UK: Trade Marks: Distinctiveness – Distinctly Necessary To Succeed?

Last Updated: 11 June 2018
Article by Cara McGlynn

Recent weeks have seen the rejection of two trade mark applications, at EU and UK level, on the basis that they were just not distinctive enough. So what does it take to make a trade mark distinctive and why does incorporating a logo or unusual font not always provide the ticket to clearance?

Rejection of application

On 20 May 2016, German company Item Industrietechnik GmbH ('Item') applied to register the figurative EU trade mark, "Efuse", ?at the EU Intellectual Property Office ('EUIPO').

They sought registration in Class 7 for goods such as, electric generators, motors and engines and in Class 9 for goods such as apparatus and instruments for conducting, switching... and controlling electricity. The EUIPO examiner rejected the application in Class 7 and for such goods in Class 9 on the basis that the mark would be understood as meaning "electric fuse" and therefore was descriptive of the goods covered. Additionally, the examiner decided that the graphic design lacked distinctive character. On appeal this decision was upheld by the Fourth Board of Appeal.

Item, however, did not give up and appealed to the Court of Justice of the EU ('CJEU') arguing that "Efuse" did not refer to an essential characteristic of the goods and that the Board had not fully taken into account the figurative design, including the italicized characters and the spacing between the horizontal bars which they said gave a "dynamic, futuristic effect".

Appeal decision

The CJEU confirmed the decision of the examiner and the Board of Appeal on the basis of Article 7 (1)(c) of the now EU Regulation 2017/1001 (the "Regulation"). It held that it was irrelevant whether the characteristics of the goods alluded to by the mark were essential and that it was enough that the mark suggested any characteristics of the goods. Additionally, the use of typeface as a graphical element was commonplace and did not "divert attention from the descriptive message". The CJEU therefore upheld the previous decision and the application was finally rejected.

The sign designated the characteristics of the goods and would prevent other businesses freely using it for their own products, thus effectively giving Item a monopoly over an everyday descriptive term. Additionally, the fact that this was a logo of sorts/stylised words did not save the day as it did not do enough to make the sign stand out. Had Item already been well known and associated with this mark, and the goods concerned, they may well have had more success with their application based on arguments of acquired distinctiveness.

A UK example

In contrast, where there is a previous, well-known and distinctive registered word mark, merely adding in a logo to a new 3rd party application will not necessarily be enough to gain registration.

The UKIPO faced similar considerations when International Group Management Limited (IGML) applied to register the following "eSports Premier League" figurative marks in Class 41 for "Organisation and regulation of video gaming competitions, none relating to association football." Even with this exclusion, the Football Association Premier League Limited ("the Premier League") successfully opposed these applications on the basis of its five earlier trade marks (UK2147888, UK314884, EU3784089, EU5153077 and EU12039251) and the acquired reputation in them.

The UKIPO examiner concluded that the exclusion of 'association football' was not enough to prevent confusion and that the use of the words Premier League would cause the average customer to believe there was an association between the Premier League and IGML. Additionally, neither the suffix of "eSports", nor the "spinning wheel" device element of the prospective marks, would be sufficient to prevent confusion and for the marks to be considered distinctive.

So instead of scoring an own goal, what should applicants consider to make a mark distinctive?

To ensure that a uniform approach is taken towards descriptive, figurative trade marks, the EUIPO has "Common Practice" guidelines as to when the threshold of distinctiveness will not be met and what will make a mark distinctive. Important aspects to take into consideration are; the typeface used, colour combinations and the positioning of any word elements. Therefore utilising black letters, in Times New Roman, font for a word positioned horizontally, is unlikely to be considered distinctive enough – unless the word used is itself not descriptive.

The 'take away' is that a logo or device mark which incorporates a descriptive word or words should give an overall impression which is significantly different from the common way in which the word(s) would ordinarily be portrayed. The logo should therefore lead you to focus on the figurative representation itself as opposed to the descriptive message conveyed by the word(s).

The whole point of a brand is to make your business stand out from all the others so that it is uniquely associated with the products and services it offers. If your trade mark merely describes what you offer, how will customers know the difference between you and your competitors? Distinctive marks not only have better chance of being registered, they have a better chance of becoming well known.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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