a maple leaf, it is clearly not an imitation of the Canadian emblem as it is too naturalistic. It is not how the average consumer would view a traditional expression of the maple leaf emblem.
Flags of States (Other than UK)
Flags of convention countries are protected irrespective of whether they are included in the Article 6ter database at WIPO. Where a mark consists of or contains an exact reproduction of a national flag, an objection under section 3(4) will be appropriate. Also where a mark contains elements which are reminiscent of a national flag, or utilises colours in a pattern or configuration which is consistent with those used in a national flag, the Registrar must make an assessment as to the extent to which the mark is heraldically similar. If it is considered to be sufficiently similar then an objection under section 3(4) will be raised.
If the representation is not considered to be evocative of the protected flag then no objection will be appropriate, as in examples 5, 7 and 8 below.
Example 5: Acceptable
Although the background contains the colours of the German flag, this is clearly not an imitation from a heraldic point of view because its heraldic content is very different.
Example 6: Not Acceptable
Though the flag is ‘furled’, the effect of this is not enough to mitigate what amounts to a representation of the French flag from a heraldic point of view. An objection under section 3(4) would be taken.
Example 7: Acceptable
This sign contains the colours of the Italian flag but is only allusive.
Example 8: Acceptable
From an heraldic presepctive, this is not deemed to be an imitation of the American flag.
Names and Symbols of International Intergovernmental Organisations
58(1) This section applies to-
(a) the armorial bearings, flags or other emblems, and
(b) the abbreviations and names, of international intergovernmental organisations of which one or more Convention countries are members.
(2) A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the international organisation concerned, unless it appears to the registrar that the use of the emblem, abbreviation or name in the manner proposed-
(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark, or
(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.
(3) The provisions of this section as to emblems of an international organisation apply equally to anything which from a heraldic point of view imitates any such emblem.
(4) Where by virtue of this section the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation is entitled to restrain by injunction any use of the mark in the United Kingdom without its authorisation.
Pursuant to section 58, symbols of International intergovernmental organisations cover armorial bearings, flags, and other emblems which have been notified to WIPO and included in the Article 6ter database of marks. The provision also applies to imitations of the same from a heraldic point of view. However, in contrast to the provisions of section 57 where protection is independent of goods and services, section 58 does allow for registration of a trade mark where its use would not suggest to the public that a connection exists between the organisation and the trade mark.
To illustrate this distinction, the four letter acronym ‘WIPO’ is protected specifically in relation to the Word Intellectual Property Office’s core activities around intellectual property rights. Notwithstanding, the protection via Article 6ter, a UK trade mark application for the four-letter sequence ‘WIPO’, intended for use in respect of e.g. ‘cleaning services’ in class 37, is unlikely to be connected or associated, in the mind of the average consumer, with intellectual property matters. That being so, an objection would not be taken against the sign. In contrast, the same trade mark, applied for in respect of ‘legal services’ in class 45 would bring the International Bureau to mind, and so would face an objection.
The test in relation to protected symbols of international intergovernmental organisations is the same as that for national symbols. In Case T-127/02 (ECA and device)
The General Court considered that a circle of twelve stars did constitute an heraldic imitation of the flag of the Council of Europe, notwithstanding the fact that neither the stars nor the background were identical to those found in the protected emblem. The protected symbol in this case is the flag of the Council of Europe as shown below:
Example 1: Not Acceptable
The mark referred to in case T-127/02 (referred to above)is presented in black and white with the stars shown in a circle on a dark background. This is regarded as an imitation of the protected symbol and an objection under section 3(4) is appropriate.
Example 2: Acceptable
The stars are presented in a circle but are of differing colours and are presented on a white background. The inclusion of coloured stars adds a further distinguishing element that would not provide the impression of an imitation of the protected emblem.
Example 3: Not Acceptable
The mark contains twelve yellow five- pointed stars in a circle on a blue background. Notwithstanding the presence of an additional figurative element, this is an imitation of the protected emblem and an objection will be raised.
Example 4 – Acceptable
Here, the mark contains a partial representation of the Union flag combined with a partial representations of the EU flag. The heraldic representation of the mark would not be identical to the protected symbol and therefore it cannot be regarded as an imitation from a heraldic point of view. The partial Union flag, being a national flag of the UK, is not covered by Article 6ter and is acceptable (See UK flags).
The assessment of confusion between a protected word and a trade mark is the same as that applied to protected symbols and trade mark images. Where a sequence of letters is protected and a trade mark application is made for the same letters, then consideration of the area of trade of the protected symbol and the goods/services claimed in the trade mark application should be taken into account.
In relation to Protected Words, the following two examples may be helpful:
CCF – This is the abbreviation for the Commission for the Control of Interpol’s Files
ERA – This is the abbreviation for the European Railway Agency
The examples shown below consist of the same letters as the protected words, and so consideration of the goods and services is required in order to assess whether the public would make a connection between the mark and the international intergovernmental organisation.
Example 6: Acceptable
Class 6: Locks and metal hardware:
Given the applicant’s area of trade, there is unlikely to be any assumption of a connection between the protected emblem, the activities of the organisation which owns that emblem, and the applicant.
Example 8: Not Acceptable
Vehicles in Class 12; Repair of vehicles in Class 37.
In this case, it is likely that the average consumer would assume there is a connection between the applicant and the European Railway Agency because they are operating in the same field. The stylisation of the letters is not sufficient to avoid the likelihood of a connection between the two marks.
Stitching (Devices of)
In T-388/09 Rosenruist v OHIM, the General Court held that the mark shown below was devoid of any distinctive character in relation to goods in classes 18 and 25. The mark consisted of the position of decorative stitching lines; the unevenly broken lines representing the perimeter of a pocket, to which the applicant made no claim, and which only served to indicate the position of the mark.
In relation to this kind of mark, it must be considered whether the average consumer would perceive the sign solely as a decorative feature, and also whether it is merely a variation of a common feature found on pockets of clothing and on other fashion goods covered by specification. The mark must possess sufficient distinctive character to distinguish the goods from those of other undertakings and use of the mark in a decorative or ornamental way would not be considered to imbue any distinctive character . In respect of the example provided, the General Court stated that the mark at issue did not possess any memorable or eye-catching features likely to confer a minimum degree of distinctive character. As such, if a sign does possess one of these features, it may assist when assessing distinctiveness. The Court also confirmed that the mark above did not depart significantly from the standard presentation of pockets and will therefore be perceived by the average consumer simply as a decoration. As a general guide, if marks are similar to the one above and are fairly standard presentations of stitching on pockets, they will be likely to be objectionable under section 3(1)(b).
Section 3(1)(c) excludes trade marks which consist exclusively of signs or indications which may serve, in trade, to designate other characteristics of the goods. In the Registrar’s view, the term ‘characteristics’ extends to those terms which describe the content (or ‘subject matter’) of certain products. This type of scenario most obviously applies to those goods which are characterised and marketed on the basis of their specific content e.g. printed matter such as books and other publications, television programmes, films and software. The provision could equally apply to services, for example:
The mark ‘Canary Wharf’ (a development in London) faced an objection for a range of goods and services including real estate investment, car parking and building construction services, case 2015 EWHC 1588 (Ch.). The name ‘Canary Wharf’ appeared to originate from the 1930s. However, it has been more widely used from around the mid-1980s as the name of a financial centre where a large number of institutions are based. The applicant stated that the expression ‘Canary Wharf’ referred to a private estate it controlled and maintained, but evidence showed that it was regarded by most people in the UK as a business district and not as a commercial undertaking. The area is served by major transport links, is a multi-occupational estate and is a recognised political ward. The court maintained that the name was not capable of indicating trade origin.
As a result of this case, the three points below will need to be considered where a trade mark consists exclusively of a word or words which designates the subject matter of a product, or what it represents:
- the nature of the goods or services for which the application is made. Are they in principle apt to provide or convey information about (or imagery relating to) the subject matter of the sign?
- the nature of the sign. Is it something which is reasonable to believe that average consumers of the goods or services in question will see it as indicating a particular subject matter or theme?
- is the subject matter or theme of a kind which (in the context of the goods or services in question) the average consumer would not perceive as being controlled by a single economic undertaking and is free to be used and exploited by anyone?
If the answer to any of the above is yes, then an objection under section 3(1)(c) is appropriate. To illustrate, the following examples would all face an objection:
‘TUTANKHAMUN’ Objectionable because the mark describes the subject matter of the goods i.e. printed matter and electronic media about Tutankhamun.
‘FISH’ Objectionable because the mark describes the shape of the soap, the subject of the books and films, and the shape of the goods in relation to toys.
