Practice Amendment Notice

PAN 9/06 - 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 7.6-8.3 of Chapter 6 of the Work Manual have been updated. Please note, the practice itself has not changed

7.6 Section 3(1)(d)

This section of the Act applies where the mark consists of a sign which has become customary in the current language or in the bona fide and established practices of the trade. The relevant trade is that concerned with the goods or services covered by the application. The relevant question is whether the sign is used in the sense described above to designate goods or services of the relevant kind. Use of the sign by consumers in the course of trading in the goods or services is just as relevant as use by traders in the goods/services. The use does not have to be for the purpose of designating characteristics of the goods/services in order to fall within the prohibition. See "Bravo" case: Merz & Krell GMBH & Co (C-157/99) [2002] ETMR 21, European Court of Justice and STASH Trade Mark, BL 0-281-04, The Appointed Person (at paragraph 30).

Marks falling in this category include, for example, simple devices of grapes for wines, star devices for brandy, as well as common names such as ‘The Red Lion’ for public house services.

7.7 "Notional and fair use" and section 3(1)

The concept "Notional and fair use" refers to how a trade mark may be used in the market-place and, consequently, will have a bearing on how distinctive the mark will be in its various modes of use. This will include use on business papers, on packaging and in advertising, ie. not just on more conventional means for carrying brands, such as swing tags and sew-in labels etc. A mark may lose trade mark significance when encountered in a promotional context rather than physically used on the goods. Care must be taken when examining a mark which "reads" into the goods or services. "Notional and fair use" of a mark registered in block capitals will also include use in differing typefaces and in upper and lower case letters.

8 Wording and justification of objections under Section 3(1)(b) (c) and (d)

Applicants and their representatives are entitled to expect the basis of any objections to be clearly explained. Consequently, Examiners will provide the factual and legal basis so that applicants can understand the objection(s) being taken against them and, if they wish, challenge the Examiner’s findings . There cannot be any hard and fast rules about the wording to use when objecting to a mark under Section 3 of the Act. Each case will need to be adapted to meet specific requirements.

8.1 Section 3(1)(b)

The fact that a mark strongly alludes to characteristics of the goods/services is NOT a proper basis for a Section 3(1)(b) objection. Applicants can therefore expect an objection that the mark will be seen as a description of the goods/services listed in the application to be raised under Section 3(1)(c) or not at all.

A Section 3(1)(b) objection may arise when the mark consists of, for example:

  • a description of the goods/services combined with some other noticeable but non-distinctive figurative feature;
  • a sign which appears to serve a merely decorative purpose in relation to the goods/services concerned;
  • the shape of goods which does not stand out sufficiently from the norm to be distinctive, or does so in a way which fails to imbue the mark with a trade mark character, eg because the unusual features of the shape serve an aesthetic or functional purpose;
  • a sign which is simply too banal to constitute a trade mark for the goods/services concerned, eg colours, very simple geometrical shapes, such as a circle;
  • a description of an undertaking or its policies which could equally apply to any undertaking in the field, eg “The ones you want to do business with”;
  • a description of goods/services not included in the application but which are so similar to the goods/services covered by the application as to deprive the trade mark of any distinctive character for those goods/services.

The above is not intended to be an exhaustive list.

Raising an objection under Section 3(1)(c) does not preclude the possibility of a separate objection being taken under Section 3(1)(b).

When an objection is taken under Section 3(1)(b) alone OR for reasons which differ from those given to justify an objection under another sub-section of Section 3(1), the Examiner will provide the factual basis for his or her finding under Section 3(1)(b), eg "the trade mark [The ones you want to do business with] is devoid of any distinctive character because it consists of a sign which is merely a description of the customer friendly and high quality nature of a commercial undertaking".

8.2 Section 3(1)(c)

An objection raised under Section 3(1)(c) of the Act, will identify the characteristic(s) of the goods/services designated by the trade mark. The Examiner will also provide an example illustrating how the trade mark could be used, in trade, as a description of the characteristic of the goods/services identified in the objection. For example, “the trade mark [TOP VALUE] is excluded from registration by Section 3(1)(c) of the Act because it consists exclusively of a sign which may serve, in trade, to designate the value for money nature of [THE GOODS] eg "This is a top value product."

8.3 Section 3(1)(d)

Section 3(1)(d) is somewhat different because (unlike sub-sections (a),(b) & (c)) it deals with signs which are actually believed to be in use in trade. Where a mark consists exclusively of descriptive matter which may be used in trade, the objection will be under section 3(1)(c). Where a sign is devoid of any distinctive character the objection will be under section 3(1)(b).

A Section 3(1)(d) objection therefore need only be raised where the examiner is in doubt as to whether the sign is inherently capable of designating a characteristic of the goods or services, or is devoid of any distinctive character, but there is evidence that the sign has nevertheless become customary in the current language or in the established and bona fide practices of the relevant trade.

In those circumstances the applicant is entitled to know the basis of the examiner's view. The applicant should be shown or referred to named publications or provided with other examples of use which show the sign being used to designate relevant goods/services.

In STASH Trade Mark [BL 0-281-04], Professor Ruth Annand, as The Appointed Person, found that evidence of two uses of the sign in question by third parties prior to the date of the application for registration, did not amount to ‘customary’ use. In order to show that the use of a sign has become ‘customary’ or ‘established’ it will be necessary for the Registrar to provide evidence which is consistent with those descriptions. In this connection it should be noted that;

  • use of the sign in widely read publications offering the goods/services to the relevant public may carry more weight than limited uses on obscure web sites;
  • journalistic use, whilst not irrelevant (because it leads to use by the public), is less relevant than use in the course of trade;
  • private use (in 'chat rooms' and the like) is of little relevance;
  • the size and nature of the market for the goods/services is a relevant factor: the amount of use required to show that a sign has become ‘customary’ or ‘established’ in a specialised market is liable to be less than that which is required to show the same things in relation to a much bigger market for general products or services.
  • evidence must normally pre-date the application;
  • evidence which post dates the application, but which shows what was happening prior to the date of the application is also relevant.