Practice Amendment Notice

PAN 6/06 - Issued 12 April 2006

This Notice affects Examination practice about evidence of distinctiveness acquired through use.

The practice on distinctiveness acquired through use has changed, and Chapter 6 of the Work Manual has been updated by replacing paragraphs 45.1, 45.2, 45.3 and 45.5 as follows:

45 Evidence of distinctiveness acquired through use

The proviso to Section 3(1) makes it clear that a trade mark which offends Section 3(1)(b), (c) or (d) of the Act may still be registered if it can be shown that, by the date of application, the mark has in fact acquired a distinctive character as a result of the use made of it.

45.1 The Test

In Windsurfing Chiemsee (C108&109/97) [1999] ETMR 585, the ECJ provided guidance as to the conditions which should result in a finding that a trade mark has acquired a distinctive character through use. The court found that:

"If the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied."

45.2 Mark must have been used distinctively – as a trade mark

In the Philips judgement, C-299/99, the ECJ found that the fact that an undertaking is the only known supplier of a kind of goods/services does not preclude a finding that a mark has acquired a distinctive character for the goods/services. However, the court pointed out that such a finding was only possible where reliable evidence shows that recognition of the mark as indicating the goods/services of one undertaking is as a result of its use as a trade mark. According to the ECJ in Societe des produits Nestle SA v Mars UK Ltd, Case C-353/03, this means “use of the mark for the purposes of the identification, by the relevant class of persons, of the product or services as originating from a given undertaking.” (see paragraph 29 of the judgement).

In principle, this applies whether or not the applicant is the only supplier of a kind of goods/services to the market. The significance of the monopoly is that its effect may make it difficult to gauge whether the public has come to recognise the sign as a trade mark or whether they merely recognise the sign as characteristic of a particular kind of goods or services, and associate that kind of goods/services with the applicant because it is the only known (or the best known) supplier of goods/services of that kind.

Acquired distinctiveness cannot therefore be shown to exist solely by reference to general, abstract data such as pre-determined percentages of recognition by the relevant class of persons, Windsurfing and Philips. Instead the views of an average consumer must also be taken into account. Such a consumer is reasonably well informed, observant and circumspect. Such a consumer is unlikely to have come to recognise a sign as being one that identifies the trade source of the goods/services, unless the proprietor has educated the consumer to that perception.

The less plausible it appears on the face of it that consumers would take the mark in question as serving a trade mark function the more important it is to consider what, if anything, the proprietor has done to nurture the mark into a trade mark. Or to put it another way, the more descriptive or non-distinctive the mark appears, the more work the proprietor will have to put in to educate consumers that it is a trade mark. Where the mark has been used on a substantial scale as the sole or principal means of identifying the trade source of the goods it will often be quite easy to conclude from the context of the use that the public have been educated to see the mark as a trade mark.

45.3 Secondary trade marks

In Societe des produits Nestle SA v Mars UK Ltd, Case C-353/03, the ECJ determined that a mark may acquire a distinctive character as a result of it being used as part of, or in conjunction with, another mark. There is therefore no requirement for a non-distinctive mark to have been used alone before it can be registered on the basis of acquired distinctiveness, but where such a mark is used alongside another distinctive sign the burden on the applicant to show that the non-distinctive mark has come to be seen as a secondary trade mark will be greater, as in the TREAT case, [1997] ETMR 118.

Where the evidence shows that the trade mark is used together with another distinctive trade mark it may still be possible to accept the application provided the evidence indicates that the sign applied for has been used as a second trade mark.

Here is an example which does not show that the applied for mark has been used as a trade mark.

In this case the word “Yorkshire” is merely used as a description of the geographical origin of the goods (beer).

Here is an example which does show the secondary mark in use as a trade mark:

In this example the word "lovely" has been dressed up to have the appearance of a secondary brand. It is not just a question of relative size. The degree of descriptiveness is also important. Simply increasing the size of the word "perfume" would never turn it into a trade mark for those goods. In this case, the presentation presents the mark as a brand name for the product.

Non-traditional marks, particularly colours and the appearance of the goods or their packaging, often pose particular problems. Such marks are seldom used as the principal means of distinguishing the trade source of the goods or services. Nevertheless, they are capable of being used as secondary trade marks. The key issue will usually be whether the proprietor has used the mark distinctively to educate the public that it is a trade mark. The most obvious way of educating the public that such a mark is a trade mark is for the proprietor to indicate this in its advertising by the use of statements such as "look for the one with the [blue] wrapper" or "you can rely on the [description of appearance of goods or packaging] to tell you its a [brand name]". In this connection, it should be noted that the use of small letters "tm" in relation to a mark with no trade mark character is more likely to make an impression on a lawyer than on an average consumer.

If there is evidence that the applicant applies the same styling feature to the shapes of a range of goods of the same kind, this may assist in educating the public that the feature has some trade mark significance. On the other hand, evidence that the undertaking produces a large number of similar kinds of products, all with different shapes, tends to point in the other direction.

One means of signifying the trade mark significance of colours is to use them as a livery, i.e. as a consistent colour scheme applied to a range of products of the same general kind so as to designate the trade source. The use of such liveries for buses, trains and vehicle service stations are good examples of such use in relation to services. On the other hand, evidence that an applicant uses a wide range of colour schemes in relation to goods or services of the same kind tends to point away from the trade mark significance of any one such colour scheme.

Where there is doubt as to whether the proprietor has done enough to educate the relevant public that at least one of the functions of the sign in question is to identify the product or services as those of a single undertaking, evidence that the relevant public has come to rely upon the sign in question for the purpose of distinguishing between goods/services of different undertakings may be sufficient to show that the sign is recognised as serving a trade mark function. The best evidence of reliance is that which shows that (and in what way) those making selection decisions between competing products or services have come to rely upon the sign in the course of the selection process. Evidence of mere abstract recognition of the sign is unlikely to assist if the doubt is not about the extent of the use of the sign, but rather whether it is used for the purpose of identifying the goods or services of one particular undertaking.

45.4 Evidence – Pure colour marks

Evidence filed to support a claim of factual distinctiveness for a mark consisting of colour as such will need to be very persuasive. It will need to clearly demonstrate that the mark exclusively designates the applicant’s goods or services to the relevant consumer. There is more likelihood of establishing factual distinctiveness where the goods or services are very restricted and the relevant market very specific. Deciding whether a single colour is distinctive raises complex issues and examiners should consult with a Team Leader before finally accepting or refusing applications for single colour marks.

45.5 Use of the Mark as Part of another Trade Mark

In the light of the ECJ’s judgement in Societe des produits Nestle SA v Mars UK Ltd, Case C-353/03, it is clear that, as a matter of law, there is no bar on a mark acquiring a distinctive character as a result of its use as part of another trade mark. Word marks are often used with device marks but that does not mean that the consumer could not look upon the use as being of two trade marks used together. However, if it appears unlikely that the use relied upon by the applicant is likely to be perceived by relevant consumers as use of the mark only as part of another mark, establishing a claim of acquired distinctiveness may be much more difficult.

For example, use of the mark on the right below could not be perceived as simply use of the trade mark "Quality". Therefore use of the mark on the right ought not to result in the inference being drawn that the word "Quality" as such has become distinctive of the applicant. It will be for the applicant to establish through evidence that the result of the use of the mark on the right is that the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for (on the left), as originating from a given undertaking.

Small differences between the mark applied for and the mark which has been used, which do not alter the distinctive character of the mark, may be ignored. For example, the use of the mark below should be considered as use of the word PREMIER as such.