Practice Amendment Notice

PAN 8/06 - Issued 25 May 2006

This Notice affects Examination practice about Section 3(1)(d) of the Act.

Current practice with regard to Section 3(1)(d) of the Act has been clarified and the text of paragraphs 10.3.1 – 10.3.4 of Chapter 6 of the Work Manual have been updated. Please note, the practice itself has not changed.

10.3 Relevancy

10.3.1 Section 3(1)(d)

Before an objection is taken under Section 3(1)(d) it is necessary to pinpoint sufficient use of the sign by third parties prior to the date of the application to show that it was in use in the 'customary language' or 'established practices of the trade' at the relevant date. It is not possible to lay down a minimum number of uses required to show this as much depends upon the nature of the hits (e.g. use in an advert for the goods/services in a popular daily newspaper would carry much more weight than an instance of journalistic use of the sign in an article on a web site). In order to be relevant the use must be in the UK (e.g. UK website or extract from publications circulating in the UK). The references must show use that occurred before the relevant date. Extracts showing use on overseas websites (unless they include relevant extracts from UK publications) should not be used to support a Section 3(1)(d) objection.

10.3.2 Section 3(1)(c)

A limited number of examples of use of the sign in the course of trade in the UK as a designation of characteristics of the goods or services may support a Section 3(1)(c) objection (and a consequential section 3(1)(b) objection) where a descriptive meaning can be adduced from the ordinary meaning of the sign and the purpose of citing examples of use is therefore to illustrate the capacity of the sign to function as a description in trade. This is to be contrasted with the facts in the STASH Trade Mark case [BL-0-281-04] where the word lacked any prima facie descriptive significance (for clothing).

Examples of use of words in other jurisdictions are not usually conclusive without more. This is because the same word can be descriptive in one country and distinctive in another. However, overseas use may be relevant where:-

• the ordinary meaning of the word(s) identified in the usual reference works suggests that the sign may serve in trade in the UK as a description and the use made of the sign in other English speaking countries is merely confirmation that the sign is apt for such use here, or
  
• the hits suggest that the sign in question had, at the date of the application, been adopted in other English speaking countries as the name of (or an abbreviation for) a new sort of product or service.

10.3.3 Use in trade

It should be borne in mind that objections under Section 3(1)(c) can only be based upon the existence or likelihood of the sign being used for descriptive purposes in trade in the goods/services. One or two isolated examples of journalists using a word as a description will not, without more, serve to show that an apparently meaningless or inapt word is apt for use in trade as a description. On the other hand, a persistent pattern of descriptive use by journalists (particularly in trade papers) is sufficient to establish that the sign is liable to be used in trade as a description.

10.3.4 Dates

Use after the date of the application is usually irrelevant. However, if an objection is raised under Section 3(1)(c) which is based primarily upon the descriptive meaning of the word(s) identified in the usual reference works, then examples of descriptive use in trade after the date of application may be relevant. This is because such examples confirm that the word(s) had descriptive potential at the date of application. In the absence of any other indication, we should take the date that the web-page was last updated as the date of the article for examination purposes.