‘DAFFODIL’ Objectionable because the mark describes the decoration on the goods or the shape of the goods i.e. chinaware decorated with daffodils or in the form of daffodils.
Surnames, forenames and full names
In the CJEU’s judgement in Case C-404/02, Nichols plc v Registrar of Trade Marks, the Court confirmed that assessing the distinctive character of a surname must be carried out according to the specific circumstances of the case, and that (like all other types of marks) the presence or absence of distinctive character depends upon the perception of relevant consumers, having regard to the essential function of a trade mark identified in Article 2 of the Directive.
Consequently, the nature of the relevant trade and the use of surnames as an indicator of trade origin within that trade must be taken into account. If the relevant public’s expectation was that there would be numerous undertakings trading in the relevant sector under the name in question, with the result that the public would have no expectation that the relevant goods or services under that name would originate from any particular undertaking, then it would be legitimate to conclude that the name is devoid of any distinctive character and subject to an objection under section 3(1)(b).
Internet research will usually be required to ascertain whether it is common in the relevant trade to use surnames as trading practice. However, in some instances it will not be necessary to carry out that research. For example, it is well known that the surname ‘Smith’ is common, and from that it is reasonable to assume there will be large number of doctors named Smith practising in the UK. Therefore, it is unlikely that consumers or end users of medical services will regard that name, by itself, as distinguishing the medical services of one undertaking from those of other such undertakings. Other sectors in which it is common to trade under a surname is that of solicitors.
Surnames with other meanings
Where a word which is a surname has another meaning, that meaning may be open to an objection, for example, the trade mark BROWN would face an objection under sections 3(1)(b) and (c) if applied for in relation to ‘sauces’ because it is a word which may serve, in trade, to designate a kind of product, namely brown sauce. Similarly, the same word would not be acceptable as a trade mark for ‘paints’ because it designates a characteristic of those goods (colour).
Surnames with initials and full personal names
Full names and/or surnames with initials have a greater capacity to distinguish the goods or services of one undertaking than a surname alone, and are therefore likely to be acceptable. Where famous names are concerned please refer to the section headed ‘Famous Names’.
Single forenames on goods
Forenames will normally be accepted as having distinctive character. However, an objection may arise under section 3(1)(b) where the goods are of a kind traditionally adorned with common forenames, such as mugs and bracelets, or goods which are commonly personalised. It has become increasingly common for certain goods to be personalised e.g. key rings, mouse mats, pencils, pencil cases, phone cases etc. and a search of the Internet should be carried out to ascertain if the goods covered by the application are commonly adorned with forenames. If so, an objection will be taken in respect of those goods. However, care should be taken, as it is possible for almost anything to be personalised and therefore it is only where goods are commonly adorned with forenames that an objection will be taken.
Single forenames used in respect of services
Male and female forenames when used in respect of e.g. restaurant services, tea shops, hairdressers and beauty salons will be objectionable. Such signs are commonly used by more than one trader, for example ‘Betty’s Tea Shop’ or ‘Harry’s Hair Dressers’.
UK National flags
Trade mark applications which contain a representation of any of the UK national flags may primarily be open to objection under section 4(2) however a number of other grounds, namely sections 3(1)(b) and/or (c), 3(3)(b) and 3(5), may also apply.
Section 4(2) states:
“A trade mark which consists of or contains a representation of -
(a) the national flag of the United Kingdom (commonly known as the Union Jack),or
(b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man,
shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive. Provision may be made by rules identifying the flags to which paragraph (b) applies.”
Trade mark applications containing a representation of UK national flags, are not automatically barred from registration. Section 4(2) of the Act only states that a mark which contains a representation of any UK national flag shall not be registered if it appears that its use would be misleading or grossly offensive.
A trade mark which consists solely and exclusively of a representation of a UK national flag would attract an objection under sections 3(3) and 4(2) if it is judged to be misleading or grossly offensive for the goods or services applied for. Furthermore, an objection under sections 3(1)(b)&(c) would be appropriate as such a mark would be considered to be non-distinctive and descriptive of goods originating from that region.
Marks consisting of a UK national flag with other features have to be considered in their totality, and may meet the requirements of section 3(1). Objections under sections 3(3) and 4(2) may still be appropriate if the mark is misleading or grossly offensive.
A mark which contains a UK national flag could be misleading if it indicates or suggests that the products intended for protection under the trade mark are made in the UK when they are not.
Many people will be influenced to purchase goods or services simply because they appear to be British in origin. An objection under section 3(3)(b) should therefore be taken. However, the specification of goods or services can be geographically limited to the relevant country to overcome the objection.
Stylised representations of UK national flags are considered acceptable and are not open to objection under sections 3(1). For example:
However, stylised representations forming part of an overall distinctive mark may be open to objection under sections 3(3)(b) and 4(2) if their use would be deceptive as to the origin of the goods/services or grossly offensive.
Veggie (and phonetic equivalents)
Collins English Dictionary defines ‘veggie’ as being an informal word for ‘vegetarian’. Furthermore, the same dictionary defines ‘vegeburger’ as meaning a burger made from vegetables. The extent to which vegetarianism is now promoted across various products sectors means that the mark’s potential descriptiveness in respect of a wide range of products must be considered. Vegetarian-friendly products now extend beyond the conventional food and drinks sector to include, for example, pet foods and toiletries. There are Vegetarian Society-approved tablet coatings for pharmaceuticals and, in the clothing sector, imitation skin and fur goods which do not contain animal products. There are also services relating to the above, such as vegetarian restaurants.
Since ‘veggie’ has come to denote ‘vegetarian’, applications to register ‘VEGGIE’, ‘VEGGY’, ‘VEGGI’, ‘VEGY’, ‘VEGI’ and ‘VEGE’ (and other phonetic equivalents of VEGGIE) in combination with the name of descriptive goods or services will be objected to under section 3(1)(b) and (c). For example VEGE NUGGETS, VEGESOAP, VEGECAFE and VEGE MENU would all be objectionable.
Previous acceptances will not be regarded as precedents for further acceptances. Invented words, such as VEGECATESSEN, remain acceptable as it is a play on words and not directly descriptive.
Marks consisting of the word ‘World’ in combination with the name of, or a description of, the goods or services will normally be accepted prima facie. Consumers are used to seeing such signs functioning in the market place as indicators of trade origin (e.g. ‘FURNITURE WORLD’). That said, applications to register well established terms which are used in their respective fields, such as ‘business world’ and ‘financial world’ would face an objection.
Part C Notification (Earlier rights)
During the examination process a search will be conducted for earlier rights which may be confused with the mark applied for. This is because Section 5 of the Trade Marks Act 1994 prohibits the registration of any trade mark which is identical with, or similar to, an earlier trade mark which covers the same or similar goods and services. The search covers any earlier marks which have been registered, or applied for, and have protection in the UK. Any such marks will be drawn to the applicant’s attention via the examination report.
Whilst the Act prohibits the registration of marks which are identical or similar to those already filed, the Office does not prevent marks from being registered where earlier rights have been found during the search. Instead, the applicant is given the opportunity to consider if they wish to proceed to publication/registration regardless of the earlier rights. The owners of any earlier rights found are notified if the applicant decides to proceed. Any objections to the registration of the mark can be raised via the opposition process.
2. When a notification is appropriate
When assessing whether or not to notify an earlier right there are a number of considerations that need to be made.
2.1 Similarity of marks
An overall assessment must be made of the similarities and differences between the mark applied for and any earlier rights. In particular, the marks must be considered in relation to any visual, aural and conceptual similarities or differences.
The respective marks must be compared in totality because the average consumer normally perceives marks as a whole and does not proceed to analyse their various elements.
Nevertheless, it should be borne in mind that although the consumer normally perceives marks as a whole, their recollection of them is likely to focus on their dominant and distinctive components. More weight will be given to the distinctive elements within the marks. However, non-distinctive similarities should not be ignored altogether, especially if they comprise a significant part of the respective marks.
2.2 Similarity of goods/services
In determining the degree of similarity between the respective goods/services, the following should be taken into account:
- the goods/services actually listed in the application
- the intended purpose of the goods or services
- method of use
- whether they are complementary
2.3 Likelihood of confusion
Likelihood of confusion means that it is more likely than not that confusion will arise in the mind of the average consumer as to the origin of the goods/services at issue when comparing two or more trade marks.
Likelihood of association is not an alternative to likelihood of confusion. Mere association, in the sense that the later mark brings the earlier mark to mind, is insufficient to find a likelihood of confusion, unless the average consumer, in the process of bringing the earlier mark to mind, is led to expect that the goods or services of both marks are under the control of one single trade source.
“The risk that the public might believe that the goods / services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion” (Canon.
