Regular readers of the BrandsNoise publication will be aware of the difficulties faced by businesses trying to register what some call ‘non-traditional’ marks as UK registered trade marks. A recent appeal by Tefal serves to highlight the same.
Tefal sought to register the following as a UK registered trade mark:
The mark consisted of “a plain red dot affixed centrally to the bottom of a cooking receptacle”. Registration was sought for “Frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks” in Class 21.
The UKIPO held the mark lacked inherent distinctiveness (and was accordingly caught by the
exclusion from registration contained in s. 3(1)(b) of the Trade Marks Act 1994). It would not be seen and regarded ‘as a trade mark’ by average consumers of the goods, without first educating them to see and regard the mark in that way.
Furthermore, the evidence filed did not prove that a significant proportion of average consumers of the goods in question perceived them as originating from a particular undertaking because of the mark, as opposed to any other mark which might also be present, for example, the brand name ‘TEFAL’ displayed on the packaging for the goods. It is not sufficient for the evidence to prove that a significant proportion of average consumers of the goods in question ‘recognise’ the mark and ‘associate it’ with the applicant. The evidence must go beyond that and show that, as a result of the use made of the mark in trade, such average consumers ‘perceive’ the goods designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular trade source.
The Appointed Person hearing the appeal dismissed it and upheld the UKIPO’s first instance decision. He concluded that no error of principle had been made. It was open to the Hearing Officer, on the evidence and materials before him, to come to the conclusions he did for the reasons he gave.
It remains the case that, whilst registration of these types of ‘non-traditional’ trade marks is, in theory, possible, in practice they are very difficult (if not almost impossible) to register. Indeed, in another recent decision, the UKIPO refused the registration of a visual representation of a clock face adorned with precious stones. The UKIPO held that, when applied to goods such as watches, the mark would be perceived as a non-distinctive representation of the goods themselves, with the precious stones being regarded as a mere decorative feature. Therefore, the mark would not function inherently as a ‘badge of origin’, guaranteeing and indicating the commercial source of the goods. Moreover, the evidence filed did not prove that average consumers had been educated to ‘perceive’ the mark ‘as a trade mark’, indicating the trade origin of goods bearing the mark.
Thus, unless traders can convince the UKIPO and the Courts that consumers have come to rely on the mark to indicate the trade origin of the goods (rather than a brand name or logo under which the goods are sold) registration remains unattainable.
For more information please contact Carl Steele.
