Practice Amendment Notice

PAN 1/07 - Issued 25 May 2007

Foreign descriptive use: interpretation of the internet and Registrability of non – English words

This notice reflects a general tidying up of paragraph 9.3 and section 27 which is replaced in its entirety. Overlapping material is cut down and greater clarity sought, but there is no change to practice.

9.3 Foreign descriptive use: interpretation of the Internet

During examination of an application, Internet referencing may reveal that the mark applied for appears to be used as a term of art in the relevant category of goods or services outside of the UK. Whether an objection under section 3(1)(c) is appropriate will depend on a number of considerations; some are listed below, but not exhaustively.

Does the mark consist of a word which is recognised either by the relevant trade, or by relevant consumers, as being one used outside the UK to describe the product or its characteristics ?

If the mark is known to those who trade in the product as being a word which is used as a description of the product elsewhere, it may not be registrable in the UK. English words used in the USA in the technological field are usually known to those who trade in the products in the UK, even if the product has not yet reached the UK market.

Is the product in a category of goods and services that might be regarded as the “latest craze”?

Similarly, knowledge of a new craze sweeping the US may travel to the UK with its US description, even if the applicant for the UK trade mark is the first to use it in the UK. For example, hooded sweatshirts and fleeces are not new clothing items in the UK, but when they became popular as the “hoody” in the US, they quickly became known on both sides of the Atlantic by that name. The names of new sports and newly popular foreign plants, foods and drinks frequently reach the UK (particularly the UK trade) before the goods or services themselves become widely available.

If we already have the product, do we have a different descriptive name for it?

If we have a name for a product or service, commercial tradition indicates that the name already in existence in the UK will endure as the accepted descriptive term. In this scenario, the overseas term will be more likely to operate as a trade mark in the UK. For example, Internet referencing on the mark “MARBLECRETE” uncovered generic use as the US version of ‘pebbledash’; however, because the UK generic description “pebbledash” has existed for so long, it is unlikely that UK traders in these goods, or UK consumers, will switch to using the US term descriptively. The mark was therefore accepted as differing from the usual way of designating the goods in the UK, both at the date of application and in the reasonably foreseeable future.

27 Registrability of non-English words

These guidelines indicate how the Registrar is likely to respond to applications to register non-English words as trade marks where, if words with the same meaning were applied for in English, the application would be subject to an objection on the grounds that the words are descriptive and/or non-distinctive.

Following the European Court of Justice’s (ECJ) judgement in case C-421/04, Matratzen Concord AG v Hukla Germany SA, there are no grounds for refusing registration of trade marks on the basis that they are relevantly descriptive or non-distinctive in a language which is unlikely to be understood by the relevant trade in the UK or by the relevant average UK consumer of the goods/services in question.

Consequently, the registrar will only object to the registration of word marks which are likely to be recognised as a description of a characteristic of the goods or services (or otherwise be descriptive of the goods/services) in the application.

The relevant trade in the UK consists of those in the UK who trade in the goods or services in question. A pharmacist may recognise the descriptive meaning of a Latin name even though an average consumer of pharmaceuticals may not. Similarly, a trader in wines is likely to have a better understanding of French wine descriptions than the average end consumer of those goods. Further, traders in computing goods and services are likely to be more aware of the names used elsewhere to designate characteristics of new products, even if the product is not yet available on the UK market.

27.1 The Most Commonly Understood European Languages

In general, the most widely understood European languages in the UK are French, Spanish, Italian and German. The majority of UK consumers cannot be assumed to be fluent in any of these languages, but most of them will have an appreciation of some of the more common words from these languages, particularly common French words. So it may be assumed that the meaning of ‘Biscuit pour Chien’ (dog biscuits) will be known to the average UK customer for dog biscuits. Similarly, it may be assumed that traders in and/or average UK consumers of cosmetics (who will be accustomed to seeing French descriptions on the packaging of cosmetics) will know the meaning of ‘lait’(milk) and will be able to decipher the meaning of ‘Lait hydratant’ as being moisturising milk (or similar).

27.2 Non English Descriptions which are most likely to be Understood

The average UK consumer may well be familiar with the non-English name of a product or service, or the local name for its geographical origin. For example, the average English speaking consumer of wine would know that ‘Bourgogne’ is the French word for the region known in the UK as ‘Burgundy’ and would also be likely to know that ‘vin rouge’ means ‘red wine.’ Similarly, the average consumer of olive oil is likely to know that ‘Toscano’ is the Italian word for the region known in the UK as Tuscany. Consequently, these names are not registrable for wine and olive oil, respectively.

27.3 Non-English Words which resemble English Descriptive Words

The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer. So for example, the Italian word ‘caffe’ should be rejected as a trade mark for coffee because the average UK consumer of coffee would be likely to see that it simply means ‘coffee’.

27.4 Further Considerations which apply to Non-English Descriptive Marks for Services

Section 3(1)(c) is directed at signs which may serve, in trade, as designations of goods or services. Goods are known to move from one territory to another. Non-English words are therefore inherently more likely to be taken as descriptions used in the UK in relation to imported goods than is the case with most services.

Consequently, with certain exceptions, such as travel, transport and language services, non-English words may be registrable for some services even where the meaning of the words would be apparent to the relevant average UK consumer. For example, the use of ‘Pret a Manger’ (ready to eat) in relation to a catering service provided in the UK is unlikely to be regarded by the trade as simply descriptive use, even if they know what the French words mean. In contrast ‘Pret a Porter’ (ready to wear) would not be registrable for clothing as this is a recognised descriptive term in the trade.

27.5 Goods or Services aimed at Minority Groups

Where the average consumer or end user of the goods in the application is far more likely than the average UK consumer to understand the language of the mark, this should be taken into account in determining whether the mark is caught by Section 3(1)(c) of the Act.

For example, the mark خ IMAR (an Arabic word – YASHMAK is the English) would not be registrable for yashmaks in Class 25 because this would be a normal way for traders of these goods to market them because they are primarily used by the Arabic speaking community. The same would apply if the application includes more general descriptions of the same goods, such as ‘clothing.’ This sort of point is most likely to arise in relation to marks for foodstuffs and drinks in Classes 29-32 and clothing in Class 25.

27.6 Non-English Words which have become customary in the Current Language or in the bona fide and Established Practices of the Trade.

Non-English words which have become generic in the trade in the goods or services (by customers or traders) are excluded from registration under Section 3(1)(d) of the Act. So the German word ‘auto’ is not registrable for motor cars, their parts and fittings, or related services. Nor is the Italian word ‘panini’ for sandwiches.

27.7 Non-English words which are Devoid of any Distinctive Character

The Welsh language has equal status to English in Wales. For the purposes of Section 3(1) of the Act, trade marks consisting of words in the Welsh language will be treated in the same way as trade marks consisting of the equivalent English words. Save for the circumstances described in this section, it should rarely be necessary to raise an objection to a non-English word under Section 3(1)(b) alone.