Perils of a Weak Mark in Just Employment

Descriptive brands cost more to protect, and are typically harder to enforce. An English law firm learned this lesson the hard way recently, in Francis Geoffrey Bignell t/a Just Employment (a Firm) v Just Employment Law Ltd. [2007] EWHC 2203 (Ch).

The judgment is a salutary reminder of the importance of choosing a strong brand at the outset. As the decision makes clear, marks that convey a double-meaning are not necessarily as strong as one might think, and a multidimensional play on words is not likely to be registrable if one possible meaning is descriptive.

Just Starting Out

The claimant, Mr Bignell, was an English employment law specialist based in the town of Guildford. He founded his local practice in 1997 under the name JUST EMPLOYMENT. He chose it because of its dual connotations, denoting both that his practice focused on employment law, and that employment should be fair.

Mr Bignell’s practice was modest, consisting only of him and an assistant solicitor, and was limited to Guildford and the surrounding area. He spoke and wrote on employment law issues and enjoyed a reasonably high local profile and a good reputation. He typically advised employees rather than employers.

In 1999, Mr Bignell applied for, and was later granted, a U.K. trade mark registration for the word mark JUST EMPLOYMENT for inter alia legal services relating to employment matters.

The defendant, Just Employment Law Ltd. (“JEL”), was a Glasgow-based Scottish company incorporated in 2004. It offered employment law advice and representation, primarily to employers, on a fixed-fee annual retainer basis. Although larger than Mr Bignell’s practice, it was still comparatively modest and its activities were mainly limited to Glasgow and the surrounding area.

Mr Bignell became aware of JEL in 2005 through an Internet search, but it was not until the following year that the first hint of a conflict emerged. That year, in November 2006, JEL ran a short radio campaign broadcast in the London area promoting its Glasgow-based business in employment law representation. The advertisement ended with the statement, “For a fixed annual fee, your business can retain our team of experts for unlimited advice, 24 hours a day, for all your employment law needs. Budget with certainty; call us on 020 7 890 3167. Just Employment Law, employment law specialists.”

The telephone number in the ad text was a London number, but in evidence JEL clarified that its Glasgow number had been given in the actual ad.

Shortly after the advertisement aired, Mr Bignell received at least 6 enquiries from individuals seeking to contact JEL. Other minor instances of confusion also arose, when a marketing company invoiced Mr Bignell for services it had provided to JEL, and a broker contacted Mr Bignell in an effort to put his client in touch with JEL.

Just a Shade Too Close

Based on these instances of confusion, Mr Bignell sued JEL for trade mark infringement and passing off. JEL denied passing itself off as Mr Bignell’s practice and counterclaimed that the registration was invalid because the mark was descriptive.

Just Not Good Enough

Mr Bignell’s action did not prosper. The High Court upheld the counterclaim for invalidity on the basis that the average consumer would understand the words JUST EMPLOYMENT as denoting that the legal services provided related only to employment law. The mere fact that “just” had a double-meaning in respect of “employment” was not sufficient to confer registrability, since in line with the ECJ’s judgment in DOUBLEMINT (Case C-191/01 P), multiple meanings did not avoid a finding of descriptiveness if at least one of those meanings was descriptive.

The registration might have survived and JEL’s activities been squashed had the judge been satisfied that JUST EMPLOYMENT had acquired distinctiveness as a result of the use made of it by Mr Bignell. However, Mr Bignell failed on this point as well. The judge held that since a U.K. registration extended to the whole of the U.K., acquired distinctiveness had to be assessed on a national basis.

The judge drew support from the ECJ’s decision in Bovemij Verzekeringen NV v Benelux-Merkenbureau [2006] ECR I-7605 (see Make Your Mark Autumn 2007), in which the ECJ confirmed that acquired distinctiveness must be proved throughout the part of a member state in which an objection applied. This position has since been bolstered by the more recent decision in Alfredo Nieto Nuño v Leonci Monlleó Franquet (Case C-328/06), on the meaning of “reputation in a member state” (see “Geography 101: Surveying Reputation in an Expanding E.U.” in this issue.

Even if JUST EMPLOYMENT were understood as denoting Mr Bignell’s business in and around Guildford, the mark would be understood descriptively throughout the U.K., and Mr Bignell’s mark had not come to denote his business to a significant proportion of consumers of employment law services throughout the country. No evidence of market share was provided, but it was clear that Mr Bignell’s business was small and there was no independent evidence that it was known outside of Guildford.

The judge found that the mark was descriptive throughout the U.K., had not acquired distinctiveness for the whole territory, and was therefore invalid.

On the passing off claim, the judge acknowledged that goodwill could be local, and Mr Bignell’s goodwill was held to be very local indeed, extending no further than Guildford and its surrounding area.

The judge was not, however, persuaded that JEL had misrepresented itself as Mr Bignell’s firm or somehow connected to it. The words comprising both practices’ names were descriptive and it was not surprising that some minor instances of confusion had arisen from the radio advertisement given the parties’ common field of activity. Even that confusion could not be attributed to individuals thinking that JEL was Mr Bignell, but rather to an assumption that Mr Bignell was JEL.

The judge considered that no damage had arisen from the minor instances of confusion and was satisfied on the evidence that JEL did not intend to run any similar advertising campaigns in the future. The passing off claim was therefore denied, although the judge was careful to note that a future action might yield a different outcome if either party changed or extended its activities, or if JEL were to re-run its radio advertisement.

Comment

Mr Bignell failed in his attempt to force JEL to change its name, and in the process lost his trade mark registration.

In truth, Mr Bignell’s registration was not worth much. Registrations for descriptive marks may ward off competitors just by their presence on the register, but if competitors ever push back, enforcement is likely to be so hemmed about with risk as to be simply not worthwhile. Competitors may beat back enforcement actions with counterclaims for invalidity, and the cost of trying to rescue the rights by proving post-registration acquired distinctiveness can be high, and the prospects dim.

Had Mr Bignell registered his mark in a logo form or with other distinctive matter, he may have retained his rights. This would, however, have been a double-edged sword, for any potential claims based on the words JUST EMPLOYMENT would have been weakened by the presence of other matter. Nonetheless, some such matter may at least have allowed him to retain rights that could, in principle, be asserted against others without the fear of a retaliatory invalidity claim. For Mr Bignell, this would have been an improvement.

The judge’s views on the registrability of marks with a double meaning accord with recent ECJ jurisprudence. If even one potential meaning is descriptive, the mark will not be registrable. This mechanical approach is a continuing disappointment to those investing substantial sums in creating brands that play on words and meanings relevant to a product or service. The inherent appeal and memorability of such brands often resides in their ability to communicate more than one message, and there is no doubt, for the average consumer at least, that multidimensional meanings can create a distinctive mark. Unfortunately, the mechanical DOUBLEMINT approach takes no account of distinctiveness arising from layers of meaning, and is likely to remain the law across the E.U. for some time to come.

It is interesting to note that the UKIPO’s published manual of practice approves “JUST” marks as registrable where combined with the name of goods or services and denoting specialism in them. This practice appears to conflict with the English court’s approach in JUST EMPLOYMENT and the ECJ’s ruling in DOUBLEMINT, and may well have to be changed.

For businesses just starting out, the lesson from Mr Bignell’s experience is clear: choose a strong brand at the outset that does not describe the business’ intended activities. The investment in creativity will be repaid many times over by the expense avoided in pursuing, and potentially losing, rights in marks that are not enforceable.