• In The UK Office

    In Trade Mark Use, Consistency Matters

    What happens when a U.K. trade mark application is accepted based on acquired distinctiveness, but is then opposed on the grounds that it is not, in fact, distinctive, owing in part to inconsistent use of the mark by the applicant? This issue was examined recently by the U.K. Patent Office in an opposition to the trade mark NEW REG of New Reg Ltd.

     

    New Reg Granted

    New Reg’s business was in the transfer of vehicle registration plates from one vehicle to another. It had persuaded the Patent Office to accept NEW REG for registration on the grounds that the mark had acquired distinctiveness through use in respect of vehicle number plates and related retail services.

    The opponent disagreed, and in an opposition argued that the term “NEW REG” was used and understood descriptively in respect of the trade in personal vehicle registration plates. New Reg’s use did not change that common understanding of the phrase. As a result, the opponent argued, the mark should be refused as descriptive under S. 3 (1) (c) of the Trade Marks Act 1994.

    The hearing officer accepted that there had been long-standing use of the abbreviation “reg” for “registration.”

    This term was relevant to the goods and services claimed, and, following the ECJ in DOUBLEMINT (Case C-191/01 P), it did not, therefore, matter whether the term could also be an abbreviation for other, less relevant words. Once it had been accepted that “reg” was an abbreviation for “registration,” it became clear that there was nothing unusual or distinctive about the combination NEW REG in respect of a business in vehicle registration plates. Citing the ECJ in BIOMILD (Case C-265/00), the hearing officer found that the mark as a whole was no greater than the sum of its parts.

    The hearing officer noted that much of the evidence showed use of “new reg” to refer not to new registration plates, but rather to new cars. However, use of the term to represent new cars placed the words in a commercial context closely related to vehicle registration plates, which would reinforce the use of the words in relation to those goods and retail services related to them. Accordingly, (and following a recent Patent Office decision on FOURNEAUX DE FRANCE), such closely associated use also represented common descriptive use of the mark in the context of the claimed goods and services.

    The hearing officer concluded that NEW REG was both descriptive and non-distinctive. Had the examiner been right to accept the mark notwithstanding this, based on acquired distinctiveness?

    New Reg Denied

    In this regard, the hearing officer noted that New Reg’s trade under NEW REG had been significant and showed steady expansion. However, the issue was not whether there had been substantial business under the mark, but rather how the average consumer would see the term NEW REG and the impact it would have on them. This was not helped by the fact that the applicant had itself used the mark in an inconsistent manner, both descriptively and non-descriptively, and also as a play on words.

    Ultimately, the hearing officer was not satisfied that this inconsistent use allowed him to find that the average consumer understood NEW REG as a trade mark. He held that the use made of the mark had not been sufficient to overcome the objections, and rejected the application.

     

    Comment

    This case illustrates the difficulties faced by applicants who use, and seek to register, descriptive marks.

    Even if an applicant has used a descriptive mark consistently as a trade mark, the defence provisions of the Trade Marks Act make it impossible to prevent third parties from using the same words descriptively. This can only dilute the goodwill attaching to the applicant’s mark and weaken its claim to have an exclusively “trade mark” meaning to the average consumer. Such a mark is likely to have tenuous chances at best if registration is sought.

    In the current case, the applicant’s task was made yet more difficult by the fact that he had not used the mark consistently.

    As a general rule, businesses should seek to adopt strong and distinctive marks from the outset. In practice, that does not always happen, however, and the availability of registration on the basis of acquired distinctiveness recognises that some marks that begin their lives as inherently unregistrable can become registrable through use that leads consumers to perceive them as trade marks.

    In respect of any marks that lend themselves to descriptive use, however, the importance of ensuring consistent, “trade mark” use by all permitted users, including marketing departments and licensees, cannot be emphasised enough. Failure to ensure consistency and proper trade mark use can lead to an inability to protect a brand to which a business is already committed.

    Controlling third-party use will always be a challenge. Brand owners may meet with less sympathy, however, where they do not manage to control their own.