2.4 Global comparison
In the Sabel BV v Puma AG (C-251/95) case, the main emphasis is the idea that no single factor will lead to a conclusion that there is, or is not, a likelihood of confusion between marks. The Court decided that:
“The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case.”
The three most relevant factors in deciding whether an earlier mark is considered to be confusingly similar by the Office will usually be:
• the similarities and differences between the respective trade marks, • how distinctive the earlier mark is, and • the degree of similarity between the respective goods and/or services
Once an initial assessment of the individual factors has been undertaken, all three factors must be considered together in order to assess the overall likelihood of confusion.
These factors are interdependent.
“A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa” (Canon).
And, “…the more distinctive the earlier mark, the greater will be the likelihood of confusion.” (Sabel).
The weight given to visual, aural and/or conceptual similarities, and the respective differences between these elements in the marks will vary depending upon the goods or services at issue. For example, the purchase of clothing is likely to be made on the basis of a visual selection, whilst over-the- counter medication or leisure club classes may be purchased orally, rendering the aural comparison paramount (Lloyd). In the case of conceptual comparison:
“It is ….not impossible that the conceptual similarity resulting from the fact that the two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier trade mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public.” (Sabel)
It is clear from an analysis of this case that the CJEU had very highly distinctive marks in mind, such as a representation of a monkey playing a piano, where the highly distinctive common concept behind the marks is likely to outweigh any visual differences in the respective representations. In cases which do not have a highly distinctive element, mere conceptual similarity will be insufficient to give rise to a likelihood of confusion.
In assessing the degree of aural similarity between two marks, one is mainly concerned with word only marks or word elements within a composite mark, although images with an obvious aural description may also give rise to a degree of aural similarity. For example, the words ‘red bull’ may be considered aurally similar to an image of a red bull.
2.5 Where Trade Mark A is subsumed within Trade Mark B
In the case of marks comprising two or more distinctive elements (composite marks), it will often be difficult to determine which of those elements is the most dominant.
The most obvious example is that of a full name such as ‘Alexander Morgan’, where both elements contribute equally to identifying trade origin. Accordingly, the registrar would not normally regard the individual marks ‘Alexander’ or ‘Morgan’ as being in conflict with the composite mark comprised of both names, even if the respective goods are the same.
Nevertheless, there may be cases even of this type where one part of the name will be seen as the dominant and more distinctive feature. For example, in the full name ‘John Copland’, the surname is rare whereas the forename is common. The surname therefore contributes more to the distinctive character of the mark than the forename does. The owners of the ‘John Copland’ mark should therefore be notified of ‘Copland’ applications, and vice versa (subject to the respective goods/services being identical or at least closely similar) on the basis that ‘Copland’ is the dominant and distinctive feature of ‘John Copland’. But the owners of the mark ‘John’ would not be notified of ‘John Copland’ applications, nor vice versa.
Where trade mark A is incorporated into trade mark B in such a way that it cannot be said to be a dominant element of trade mark B, there may still be a likelihood of confusion where:
i. the respective goods or services are identical or virtually so, and
ii. the element which corresponds to trade mark A retains an independent role within trade mark B, and
iii. the common element is neither prima facie lacking any distinctive character nor is it low in distinctive character.
If mark A has limited distinctive character it is less likely that its mere inclusion in mark B will cause relevant consumers to suppose that the users of the respective marks are economically linked. In the ‘Medion’ case, where the marks under consideration were ‘Life’ and ‘Thomson Life’, the CJEU assumed that ‘Life’ was of “average” distinctiveness in respect of the services applied for.
In the example below, the dominant element of the trade mark is probably the word ‘Catania’. However, the word ‘Schachenmayr’ retains an independent and distinctive role within the composite mark. Accordingly, if a third party applied to register ‘Schachenmayr’ (or ‘nomotta’) for the same goods, it would be appropriate to notify the owners of the below composite mark (or vice versa). This is because the presence of the independent ‘Schachenmayr’ element in the composite mark would likely result in consumers expecting there to be an economic link between the undertaking responsible for the goods sold under that mark and the same goods sold under a mark consisting exclusively of ‘Schachenmayr’.
Examination of composite marks should not, however, be reduced to a search for one mark within another. The more the elements of the composite mark ‘hang together’ the less likely it is that the individual elements will have an independently distinctive role within it. For example, the element ‘POLO’ is not a distinctive element within the composite trade mark ‘ROYAL BERKSHIRE POLO CLUB’ because the words ’hang together’ as a name and ‘POLO’ would be seen as a descriptor. In this example the word does not stand out as having its own independently distinctive role within the composite mark.
Further, it is possible for a word to be subsumed within a multi-word mark even though the words do not combine to form a totality with an obvious meaning. For example, it would be difficult to say that the word ‘TARGETS’ has an independent and distinctive role in the composite mark ‘FASHION WEEK TARGETS FRIDAY’ (for clothing). Consequently, it is not likely that it would be held to be in conflict with the mark ‘TARGETS’ alone (again assuming same goods) because it is not the dominant element of that mark, neither is it an independent and distinctive element of the composite mark.
2.6 The average consumer
The assessment of the likelihood of confusion must be made through the eyes and ears of the “average consumer”. The average consumer will depend upon the type of goods or services in question. This may include members of the trade as well as of the general public. The average consumer is:
“….. deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind” (Lloyd).
The consumer’s level of attention is likely to vary according to the category of goods or services, e.g. closer attention will be paid to the purchase of engineering equipment than is likely to be paid to everyday items such as foodstuff.
2.7 Notional and fair use
This refers to use across the range of goods/services claimed in any way that would be considered to be normal use of the trade mark in relation to the goods or services in question. The fact that the goods/services may only be sold in a certain environment, or in a specific price range, should not be taken into account when deciding whether to notify. Trade Mark proprietors are free to change the way they market goods/services and they can assign marks which may then be used however the new proprietor sees fit.
Where the only conflicting component of an earlier filed mark has been disclaimed then that component will not conflict with the identical component in a later filed mark, i.e. an application. For example, where the proprietor of the earlier filed mark ‘JARED CASING’ has disclaimed exclusive rights in the word ‘CASING’, it would not cause conflict with the later filled mark ‘CASING FORCE’.
A disclaimer will be treated as an admission that the disclaimed component of the earlier mark is not distinctive for the proprietor’s goods and services. In that case its presence in another party’s trade mark cannot give rise to a likelihood of confusion. However, where the totality of an earlier mark is similar to the later filed application then the fact that one element is disclaimed will not be sufficient to avoid the likelihood of confusion. For example ‘JARED CASING’ would be considered similar to ‘JAREAD CASING’ even though the word ‘CASING’ is disclaimed in the earlier mark.
An offer to disclaim exclusive rights to a component of the later filed mark will not assist in overcoming a requirement to notify an earlier mark. This is because the scope of protection of the earlier mark would be unaffected by a disclaimer entered on a later filed mark. For example, disclaiming the term ‘JARED’ in the mark ‘JARED CASING’ would not overcome a conflict with the earlier mark of ‘JARED HOLDINGS’.
2.9 Families of Marks
If a search reveals a number of marks under the same ownership, with common identical elements, they should not be regarded as confusingly similar to the mark being examined on this account alone; to do so would be to assume a degree of reputation in the common feature of the earlier marks. Reputation cannot be considered at the examination stage because this is only appropriate as a matter for consideration under opposition. Consequently, where similar marks in the name of the same party are identified in a search, they should be compared with the later mark individually, not collectively ‘Ener-Cap’(BL O/295/98) refers.
There may be a case for the registrar notifying the owners of all or some of the earlier marks on a variety of grounds. For example, company A has registered marks including ‘PORTAKABIN’, ‘PORTALOO’, ‘PORTAHOUSE, ‘PORTATANK’ and ‘PORTASAFE’, and company B has applied for ‘PORTAHOME’. The registrar would not automatically notify the owners of all the registered marks but only those, if any, that are individually confusing, i.e. ‘PORTAHOUSE’ on the grounds of visual and conceptual similarity.
There may also be cases where the common feature of the earlier marks is so inherently distinctive that its inclusion in the later mark is sufficient to give rise to a likelihood of confusion, notwithstanding the other differences in the marks. For example, in the case of ‘ZIGGOOSUR’ v ‘ZIGGOOTAN’; the existence of other similar earlier marks in the name of the applicant, e.g. ‘ZIGGOONOR’, will not overcome the need to notify the owners of ‘ZIGGOOSUR’.
2.10 Where there are potential earlier rights to be notified but the applicant has an identical ‘earlier trade mark’ or has previously obtained consent
The owners of all earlier marks identified in a search will be notified of the later application, regardless of any prior marks registered by the applicant of the mark under examination. It will be for the parties to decide how they wish to proceed.
