England: Brands Bulletin - December 2012
This monthly bulletin from Ashfords' IP Team is a great summary of recent international Intellectual Property law changes and updates. The Intellectual Property Practice Group have members across the globe who will be happy to hear from you if you have an IP query. Their details can be found on the Practice Group page of our website.
NOW just be careful…
UK and Community trade law provides that you cannot register as a trade mark any mark that is devoid of any distinctive character, or that consists exclusively of signs or indications that may serve, in trade, to designate a characteristic of the goods/services for which you want to register the mark.
In layman's terms, what this means is that if your mark merely alludes to a characteristic of the goods/services in question, then you can possibly register your mark. However, if the average consumer of the goods/services in question would see the mark as a mere description of a characteristic of the goods/services, then you cannot.
If you speak to a number of informed trade mark practitioners, they will probably tell you that, in their considered opinion, it is usually easier to register borderline descriptive marks as Community trade marks (CTMs), rather than UK registered trade marks. As a consequence, many brand owners look to obtain CTMs, rather than UK registered trade marks.
That is all very well and good - but what happens when you want to enforce your (rather weak) registered CTM against a belligerent defendant, who you end up having to sue for registered trade mark infringement before the English courts?
The recent case of Starbucks (HK) Limited and Ors v British Sky Broadcasting Group Plc and Ors  EWPCC 3074 (Ch) highlights the dangers very clearly. In this case, the first claimant had registered as a CTM a figurative mark comprising the word "now" in lower-case letters, with six fine lines arranged in a star or sun shape emanating from the central letter "o". The CTM covered many goods and services, including internet protocol television services. The defendants launched an internet protocol television service, under the signs "NOW TV", "NOWTV.com" and a further stylised sign incorporating the words "NOW TV Powered by Sky". As a consequence, the claimants sued the defendants for registered trade mark infringement and passing off. The defendants counterclaimed for a declaration that the CTM was invalid, on the basis that the mark was devoid of any distinctive character, or consisted exclusively of a sign or indication that may serve, in trade, to designate a characteristic of the services.
The judge hearing the case held that the CTM was invalid, in relation to the services in issue, because the mark was devoid of distinctive character. Furthermore, the word "now" would be "understood by the average consumer as a description of a characteristic of the service, namely the instant, immediate nature of the service. The figurative elements of the [mark] do not affect this conclusion."
"It appears to me that the [claimant] only succeeded in obtaining registration of the CTM because it included figurative elements. Yet [the claimant] is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place."
The judgement is a clear warning that, if you look to enforce weak marks before the Courts in this country, then you may end up with your mark declared invalid, a very large costs bill and the defendant not being prevented from doing what it wishes to do. Overall, not exactly what a brand owner wants to hear. The irony is that all of this could have been avoided if the trade mark owner had chosen a much more distinctive and less descriptive mark in the first place. That is why invented words like DIAGEO and BRITVIC often make the best type of trade mark, as they are both inherently distinctive, and unlikely to have been used or registered by others in the past.
If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners.
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