Recent cases illustrate the difficulties corporations face when trying to register descriptive trade marks in the EU.
In our increasingly brand-dominated world the value in developing a brand which is synonymous with both the brand owner and the brand owner’s products leads many corporations to test the boundaries. Falling the right side of the line is possible. In particular, two recent cases highlight the need for a carefully planned advertising campaign and tight control over public use of a descriptive sign prior to applying for registration.
EU and national law prevents the registration of exclusively descriptive terms: Descriptors should be free to use by all. However, there is a caveat. If a descriptive sign is used so that the public associate it exclusively with the brand owner then the sign can be registered as a trade mark on the basis of this ‘acquired distinctiveness’.
The high water mark in EU jurisprudence was the case of BABY-DRY (Case C383/99). There the Court of Justice of the European Union held that the “syntactically unusual juxtaposition” of the descriptive words in the sign (for babies’ nappies) lifted the sign out of descriptiveness.
A significant line of cases followed BABY-DRY where the courts and registries effectively pulled back from the BABY-DRY position. The net result is that a mark which comprises two descriptive words will be assessed as a whole but if it still adds up to a descriptive total then it will not be registerable. The overall impression given by the mark must be something more, there must be a “perceptible difference between the mark and the sum of its parts”. Postkantoor C-363/99.
A similar sentiment underlies developments on the registration of slogans. In the same way as for a descriptive mark which falls just the right side of registerability, a memorable slogan can have great value. For slogans too, something is required to lift the phrase out of descriptiveness and into trade mark territory. This quality has been described as “imaginativeness” or “a measure of interpretation on the part of the public… a certain originality and resonance which makes it easy to remember”. Vorsprung durch Technik C-398/08.
Where the boundary lies exactly is not easy to predict but it is clear that to register a descriptive mark or a slogan there must be a degree of inventiveness which lifts the sign out of banality and into the realms of originality, causing the consumer to pause and think. A play on words or a clever or unusual juxtaposition of descriptive terms can do just that; provided it is inventive enough.
Clubcard and Blond
In two recent cases before the UK Trade Mark Registry applicants have been unable to overcome these hurdles.
The supermarket chain Tesco applied to register CLUBCARD as a word mark in simple and (slightly) stylised form, including for customer loyalty schemes:
Despite being able to point to extensive use, with over 15 million Clubcard users, Tesco could not overcome the inherent descriptiveness of the sign. Clubcard (Cases 0-450-13 and 0-451-13, December 16 2013.
The combination of the two descriptive words did not have that elusive “inventiveness” required, and the slight stylisation was too slight to be noticed by the average consumer.
Nor had the sign acquired distinctiveness through use. Tesco had used the Clubcard sign extensively in marketing literature. However, it was most often in conjunction with the famous TESCO trade mark or “every little helps” slogan. What evidence there was of use of CLUBCARD on its own, without these dominant strong marks, was directed at Tesco’s existing customer base. This is the classic problem of a ‘limping’ trade mark, one which is used with stronger marks so that it is not recognised by consumers as a trade mark itself indicating trade origin.
Sonafi faced similar issues in trying to register BLOND for confectionary and chocolate. Blond Case O/024/15. The application was initially rejected on the basis that it described the goods i.e. confectionary products which are blond in colour.
The applicant narrowed its specification to just chocolate and argued that “blond” was used to describe hair colour and was a fanciful term to use for chocolate. The term was not naturally or normally descriptive of chocolate. Essentially, using BLOND in this way gave the sign that inventiveness or resonance required to overcome its potentially descriptive meaning. The Hearing Officer did not agree and the sign was not registerable for descriptiveness.
Unfortunately for Sonafi, the way its own BLOND chocolate product (sold by Valrhona) was publically referred to was unhelpful. The examiner pointed to Internet articles referencing Sonafi’s product as “World’s first BLOND chocolate offered by Valrhona” and “blond chocolate, as distinct from white, milk or dark..[p]roduced by French chocolate maker Valrhona”, pointing out that this was not trade mark ‘use’ but was, instead, descriptive use of BLOND.
There are lessons to be learned from the above cases. Where a sign is potentially descriptive, like BLOND for chocolate, but is not commonly used in that way then it may have the requisite inventiveness so that it can be registered. However, that application to register should be made quickly, otherwise it may become a term used descriptively simply by virtue of the brand owner’s own product.
On the other hand, if a sign is descriptive then it is going to be necessary to build it up as a trade mark. Advertising is going to be key to educating the public that the sign is an indicator of trade origin. The lessons from Tesco’s are that “mere substantial use” is not going to be enough to do this. The sign will have to be used alone, without stronger distinctive marks and used outside of the existing customer base.
A classic response to a failed registration of a descriptive sign is to stylise the sign and register the stylised version. However, the English Courts have been extremely critical of this where the brand owner then seeks to enforce against traders using the descriptive term without the stylisation: – “Trade mark registries should be astute to this consequence of registering descriptive marks under the figurative figleaf of distinctiveness and refuse registration of such marks in the first place”. Now TV  EWHC 3074
Brand owners would be better placed if they created new descriptive brands with the “inventiveness” requirement in mind, have a tailored advertising strategy and appropriately time the application.