2.11 Expired earlier rights
When a search for earlier marks is conducted, if a potential conflicting mark is shown as “expired”, no notification will be sent. This is because an expired mark is not considered to be an earlier right under section 6(1) or 6(2) of the Act. This means that neither the applicant, nor the owner of the expired mark will be notified of each other’s existence, even if the “expired” mark is reinstated at a later date.
2.12 Notifications between companies in the same common ownership (Technical Notifications)
Large companies may file applications for similar marks in the names of their various subsidiary companies, and may wish to overcome the resulting ‘technical notification’ by consent. However, the registrar will list all earlier right holders during examination and it will be for the applicant to decide whether they wish to pursue consent or simply allow the related company to be notified.
3. Overcoming a requirement to notify
It remains open to applicants or their representatives to respond to an examination report which has identified earlier marks by arguing against the need for some or all of the earlier right holders to be notified of their application. Applicants may attempt to avoid notifications being sent by:
- removing conflicting goods/services
- obtaining consent from the proprietor of the earlier mark(s)
- dividing the application.
3.1 Removing the conflicting goods/services
This can be done by:
- positively limiting the goods/services of the application
- excluding the goods/services which are in conflict.
3.2 Positively limiting
Many applications are filed with very wide specifications, and/or include terms which cover a broad range of goods/services. The applicant may not actually intend to trade in/offer all the goods/services which could be covered by such wide terms and therefore may be able and willing to be more specific about their intended activities. It may then be possible to identify whether a clash remains when more detail is available. If so, the applicant could propose a limited specification to overcome the conflict and the subsequent notification requirement. Such a limitation could take the form of a shorter list of the goods/services for which protection is required, or it could consist of a more precise description of the kinds of goods/services named in the original list.
(a) Class 7 application: Spraying machines
(b) Class 7 earlier right: Agricultural machines and parts and fittings therefor.
Limitation required of (a): “…; all for use on vehicle construction lines.”
(a) Class 9 application: Electric cables
(b) Class 9 earlier right: Speakers and parts and fittings therefor.
Limitation required of (a):”…all for use in providing an electricity supply to properties”.
A positive limitation is more likely to overcome a notification requirement where the applicant has used wide or vague terms in the original specification of the application.
When using an exclusion as a means of overcoming a notification requirement it is normally necessary for the applicant to ensure that all the goods and/or services considered to be both identical and similar to the earlier mark are excluded from the amended specification submitted in respect of the application.
(a) Class 9 application: Electrical machines for use in the Office
(b) Class 9 earlier right: Modems
Exclusion required of (a): “…but not including modems, telecommunications or computing apparatus.” Where the clash is only in respect of similar goods/services, the applicant will need to identify the conflict and submit an amended specification where those (named) similar goods/services are excluded in order to overcome the notification requirement.
(a) Class 12 application: Cycles
(b) Class 12 earlier right: Motor land vehicles
Exclusion required of (a): “…; but not including motor cycles.”
3.4 Obtaining consent from the proprietor of the earlier mark(s)
This is specifically mentioned in the Act and covers any earlier mark raised as a notification in relation to the application under consideration. It is covered by section 5(5) which states:
“Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or earlier right consents to the registration.”
The wording of this sub-section makes it clear that the registrar has no discretion to refuse to accept consent, even where the marks are identical and cover identical goods/services. If the proprietor of the earlier is willing to allow someone else to use an identical mark then the Registrar will allow the later mark to proceed to publication without the requirement to notify the earlier right holder.
3.5 Letters of consent
The basic principles to bear in mind are that the consent must be given by the owners of the earlier mark, that the application being consented to is clearly identified and that it is clear that consent to registration (and not just use) of the mark is being given.
The minimum requirements for a letter of consent are set out below:
i. The consent should always include the details of the person giving the consent i.e. name, position, the name of the company (if appropriate) and the letter should be signed by the person named.
ii. The application in respect of which consent is being given should be identified. The application number(s) is sufficient. It is not essential to include the trade mark, nor is it necessary to identify the earlier trade marks owned by the person giving consent.
iii. If the specification is not referred to it will be assumed that the entire specification applied for is acceptable to the party giving the consent. However, if a specification is referred to, and is narrower than the one filed, the application will only be accepted without a requirement to notify the earlier right holder in respect of the goods and services in conflict to which the consent applies.
iv. Letters of consent should be in English or, if in another language, be accompanied by a certified translation.
Consent between Companies in the Same Ownership
The Registrar accepts the following simplified procedure in such cases, should the parties wish to pursue this option:
i. A general letter of consent may be provided between the two companies setting out the relationship between the two companies and confirming that they are prepared to consent to any trade mark applications made by the other party.
ii. On each occasion that a copy of the general letter of consent is filed, the applicant, or their agent, must supply a covering letter certifying that the general consent is still valid.
3.7 Payment for Consent
If there is a conflict, the actions of the earlier rights holder in requesting payment for consent is not a factor which the registrar can take account of.
3.8 Dividing the mark (TM12) as a method of overcoming a requirement to notify
This does not, strictly speaking, overcome the requirement for the registrar to notify the holders of the earlier mark, but where the goods/services which conflict can be pinpointed, these can be divided out into a separate application for a fee. The part of the application which contains the non-conflicting goods/services can proceed to publication without the need for notifications to be sent. The part which includes the goods/services which conflict must then be dealt with by one of the other means suggested here.
Part D Overcoming objections
In this section we provide information on ways in which an objection raised during the examination stage may be overcome. There are a number of different routes an applicant can pursue in order to overcome any objection, and some of the more common are given as examples. This is not an exhaustive list, and some may not apply in all cases, as the acceptability of a particular mark will depend on the individual circumstances of the case being considered.
In the first instance, any objection should be discussed with the examiner. This can be done via the telephone or in writing to the reply address supplied on the examination report. The examiner will consider any points made and will reply to the applicant with their decision.
Where an objection is raised under Section 3(4), Section 3(5) or Section (4) because the mark consists of or contains protected words or emblems, it may be possible to overcome the objection by obtaining the consent of the relevant responsible body.
For example, where marks contain Royal Crowns and/or Emblems, or contain words that would infer royal patronage, the applicant would require consent to use and register the mark from the Lord Chamberlain’s Office at Buckingham Palace, London, SW1A 1AA.
For marks which contain emblems protected under Article 6ter, or flags (other than UK national flags) it would be necessary to contact the relevant body in the territory covered by the emblem or flag in order to gain consent to use and register the emblem.
It is clear from the wording of section 13 of the Act that the entry of a disclaimer is voluntary and may be made prior to, or post, registration. However, the addition of a disclaimer to an application will not overcome an objection raised under Section 3 nor will it avoid the need to notify an earlier right identified under Section 5.
Where a disclaimer is added there are two conditions which must be met.
Firstly, the volunteered disclaimer must either disclaim any right to the exclusive use of a specified element of the trade mark, or it must limit the rights conferred by registration. The use of a disclaimer to add in elements of the trade mark that were absent at the outset is not a limitation of the rights conferred by registration, and is not therefore permissible (see Nestle SA Trade Mark Application  EWCA Civ 1008).
Secondly, the disclaimer should be worded in such a way as to make it clear to third parties what its effect is. Accordingly, whilst the registrar cannot and will not insist on standard wording for disclaimers, he has an inherent power to require clarification of the wording of a proposed disclaimer which leaves room for serious doubt as to the effect of the voluntary disclaimer.
It is suggested that disclaimers take this form:
“Registration of this mark shall give no right to the exclusive use of [description of element(s) of trade mark to be disclaimed].”
4. Deletion of specification terms, positive limitations and exclusions
In some limited circumstances it is possible to delete or exclude objectionable terms from a specification, or add a positive limitation to the specification in order to overcome an absolute grounds objection. For example, the word ‘horse’ would not be acceptable as a trade mark for books as it would merely be seen as the subject matter of the books themselves and would therefore attract an objection under both Sections 3(1)(b) & (c) of the Act. One option available to potentially overcome an objection is, to delete or exclude books from the specification, or to positively limit the specification to explain what the books’ content is, i.e. books relating to ships.
4.1 Deletion of specification terms
Deleting is a simple removal of the goods or services which are causing the problem. This is an option if the mark faces objections only in relation to particular items in the specification, but is clearly distinctive for the rest. It is important to ensure that if specific terms have been deleted, the same goods or services are not still included elsewhere in the specification, within a broad category of goods or services. For example, if it was necessary to delete the specific inclusion of “computer software for financial management”, it would also be necessary to delete the broader term “computer software” elsewhere in the specification.
