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No CLUBCARD Points For Tesco

Readers may be interested to learn that Tesco has failed in its attempt to register the word mark CLUBCARD and the following logo as UK trade marks, for goods and services relating to loyalty schemes.

The first instance Hearing Officer and the Appointed Person (who heard Tesco's appeal) found both marks to be inherently non-distinctive. They did nothing more than describe a card for claiming benefits under a loyalty scheme and did not enable an average consumer to distinguish the loyalty scheme of Tesco from that of other traders.

Further, despite evidence showing that Tesco had made extensive use of the marks in trade (especially the logo mark), mere extensive use did not prove that the marks had come to be seen by average consumers as designating only loyalty schemes operated by Tesco. The marks were always used in conjunction with the distinctive mark TESCO and it was this mark that consumers would see as indicating the origin of the goods and services in issue, with the sign CLUBCARD merely acting as a descriptor.

The case highlights how difficult it can be to obtain registered trade mark protection in the UK for these types of marks, albeit it is somewhat surprising that Tesco was not able to obtain a registered trade mark for its logo mark. If an average consumer saw the logo (or something similar) used to promote another trader's loyalty scheme, they might well think the scheme was linked in some way with Tesco's Clubcard loyalty scheme, due to the extensive use that Tesco has made of its logo mark since 1995 and the fact that there are over 15 million members of its loyalty scheme.