• In the UK Office

    PC Unclear

    The applicant, The Silver Spring Mineral Water Company, applied to register the trade mark PC Clear in relation to non-alcoholic beverages. The application was opposed under Section 5(2)(b) of the Trade Marks Act 1994 by Loblaw Companies on the basis of their earlier UK trade mark registration for PC (stylised) covering identical goods.

    The Hearing Officer rejected the opposition as follows:

    • The opponent's mark was highly stylised to an extent that it was far from certain that consumers would identify the letters PC in the mark. Even if it were accepted that the majority of consumers would consider the opponent's mark to be the letters PC, it was not accepted that the average consumer, when viewing the letters PC printed in block letters, would associate the product as one supplied by the opponent.

    • The public would not automatically see the word Clear as a descriptor and not as part of the trade mark. Even if the word Clear were viewed as a descriptor, however, the marks were not visually similar. The stylisation of the opponent's mark was likely to be fixed in the average consumer's mind.

    • The marks were not phonetically similar, even if the opponent's mark were viewed (phonetically) as PC. Neither mark had any conceptual meaning in relation to the goods.

    • The average consumer of non-alcoholic beverages would exercise some care in their selection.

    • If use of a trade mark in ordinary letters did not constitute use of a stylised trade mark (see the Budweiser decision reported at p.28 of this issue), then conversely use of a stylised trade mark did not constitute use of a trade mark registered in ordinary letters.

     

     

    Comment

     

    It is submitted that this decision is incorrect and contains an assumption with regard to the use of trade marks that, it is hoped, is not widely held by other decision makers. In the writer's view,

    • The opponent's mark could be viewed as an 8C logo but is much more likely to be seen as a stylised form of PC.

    • If an application is made for a mark in ordinary capital letters, then the normal and fair use of that mark should include use in a variety of stylised forms. A stylised form of PC Clear that was at least similar to the form of the opponent's mark should therefore have been assumed when comparing the two marks.

    • The word clear is obviously non-distinctive in relation to the goods claimed. A PC Clear drink would, without doubt, be seen as simply a line extension of an earlier PC drink.

    • The earlier and later marks should therefore be viewed as visually and phonetically similar.

     

    Turning to the comments made by the Hearing Officer on the use of trade marks, it is accepted that, in certain circumstances, the use of a mark in capital letters would not constitute use of the same mark (for the purposes of Section 46 of the Act) registered in a stylised form (e.g. Bud (capitals) vs. Bud (stylised)). Even this should not be seen as a general rule, however, because if the stylisation of the registered mark is minimal, the use of the same mark in capital letters could constitute use of a trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (Section 46(2) of the 1994 Act).

    As far as the converse situation is concerned, however, it must be wrong that the use of a stylised form of a mark does not constitute use (under Section 46) of the same mark registered in capital letters, unless the stylised form is so extreme that it becomes essentially unrecognisable. It is believed that this is (and has been) one of the basic tenets of UK trade mark law and practice, since a UK trade mark register was first established. If this is not the case, then trade mark owners will in future, have to file far more applications to protect variations in the form of the word mark actually used, instead of relying on a single registration (for the word mark in capital letters) which protects most stylised forms of the mark and remains valid and enforceable on the basis of the use made of the mark in various stylised forms. Such a sea change in practice might be good news for the UK Office and for private practitioners, given the increase in filings that would certainly occur, but it would be contrary to the interests of trade mark owners.