When undertaking the deletion of a broad term or substituting individual, objectionable items, care must be made to not add terms which were not covered by the original specification. For example, ‘musical stands’ would not have been covered by the original term ‘musical instruments’, and so could not be added in response to an objection.
Once a specification has been limited by deletion, the deleted goods or services cannot be reinstated.
4.2 Positive limitations
These restrict the scope of the specification by more clearly defining the goods or services. This may be done either by simply listing the specific items required, or by adding a phrase such as “all relating to…” or “all of the aforesaid goods being for use in…”. Commonly, a limitation of this type will be placed at the end of a specification, but in the case of a lengthy specification, it may also be appropriate elsewhere in the text. Wherever it appears, it is very important to ensure that the punctuation is correct. The use of commas or semi-colons can make a significant difference to the meaning of a specification. For example, a semi-colon means that the limitation covers all the preceding wording, whilst a comma only covers the wording as far back as the preceding semi-colon. A restriction in this way is a positive statement by the applicant, affirming exactly what they request cover for. It is therefore a desirable way to amend the specification, making for clarity of the Register, in the interests both of the applicant and third parties.
“Books and printed matter; all relating to accounting and business” would be acceptable as all the goods claimed are limited whereas:
“Books; printed material relating to accounting and business” would not be acceptable because as the books have not been limited the same way as the printed matter.
Exclusions are the opposite of positive limits in that they define what the goods or services are not, by containing in the specification the wording “but not including…” or “none of the aforesaid”.
“Books and printed matter; none of the aforesaid relating to Tutankhamun”
However, following the judgment of the ECJ in the Postkantoor case, C-363/99, the above example would not be acceptable. Postkantoor makes it clear that the Trade Mark Directive, from which the UK Act is derived, “prevents a trade mark registration authority from registering a mark for certain goods or services on condition that they do not possess a particular characteristic”. In other words, excluding the particular characteristic that the mark describes is not an option. The reasoning that the Court gave for this ruling is underpinned by the legitimate interest of other traders; an exclusion in relation to particular characteristics might cause other traders to refrain from using that sign in trade, because it would be unclear that the mark’s protection did not actually extend to those goods or services for which it was descriptive. They would not know, as a general rule, about the exclusion and there might be legal uncertainty, which is what the Directive is intended to prevent.
It is necessary to exclude the category of goods or services, rather than a characteristic of the specific goods or services themselves.
“Books and printed matters; none of the aforesaid relating to Birds”
“Books and printed matters; none of the aforesaid relating to Penguins”
When considering exclusions, it is important to be aware of the potential of a subsequent deceptiveness objection. For example, the mark “Titanium” applied for in respect of building materials cannot have the exclusion “none being titanium”, as this would then clearly be deceptive for building material which are not made of titanium. The specification is not clearly in the market place, and so the average consumer would not be aware of the exclusion.
See also the section on Deceptive Marks for exclusions which cause the raising of an objection under section 3(3)(b).
5. Evidence of distinctiveness acquired through use
An objection under sections 3(1)(b), (c) or (d) of the Act can be overcome if it can be shown that, by the date of application, the mark has become recognised by consumers as a trade mark as a result of the use made of it, to the extent that it has ‘acquired distinctive character’.
In order to overcome an objection in this way an applicant must provide evidence to prove that the mark applied for has become recognised as a ‘badge of origin’, or a sign that the consumer relies on to identify the origin of the goods or services. Evidence is normally presented by way of a ‘witness statement’, provided by a managing director, sales director or other senior employee within a company. The witness statement will set out the facts about the use of the mark and may be accompanied by exhibits (showing use of the mark on packaging or in advertising for example).
The evidence will be assessed by the examiner to ensure it is sufficient to prove that the mark has acquired the necessary level of distinctiveness in order to be accepted. There are a number of factors the examiner will look for in the evidence as set out by the Windsurfing Chiemsee case (joined cases C-108/97 and 109/97):
In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.
5.1 Market share
In most cases it is necessary to have some idea of the market share held by the applicant under the mark applied for. The size of revenue is not the only indicator, as it depends heavily on the business sector. In some circumstances what appears to be a substantial sum of money turns out to be insufficient for a particular trade which therefore affects the market share. For example, £500,000 per annum in the dairy produce sector will be a tiny proportion of the market and it is therefore unlikely that such turnover will have educated a significant proportion of the relevant public as to the origin of trade mark. On the other hand, this level of use on a specialist product, in a relatively narrow trade sector may well have reached a significant proportion of the relevant public, therefore showing a sufficiently high level of market share to achieve an acquired distinctive character.
5.2 Turnover and period of use
Evidence must include the date the trade mark was first used and only show use before the date of filing the application. Any use after that date will not be taken into account. If there have been gaps in the use, it will be necessary to consider how this affects the reputation of the mark applied for. For example, a strawberry grower may not be able to demonstrate sales throughout the year, but if they sell strawberries for two months of the year every year for ten years, that is likely to be sufficient to illustrate continuous use, given the seasonal nature of his product. Another trader might sell goods under a certain mark for twelve years, but there may be a two year gap leading up to the date of the application in which few or no sales took place. Before a judgement can be made about accepting or refusing the mark, it would be necessary to look at all the surrounding facts to see what effect that gap had. If sales weren’t particularly strong beforehand, the reputation of the mark may have been severely diminished. If, on the other hand, sales were very good both before and after any gap, it may be that the gap would have had no negative effect on the reputation at all.
Turnover figures should normally be given for the sales of goods/services under the specific mark applied for. For example, if an applicant uses a number of marks for different products only the turnover figures for the sales of the goods/services which are traded under the mark applied for should be considered.
The greater the turnover, the more likely it is for the mark to be accepted, although consideration has to be made for the business sector. Turnover, advertising and period of use are considered together - massive turnover and/or advertising could compensate for a short period of use.
Ideally, the turnover figures should be broken down to give the turnover relating to each class of goods/services. However this may not be a practical proposition. There should, however, be sufficient evidence to support a finding that the relevant public has been repeatedly exposed to the sign used as a trade mark for all the goods/services covered in the application.
In the case of financial services, turnover figures may not always be the appropriate means to gauge the extent of use of the trade mark. For example, turnover figures which are merely the total amount loaned or insured by the applicant will give an inflated picture in relation to how well-known the mark is in terms of exposure to the relevant public. This is insufficient as a clear indication of the extent of use is required if the applicant is relying on this to demonstrate that the mark has acquired a distinctive character. In the case of financial services, the number of account holders or investors and, if appropriate, the number and geographical spread of branches could be used to demonstrate the extent of the use.
5.3 Area of use
Evidence must demonstrate use of the mark throughout the UK in order to be sufficient. The witness statement may include an indication of the areas of sales within the UK, but it does not have to be comprehensive. Phrases such as “throughout the UK” are acceptable if they are supported by the exhibits/invoices provided. Further, national advertising may be considered to demonstrate acquired distinctiveness even through sales may not have occurred throughout the UK.
In Bovemij Verzekeringen NV v Benelux Merkenbureau, Case C-108/05, the ECJ held that a trade mark could be registered on the basis of acquired distinctiveness, “only if it is proven that that trade mark has acquired distinctive character through use throughout the territory of a member state.” Accordingly, it is not possible to register a trade mark on the basis of distinctiveness acquired on a local or regional basis in the UK.
It is not be possible to register a trade mark on the basis of acquired distinctiveness if the evidence shows use only within a specific area of the UK, even if the specification is limited to sales in that specific area. For example, in the Best Mangal case BL O/224/16, the application was rejected since the applicant’s restaurants were based only in the Greater London area. The applicant offered to limit their rights to Greater London in order to gain protection, but this was not accepted, as a UK trade mark right will be protected throughout the United Kingdom and so evidence of acquired distinctiveness must reflect this.
However, use does not have to be demonstrated in every town and city in the UK in order for the mark to be shown to be distinctive. Accordingly, failure to show that a trade mark has become distinctive in (say) the Shetland Isles will not prevent a national registration on the basis of acquired distinctiveness.
As well as considering the importance of territories in relation to acquired distinctiveness, the Bovemij judgment also considered the issue of when the verbal element of a trade mark is in a language which is spoken and understood in only part of the relevant member state. In these circumstances, the ECJ decided that in order to prove acquired distinctiveness, it is sufficient to show recognition only in the relevant linguistic area. For example, a Welsh word which was objected to under 3(1)(b) or (c) may still be registered if it is shown that it has acquired distinctive character in the minds of a substantial proportion of the Welsh speaking population in Wales.
