• In the UK Office

    Registrability in the UK after Baby-Dry

    In the last issue of Make Your Mark, we discussed the European Court of Justice's decision that the trade mark Baby-Dry (for nappies) did not fall foul of Article 7(1)(c) of the CTM Regulation (equivalent to Section 3(1)(c) of the UK Trade Marks Act 1994) since it did not "consist exclusively (emphasis added) of a sign or indication which may serve in trade to designate the kind, quality, quantity… of the goods/services".

    In that decision, the ECJ did not consider the question of distinctiveness (Article 7(1)(b)/Section 3(1)(b)) or whether the trade mark Baby-Dry was acceptable under that heading for babies' nappies. This omission, as the following two cases heard by the Appointed Person illustrate, has allowed the English authorities to continue to reject marks that, taking into account the criteria set by the ECJ in the Baby-Dry case, might have been viewed as acceptable for registration.

    In the first case, the trade mark was "Cycling IS…" for clothing, footwear and headgear and advertising services, all relating to the cycling industry.

    The application was accepted by the UK Office, but opposed (Consortium of Bicycle Retailers v Halfords) on various grounds including Sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994. The Hearing Officer rejected the application under Section 3(1)(b) on the basis that (i) the sign differed non-distinctively from the expression cycling is; and (ii) the expression cycling is was non-distinctive for the goods and services of interest to the applicant. The Appointed Person (Mr. Hobbs Q.C.) confirmed the rejection in the following terms:

    • The ECJ in the Baby-Dry case did not adopt the position that signs which are not wholly descriptive should, for that reason, be regarded as distinctive and therefore eligible for registration.

    • It is legitimate, when assessing whether a sign is sufficiently distinctive to qualify for registration, to consider whether it can be presumed that independent use of the same sign by different suppliers (of the same or similar goods or services) would be likely to cause the relevant public to believe that the goods or services on offer to them came from the undertaking applying to register the sign.

    • The expression cycling is was not a syntactically unusual juxtaposition of words in the nature of lexical invention. The combination of words did not lack descriptive power, but the description was unfinished. The sign as applied for was not, however, when considered as a whole, caught by the exclusion contained in Section 3(1)(c)/Article 3(1)(c) because it did not consist exclusively of descriptive matter.

    • The case for refusing registration under Section 3(1)(b)/Article 3(1)(b) rested on the proposition that the sign was visually and linguistically meaningful in a way which was more likely than not to relate the goods and services to the activity of cycling without also serving to identify trade origin.

    • The sign would be perceived as pronouncements identifying cycling as the raison d'etre for the marketing of the goods and services claimed. Such a pronouncement (or its particular presentation) could not be regarded as sufficiently striking to function as an indication of origin for the goods or services claimed.

    • The perceptions and recollections the sign would trigger … would be origin neutral (relating to the general commercial context of the relevant trading activities) rather than origin specific. In the second case, the sign at issue was Bags of Style for a variety of goods (referred to generally as "grooming products") in classes 3, 8 and 11. The mark had been rejected by the Office under Sections 3(1)(b) and 3(1)(c) and the applicants (N.A. Clarke and L.A.G. Clarke) appealed to the Appointed Person (Mr. Thorley Q.C.). The Appointed Person maintained the objections and commented as follows:

    • The word style was particularly associated with grooming products.

    • The expression bags of style was not an expression newly coined by the applicants. It had already entered into the vernacular.

    • Bags of style could be commendatory of both the quality of goods and the quality of the person who used those goods.

     

    Comment

    These two cases show that the Baby-Dry case will, almost certainly, make little or no difference to the level set by UK Tribunals (Appointed Person/High Court) when considering whether a sign should be viewed as distinctive and therefore accepted for registration under Section 3(1)(b) of the UK Act. The fact that, from now on, it may well be easier to overcome a Section 3(1)(c) objection will be of little consolation when the application continues to be rejected under Section 3(1)(b).

    The writer has some sympathy with the decision in the "Cycling IS…." case, given that an advertising campaign by a manufacture of cyclist's clothing using the expression "Cycling IS…FUN" would appear to be a normal, legitimate exercise which could be inhibited by a trade mark registration for "Cycling IS…". However, in the writer's view, it is extremely difficult to reconcile the decision in Bags of Style with the ECJ's decision in Baby-Dry. In both cases, the principal objection to the sign would appear to be that it could be used in a common expression which referred to the goods of interest, for example "These nappies keep your baby dry" or "Use this hair gel and you'll have bags of style". This did not prevent the acceptance of Baby-Dry under Article 3(1)(c), however, and it should not have adversely affected the acceptance of Bags of Style under Section 3(1)(c). A sign, such as Bags of Style, may have certain laudatory connotations and it may therefore form part of the usual marketing lexicon for the advertisement of products (although even this is doubted for this particular expression), however, its use as a brand for the products themselves is, in the writer's view, highly unusual and clearly distinctive, much more so than Baby-Dry in fact. It is believed that the Bags of Style case was incorrectly decided.