A UK trade mark registration for the mark SWEET FEET (for "foot and shoe deodorant") has recently been revoked on the basis that the mark was not put to genuine use in the UK for a period of 5 years and there were no proper reasons for the non-use.
The registered proprietor of the mark claimed that it had made genuine use of the mark and submitted evidence allegedly showing that the mark had been used on samples of foot deodorant for test marketing and evaluation, and that SWEET FEET products had been published in the Chemist & Druggist Price List since 1997. However, no evidence of actual sales was submitted.
Applying the principles of law set down by the European Court of Justice in the Ansul v. Ajax and La Mer v. Laboratories cases, the Hearing Officer deciding the case held that, whilst there was "nothing fake or sham" about the evidence of the registered proprietor's activities in relation to the mark SWEET FEET, and that he had no reason to believe or infer that these activities were conducted merely to preserve the registration, he did not believe that the activities were "suffice to create a market share in the relevant goods given the characteristic of the market (which is for a relatively ordinary consumer product) and the scale and frequency of the registered proprietor's use".
The evidence did not show that any actual sales took place, or that any active marketing campaigns had been conducted in respect of goods sold under the mark. The limited use made by the registered proprietor of the mark did not have any real impact in the market for the goods.
The Hearing Officer stated that the use made of the mark had to be either to maintain or create a share in the market for the goods for which the mark was registered. This had not happened in this case and as a consequence he declared that the registration for the mark was to be revoked.
MASTERCARD FAILS CREDIT TEST
Based on its ownership of the famous MASTERCARD trade mark, Mastercard International Inc failed to prevent the registration of the word mark CREDIT MASTER as a UK trade mark for a variety of goods and services, including financial and banking services for businesses and financial risk management services.
Mastercard subsequently appealed the first instance decision, but limited its appeal to claiming that registration of the mark CREDIT MASTER would be contrary to section 5(3) of the Trade Marks Act 1994 (the "TMA"). This provides that a mark which is identical with or similar to an earlier trade mark should not be registered if the earlier trade mark has a reputation in the United Kingdom and the use of the latter mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The judge hearing the appeal upheld the decision of the Hearing Officer and rejected the appeal. In particular, he held that the law as promulgated by the European Court of Justice makes it clear that, in order to succeed in an opposition based on section 5(3) of the TMA, an opponent has to prove that there is a real, as opposed to a theoretical, possibility of detriment or unfair advantage arising. This was the test the Hearing Officer applied to the facts of the case and, after doing so, he concluded that were no proper grounds for a successful appeal.
DESCRIPTIVE MARKS AND SLOGANS FAIL AGAIN
The UK Trade Marks Registry has rejected an application to register the word mark MAX STRENGTH as a UK trade mark, for goods including pharmaceutical preparations and substances.
The Hearing Officer deciding the case held that the mark was prima facie devoid of any distinctive character and thus could not be registered. In particular, she held that the average consumer of pharmaceutical goods would not consider the words MAX STRENGTH to denote the trade origin of the goods, but instead as an indication of the strength of the products concerned, bearing in mind the nature of the goods.
In addition, she held that the mark had not acquired a distinctive character through use. There was nothing in the evidence as filed to support a finding that the words MAX STRENGTH had been used in a "distinctive manner as a trade mark or promoted as one." In fact, the evidence as filed seemed to show that the applicant had used the words MAX STRENGTH in their descriptive sense only (i.e. so as to indicate that the product was the "maximum strength" available), rather than to distinguish the applicant's goods from those of other traders.
Other cases that have been decided recently on the issue of whether a mark is not capable of being registered because it does not have distinctive character include the following:
- DUOFRESH (for air freshening preparations) – held to be capable of indicating a product originating from one particular undertaking and therefore as having "distinctive character".
- TELEPHARMACY SOLUTIONS (for patient consulting services) – held to designate an essential characteristic of the goods covered by the application for registration and thus was refused registration.
- ZURICH PRIVATE BANKING (for services relating to financial affairs) – held not to be likely to be perceived as an indication of trade origin, but as an indication of the geographical origin of the services concerned. As a result, the mark was held to be excluded from registration for lack of distinctive character.
- HOME PROTECT (for insurance services) – held to be a "sufficiently unusual collocation of noun and verb", such as not to be devoid of distinctive character. The Registry felt that the mark was capable of serving as a badge of trade origin and was not a descriptive sign that needed to be kept free for other traders to use. The mark was held to create "an impression which is sufficiently far removed from that produced by the mere combination of meanings contained in the elements of which it is composed", and thus escaped objection on the ground that the mark was devoid of distinctive character.
An application to register the words WHERE PEOPLE MEET PEOPLE MEET PEOPLE as a UK trade mark, for services such as hotel, bar and catering services, has failed on the basis that the mark consists of a non-distinctive slogan.
The Hearing Officer deciding the case felt that the slogan would not be perceived by a relevant consumer of such services as a trade mark without first educating the public that it is a trade mark. He applied the settled principle of law that the test for registering slogans is no different from any other type of mark. However, as he pointed out, unlike words, logos and signs, slogans are often used for advertising purposes, and as a consequence the relevant public may not so readily accept a slogan "as a trade mark" (i.e. as individualising the services in respect of which the slogan is used as belonging to one undertaking and one undertaking only).
In the Hearing Officer's opinion, a significant proportion of the relevant public were likely to perceive the words as a slogan "indicating that the premises where it is displayed are suitable for meeting other people", and would not see it as a trade mark indicating the services of just one undertaking (i.e. the commercial origin of the services).
In another slogan case, the UK Trade Marks Registry has also rejected an application to register the words FOREVER A TEAM for a wide range of goods and services, including clothing, games and entertainment services.
The Hearing Officer concluded that the mark was devoid of any distinctive character because the mark sent a message that could apply to any undertaking's goods or services, and thus was not capable of individualising the goods or services of one undertaking.
In his view, the mark "would be perceived merely as a motivational or promotional statement by the relevant customer". A relevant customer "would not place any trade mark significance" on the mark. In the absence of prior knowledge, they would not perceive it in a manner other than in its promotional sense. As a consequence, he held that the mark had to be refused registration.
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