The area of use has to be considered when interpreting turnover figures. Occasionally, turnover figures also include goods for export. These figures may also be taken into account when considering the strength of the evidence. However, if turnover relates to goods manufactured in this country which are exclusively for export, the evidence will not be sufficient to demonstrate that the mark has acquired a distinctive character in the UK amongst a significant proportion of the relevant public. Where evidence only shows use of the mark outside of the UK, the mark cannot be accepted. Section 3(1) requires the mark in question to be distinctive in the relevant markets in the UK.
5.4 Advertising expenditure
Advertising expenditure should relate to the mark as filed, and where possible, the advertising medium should be given, for example television, radio, newspapers, trade magazines, etc. This usually shows whether the advertising was nationwide or restricted to local areas. The figures should be broken down to show costs in relation to each class of goods/services wherever this is feasible.
The importance to be attached to advertising figures will very much depend on the goods/services at issue. A car manufacturer, for example, will spend vast amounts of money assessing the market before launching a new model. They will then developing their strategy and advertise their intended product accordingly. Such costs may run to hundreds of thousands of pounds, or even millions, and may indicate that the company has established the sign in the relevant trade before even one car is sold. In such a case, the advertising expenditure might be sufficient for the mark to proceed without any sales being made.
On the other hand, there may be little or no advertising expenditure for a highly specialised product with a niche market. For example, a company producing technical valves may inform existing clients of their updated product through a catalogue or email, which are already sent out on a regular basis. That company would then have to try and attribute specific costs to the marketing of one particular product among hundreds in their catalogue.
These are required to show how the mark has been used in relation to the goods and services applied for. They may include, inter alia, brochures, catalogues, price lists, advertisements, invoices etc. Exhibits should be dated and reflect the period of time prior to the date of application.
5.6 The average consumer
Throughout case law, reference is made to ‘the relevant class of persons’ or the ‘average consumer’. Who this refers to depends on the type of goods or services the trade mark specification covers. If the goods are consumer goods/services then it will be the general public, with a normal level of attention, who are relevant. This will not be the case for specialist goods/services where the relevant consumer would be those in trade and are likely to have a higher level of attention when discerning between suppliers. This is important as it will have an impact on the analysis of the evidence provided.
5.7 Nature of the goods/services and market
The nature of the goods/services must be taken into consideration. For example, watches can significantly differ in their cost from brand to brand, with some being high end products. However the specification is still watches at large, which will include the more basic variety, and therefore the market would be the general public at large. Compare this to a nuclear power station, which is highly specialised with an active market which would be incredibly restricted.
It will therefore be harder for a trade mark to acquire distinctive character for common goods/services than it would be for very specialised, technical goods or services sold in a niche market.
5.8 Goods/services claimed
Following evidence of acquired distinctiveness, the specification applied for can be amended. The final specification of goods/services should reflect the goods/services the trade mark has been shown to be used on in the exhibits filed with the applicant’s witness statement. The final specification cannot consist of the more general claims often used in initial specifications. Where use is shown on a specific item only (for example “magazines”) the specification should reflect that item rather than the general term (“printed matter”, which includes books).
However, a wider specification of goods/services may be allowed where:
- the prima facie objections do not apply to all of the goods/services shown in the application;
- the exhibits show use on a range of goods or services (for example. “Pencils, pens, rulers, wallcharts, staples, ink, deskpads”) within the general term applied for (for example “Stationery”).
5.9 Use of a mark by a single undertaking
If a mark is used by only one undertaking this does not automatically mean that it must be therefore be acceptable. In the Philips V Remington case, C-299/99, the ECJ found that whilst a mark may be accepted if it is found to be used by only one supplier, such a finding is only possible where reliable evidence shows that the mark has been used in a distinctive manner to indicate that the goods and services originate from that single undertaking. In other words, the mark must still have been used as a trade mark, even by that one undertaking.
This applies regardless of whether or not the applicant is the only supplier of a kind of goods/services to the market. The consequence of a monopoly in the product or service in the marketplace is that it may make it difficult to gauge whether the public has come to recognise the sign as a trade mark, or whether they merely recognise the sign as characteristic of a particular kind of goods or services. Simply associating a sign with the kind of goods/services because it is the only known supplier does not, necessarily, equate to recognition of trade origin. Acquired distinctiveness cannot be shown to exist solely by reference to general, abstract data, such as pre-determined percentages of recognition by the relevant class of persons, as confirmed in the Chiemsee and Philips decisions. Instead, the view of the average consumer, who is considered to be reasonably well informed, observant and circumspect, will be taken into account. The average consumer is unlikely to recognise a sign as being one that identifies the trade source of the goods/services, unless they have been educated by the proprietor through trade mark use.
The less plausible it appears, on the face of things, that consumers would view the mark in question as an indicator of trade origin, the more important it is to consider what, if anything, the proprietor has done in order to nurture the sign into a trade mark. To put it another way, the more descriptive or non-distinctive the mark appears, the more work the proprietor will have to put in to educate consumers that it is a trade mark. Where the mark has been used on a substantial scale as the sole or principal means of identifying the trade source of the goods, it should often be relatively straight forward to conclude from the context of the use that the public has been educated enough to see the sign as a trade mark.
5.10 Secondary trade marks
In Societe des produits Nestle SA v Mars UK Ltd, Case C-353/03, the ECJ determined that a mark may acquire distinctive character as a result of it being used as part of, or in conjunction with, another trade mark. There is, therefore, in theory, no legal requirement for the non-distinctive “secondary” mark to have been used alone before it can be registered on the basis of acquired distinctiveness. However, where such a mark is used alongside a distinctive “primary” sign, the burden on the applicant to show that the non-distinctive secondary mark has come to be seen as a trade mark will be greater, as covered in the British Sugar v Robertson case,  E.T.M.R. 118].
Where the evidence provided by the applicant shows that the applied for trade mark is used together with another distinctive sign, it may be possible to accept the application provided that the evidence indicates that the trade mark applied for has been used as a secondary trade mark.
This is an example which does not show that the applied for mark has been used as a secondary trade mark.
In this case the word “Yorkshire” is merely used as a description of the geographical origin of the goods (beer).
Contrary, the following is an example which does show that the applied for mark has been used as a secondary trade mark:
Mark Applied For: Mark Shown in Use in Evidence:
In this example the word “Lovely” was shown in the evidence as being a secondary brand, due in part to the use of the quotation marks. In this case, the presentation of the word “Lovely” in quotation marks identifies the sign as a brand name for the product. Were it not for the use of quotation marks, the term “Lovely” may simply have been considered descriptive.
Non-traditional trade marks, particularly colours and the appearance of the goods or their packaging, often pose particular problems. Such marks are seldom used as the principal means of distinguishing the trade source of the goods or services. Nevertheless, they are capable of being used as secondary trade marks. The key issue will usually be the same as with traditional trade marks, i.e. whether or not the proprietor has used the sign distinctively to educate the public that it is a trade mark. The most obvious way of educating the public that such a sign is a trade mark is for the proprietor to indicate this in its advertising by the use of statements such as “look for the one with the [blue] wrapper” or “you can rely on the [description of appearance of goods or packaging] to tell you it’s a [brand name]”.
One means of signifying the trade mark significance of colours is to use them as a livery, i.e. as a consistent colour scheme applied to a range of products of the same general kind so as to designate the trade source. The use of such liveries for buses, trains and vehicle service stations are good examples of such use in relation to services. On the other hand, evidence that an applicant uses a wide range of colour schemes in relation to goods or services of the same kind tends to point away from the trade mark significance of any one such colour scheme.
If there is evidence that the applicant applies the same styling feature to the shapes of a range of goods of the same kind, this may assist in educating the public that the feature has some trade mark significance. On the other hand, evidence that the undertaking produces a large number of similar kinds of products, all with different shapes, tends to point in the other direction.
Where there is doubt as to whether or not enough has been done to educate the consumer that the sign is used to denote trade origin, evidence of recognition from the relevant public may be sufficient to demonstrate the mark has acquired distinctive character. The best way of demonstrating this recognition is to show that consumers have come to rely upon the sign in the course of the selection process of goods and/or services.
Evidence of mere abstract recognition of the sign is unlikely to assist, especially if the doubt as to the trade mark’s ability to function is not about the extent of the use of the sign, but rather whether it is used for the purpose of identifying the goods or services of one particular undertaking.
It should be noted that the use of small letters “tm” in relation to a sign with no trade mark character is unlikely to make an impression on the average consumer without further education.
5.11 Use as part of another mark
In the light of the CJEU’s judgment in Societe des produits Nestle SA v Mars UK Ltd Case C-353/03], it is clear that, as a matter of law, there is no bar on a mark acquiring distinctive character as a result of its use as part of another trade mark. Word marks are often used with device marks but that does not mean that the consumer could not regard the word or device element as having an independent distinctive role within the composite mark. The question is whether the mark applied for, if used alone, would distinguish the goods/services listed as coming from one undertaking in the mind of the relevant consumer. Although it is perfectly possible, and the theory is supported by law, it is likely to be more difficult to show that a mark has acquired distinctive character when it is only used as part of another mark.
For example, use of the mark on the right below could not be automatically assumed to be use of the trade mark “Quality” even on evidence of acquired distinctiveness. It will be up to the applicant to establish that as a result of the use of the mark on the right, the average consumer actually perceives the product or service as originating from a given undertaking.
Small differences between the mark applied for and the mark which has been used may be ignored so long as they do not alter the distinctive character of the mark. For example, the use of the mark below should be considered as use of the word standard typeface PREMIER.
5.12 Use of a mark as a retail name in relation to goods
Section 10(4)(b) of the 1994 Act states:
“(4) For the purposes of this section a person uses a sign if, in particular, he –
(b) offers or exposes his goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;”
This means that use by another trader of someone else’s trade mark counts as infringement. It would also be regarded as use of the mark in relation to the goods.
The Crate & Barrel case  FSR], suggests that use of a shop name can also be used in relation to the goods sold therein, if it distinguishes the goods of one undertaking from those of another. However, if the goods in the shop are sold under the trade mark of another party, and are also available at other retailers, it is difficult to see how the use of the shop name serves a trade mark function for all of the goods therein.
Therefore, as a rule of thumb, the answer to the question “can use of a mark as a retail name be regarded as use in relation to the goods?” will usually be “no” if the goods are carrying a trade mark of another party. However, every case must be considered on its own merits.
The position of specialist retailers may be difficult to assess, particularly where the producer’s mark is not prominently applied to the goods. In such cases the average consumer may well perceive the specialist retailer as having more than just the usual retail relationship with the goods.
This does not mean that only manufacturers can register trade marks for goods. The company whose trade mark is used on the goods may be a manufacturer or a producer of those goods, or they may be a retailer selling a third party’s goods, or they may be both the producer/manufacturer and retailer of the goods.
Retailers will not automatically be able to register their trade marks for goods on the basis of distinctiveness acquired through use, if all the evidence submitted shows that the trade mark has been used exclusively in relation to retail in Class 35.
5.13 Domain names
The fact that an Internet address is registered as a domain name and can only be used by one party does not in itself prove that the Internet address is a distinctive trade mark.
However, if the domain name is used on the goods or services, it is likely to constitute trade mark use, and may be sufficient to show that the sign has acquired a distinctive character as a trade mark, subject to the usual considerations.
Where the domain name is used as a retail address then evidence of acquired distinctiveness will be considered in the same way as in relation to ‘Use of a mark as a retail name in relation to goods’.
5.14 Pure colour marks
Evidence filed to support a claim of distinctiveness for a mark consisting of colour per se will need to be very persuasive. It will clearly need to demonstrate that the colour alone (whether or not it has actually been used alone) would serve to designate the goods or services of one particular undertaking. There is more likelihood of establishing distinctiveness through use where the goods or services are very restricted and the relevant market is very specific.
5.15 Evidence from the trade or from a survey
Applicants sometimes submit evidence from others in the same trade attesting to the distinctive character of the trade mark. These statements may come from Chambers of Commerce or other professional associations, but often they come simply from individual traders in the same field. The statements will profess recognition of the brand origin of the mark in question. Such evidence may assist where there is doubt about whether the trade mark has been used to a sufficient extent in the market place in order to have acquired distinctive character in the eyes of a significant proportion of the relevant consumer.
Trade evidence may also assist where the goods or services are highly specialised and the trade itself comprises some or all of the customers for the goods/services concerned.
Trade evidence of this type is less likely to assist where the doubt is not about the extent of the use of the mark, but whether the nature of the use is such as to have educated an average consumer to regard the mark as an indication of trade origin for the goods/services. Where trade evidence is intended to fulfil this function, it will probably only be of assistance where it comes from traders with direct contact with ordinary consumers of the goods/services, who can give evidence of consumers reaction to, and reliance upon, the mark in question in the course of trade. For example, a newsagent might be aware that a range of publications originate from the same publisher, however the end consumer may only recognise the individual magazine title, and not necessarily the same brand origin for the whole range.
In nearly all cases, the answers to the questions “How distinctive is the mark?”, “Do the exhibits suggest that the average consumer is likely to perceive the sign as an indicator of trade origin?” and “Is the use shown indicative of a substantial business under the mark?” will determine whether the case for acquired distinctiveness succeeds or fails.
5.16 Trade experts seeking to speak for the public
Where the goods or services are not specialised, the fact that trade experts (who by definition, are likely to be much more familiar than the general public with the signs used in the trade) regard the applicant’s sign as a trade mark may not be representative of the public at large. However, such evidence may still assist an application to the extent that it establishes that the applicant’s mark is unique in the trade. Further, if the applicant has provided evidence from traders who have direct contact with relevant consumers, appropriate weight should be attached to any relevant experience they can provide, especially if it relates to how consumers react to the trade mark and rely upon it in the course of trade.
5.17 Sworn statements
More weight should be attached to sworn statements than to unsworn statements.
The more objectionable the application is, the more important it will be for at least some of the trade statements to be sworn and it increases their probative value. Nevertheless, evidence in the form of a witness statement is still acceptable, and the Registrar will also take account of unsworn exhibits such as letters, which have been submitted alongside, and in support of, more formal evidence.
5.18 Statements from the trade
Where the person making the statement is a representative of a trade association or the editor of a trade journal, this evidence may be considered at face value. In other cases it should be disclosed how the parties were selected. Such evidence normally includes:
- the status of the person within the trade or service industry (this will assist in estimating the weight to be given to the trade evidence)
- that the person concerned either has no relationship with the applicant, or details what the relationship is;
- the witness knows the specific goods/services traded under the mark
- how long the witness has known of the mark (this must be prior to the application date otherwise it is of no assistance)
- whether the person concerned regards the mark as indicating goods/services originating from a single source, i.e. the applicant
- a statement that the person concerned would regard use of the sign by other traders as likely to cause confusion, and why
- any “first hand” experience the witness has about consumers’ reaction to, and reliance upon, the mark in question in the course of trade
Evidence from any party under the control of the applicant, or in respect of whom the applicant is likely to be able to apply commercial pressure to for supporting statements, should be given little weight. Examples of this may be those who manufacture, distribute or provide the goods or services on the applicant’s behalf (other than independent retailers), or those with a vested interest in securing registration, such as a licensee.
5.19 Survey evidence
Where the applicant submits responses to questionnaires filed as a result of a survey (aimed at either the general public or the trade), the following guidelines should be considered:
- it should be stated how the interviewees have been selected (the survey will carry more weight if they have been selected so as to represent a cross section of the relevant public or trade)
- the ‘relevant public’ is comprised of actual or potential customers of the kind of goods or services in general in respect of which registration is sought - it is not appropriate to restrict the survey only to the class of persons who might purchase only the applicant’s goods/services
- the number of persons issued with questionnaires or otherwise invited to take part in the survey should be disclosed
- the total of those responding should be disclosed and should equal those responses submitted to the Registrar;
- the name of the applicant should not be disclosed in the questionnaire or in the covering letter
- a representation of the sign(s) (if any) shown to interviewees should be included
- the exact answers should be disclosed by providing copies of the actual response sheets
- where the survey is conducted by professional interviewers, the place where the survey was conducted should be disclosed, together with the exact instructions given to interviewers, including any coding instructions if the results were recorded on a computer
Very rarely, survey evidence may show that (contrary to what might be expected from the primary facts) a significant proportion of the relevant consumers do in fact look upon the applicant’s mark as serving a trade mark function. A survey is only likely to be of assistance if it is conducted in accordance with the guidance set out above, and is directed to a matter in respect of which there is room for doubt.
5.20 The questions
Questions must not be leading. For example, “Is this sign regarded as the applicant’s trade mark?” is unacceptable as it is already telling the asked person that the sign in question functions as a trade mark. The questions should be more open, such as “What, if anything, does the sign on this picture signify to you?” It is legitimate to probe those participants that directly or indirectly mention the applicant in order to test the nature of any association using questions like “What would your reaction be if I told you that this is not a product of [the applicant]?”
Questions must not lead the participant into a field of artificial speculation that he or she would not have entered into in a normal shopping experience. Accordingly, the answers to questions such as “Can you think of a company who might make this?” are unlikely to be helpful. Nor are questions which invite the participants to say who they ‘associate’ the sign with. Evidence of superficial “association” with an undertaking may simply reflect that it is the best known user of that type of sign, which may still not be sufficiently concrete to constitute a trade mark connection (DUALIT  RPC 890)].
5.21 Control sample
It will often be helpful to include one or more other marks (fictitious or third party) in the survey to act as a control sample. This can assist in isolating any recognition resulting simply as a result of guesswork, from more a concrete identification.
Particular care is required where the applicant has been the only or best known (perhaps first) supplier of a category of goods/services to the market, and the association is the result of the applicant’s monopoly in the goods/services, rather than because of the use of the sign in question as a trade mark. In such a case, the views of the average consumer, who is considered to be reasonably well informed, observant and circumspect must be established. The “headline” results from a survey will not do this, although the verbatim answers to the questions may assist.
5.23 Timing of survey
Care is needed because a survey will most likely be conducted after the date of application. If the mark has had a long period of use before the date of application, and the survey is conducted reasonably soon after the material date, the perception of the average consumer will probably not differ greatly during that time. However, if the mark has not had much use before application and/or there is much more use and publicity etc after the material date, this could negate the value of a public survey: the public’s perception of the mark will be as a result of education post-application date.
5.24 Surveys which do not meet the requirements
Failure to comply with these requirements does not necessarily mean that the evidence should be given no weight, (although it may do if the defects suggest that the survey has not been conducted fairly). However, it will mean that reduced weight should be given to the outcome of the survey.
In cases where there is big doubt about whether a sign is a distinctive trade mark, it will be particularly important that any survey evidence is valid before it can form the basis for accepting the application. Where the case for acceptance is otherwise more debateable, a technically defective survey may still carry enough weight to justify acceptance, provided that it has been conducted honestly and the defects do not appear to seriously undermine the result.
6. Prior rights based on acquired distinctiveness
6.1 General principles
In the case of a mark which has been accepted on the basis of acquired distinctiveness in the UK, the registrar will not routinely require applicants to again prove that the new mark is distinctive if it incorporates the earlier mark, for the same goods/services.
However, where the earlier mark is an EUIPO mark or an international registration designating the EU, which has proceeded on the basis of acquired distinctiveness, the Registrar is not bound by the EUIPO’s decision and will, in any event, require sight of the evidence of distinctiveness in order to assess what, if any weight should be attached to the decision of the EUIPO.
6.2 Similar marks / similar goods
Where the applicant applies to register a new trade mark which consists of, or contains, a sign which is similar to an already registered trade mark in their name, and for the same or similar goods/services the case will still need to be assessed on its own merits. However, the earlier registration may have some value.
Section 3(1) of the Act makes it clear that a trade mark which is excluded from prima facie registration by section 3(1)(b) - (d), may nevertheless be registered if:-
“…before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it”
This makes it clear that the question of acquired distinctiveness must be determined by reference to the use made of the trade mark. In the TREAT case (1996 RPC 281) Jacob J [as he then was] criticised the registration of the TREAT mark for ‘dessert sauces and syrups’ when the evidence of use filed only showed use of the mark on ‘ice cream toppings’.
The words “acquired a distinctive character as a result of the use made of it” mean the use made of the mark in relation to the goods/services for which it is applied to be registered. In this connection it should be noted that the infringement rights extend to the use of the same or similar marks in respect of similar goods/services, provided that there exists a likelihood of confusion.
6.3 Detailed practice
6.4 New trade mark includes existing registered mark - same goods/services
A later trade mark application which is prima facie objectionable under section 3 of the Act will not normally face an official objection where the trade mark proposed for registration includes:
- an earlier trade mark which is already registered in the UK or an international registration (UK) which is protected in the UK in the applicant’s name and which proceeded on the basis of distinctiveness acquired through use;
- which is registered in respect of ALL the goods/services covered by the later application; PROVIDED THAT the earlier trade mark is not:
(i) de minimis in the later mark;
(ii) included in the later mark in such a way as to take away any distinctive character the earlier mark had when viewed alone.
For example, if an applicant already has a registration of EXETER (for ties) it would be appropriate to accept a subsequent application to register EXETER TIES or EXETER’S TIES (for ties). However, it would not follow that CHOICE COMPUTERS has acquired a distinctive character for computers simply because an applicant had previously established that PC CHOICE has acquired distinctive character for computers through use. Where all of the individual elements in a trade mark are non-distinctive, the distinctive character is to be found in the specific combination of the elements. CHOICE COMPUTERS is not, therefore, a minor variation on PC CHOICE. Nor would it be appropriate to accept an application to register KEEPS YOUR BABY DRY on the basis that the applicant had an existing registration of BABY-DRY. This is because any distinctive character that BABY-DRY possesses is lost when incorporated into the longer phrase.
6.5 Same mark for goods/services which are similar to those listed in the new application
In all cases of acquired distinctiveness, the applicant must file evidence showing use of the mark applied for, before the date of the application, and in relation to the goods/services listed in the application. However, it is recognised that marks which have acquired distinctiveness for one range of goods/services can more quickly become distinctive for similar goods/services.
Accordingly, in assessing whether the evidence filed to support the application under examination is sufficient to show that the mark has acquired distinctive character for the goods/services listed in the application, account may also be taken of any evidence filed in relation to earlier applications, for the same or closely similar trade marks, and for the same or similar goods/services.
It does not follow that a trade mark will automatically be accepted for additional goods/services simply because they are similar to the goods/services for which the mark is already registered. Every case should be decided on its own merits, taking particular account of the strength of the prima facie objection to the latest application.
Where the mark is even less distinctive for the goods or services in the latest application compared to those goods/services for which it is already registered, evidence of acquired distinctiveness filed in respect of the earlier registration will not assist the latest application. For example, an application to register TAX ADVISOR as a trade mark for ‘financial advisory services’ will not be assisted by evidence from an earlier case showing that the mark had become distinctive as a trade mark for ‘periodical publications relating to finance’ - even if these goods are similar to ‘financial advisory services.’
6.6 All relevant evidence to be made available for public inspection
Where the Registrar agrees to take account of evidence from earlier applications/registrations in the applicant’s name, the applicant will be asked to agree (in writing) that the evidence filed on the earlier case be copied and regarded as having been filed on the latest application. This means that the evidence will be made available for public inspection.
7. Partial refusals
It is possible for an objection under section 3(1) of the Act to be relevant to only some of the goods and services listed in an application.
Where the objection relates to only some of the terms claimed in the application the remainder of the specification will be identified as being acceptable by the Registrar, and the applicant can agree to proceed for the acceptable specification and remove the offending terms from the specification. Alternatively the objection may be overcome providing a limitation or exclusion to the specification.
For example, the mark ‘The Red Balloon’ for ‘Toys games, playthings, balloons, soft toys, plush toys, ride on toys, toy vehicles’ would face a partial objection as the mark would not be acceptable for ‘Toys games, playthings, balloons’ but would be acceptable in respect of ‘soft toys, plush toys, ride on toys, toy vehicles’. The objection could be overcome by one of the following:
- Deleting the terms ‘Toys, games, playthings, balloons:
- Adding a limitation ‘Toys, games, playthings; all being electronic, soft toys, plush toys, ride on toys, toy vehicles:
If the applicant fails to respond to the objection, the application will proceed to publication for the goods and services which are acceptable. This is known as a partial refusal. Alternatively, to speed the process up, an applicant can contact the examiner and ask for the application to proceed with only the acceptable terms listed.
8. Routes of appeal
Where a section 3 objection has been maintained by the examiner and the applicant wishes to appeal that decision there are a number of options available.
An applicant can ask for a hearing if they do not agree with any objection raised by the examiner. An applicant cannot, however, request a hearing in relation to the notifications (earlier rights) that have been outlined in the examination report. Hearings are normally held over the telephone and there is no charge for this service. They can also be conducted via video conference, or in person in the Newport office. A hearing officer will be appointed to hear the case and will consider the objections as set out by the examiner and any submissions made by the applicant prior to, and during the hearing itself. They will then reach a decision on whether the objection is to be maintained or waived and will issue a hearing report to communicate their decision.
8.2 Appeals to the Appointed Person
An appeal can be made to the Appointed Person where an applicant disagrees with an objection. The appeal would usually be lodged following a hearing, although it is possible to make a direct appeal following the examination report. In order to make the appeal the applicant must first apply to the Registry for a Statement of Grounds using form TM5. The hearing officer will issue a written decision outlining the legal basis for the rejection of the mark.
Only when there is a Statement of Grounds issued by the office can an appeal be made to the Appointed Person. The decision of the Appointed Person is final and no further appeals can be lodged, it is however a relatively quick and informal process.
8.3 Appeals to the courts
The alternative to appealing to the Appointed Person is to make an application to the courts. This is a more formal and costly approach as counsel must be employed. The first court to hear a case would be the High Court. Any further appeals, on points of law, may be made to the Court of Appeal or the Supreme Court.