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Brand Appeal

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By Peter Collie, Associate

When is a “sign” registrable as a UK trade mark?

Background

Almost anything can, in principle, operate as a trade mark. This includes conventional signs, such as logos and words, as well as less conventional signs, such as shapes, smells and sounds.

In order to be accepted onto the register of UK trade marks, the UK Intellectual Property Office must be satisfied that the sign is able to operate as an indication of trade origin. This is known as a sign’s “distinctiveness”, i.e. its capacity to distinguish the goods/services of one trader from those of another.

It follows, therefore, that signs which posses a descriptive capacity, in relation to the relevant goods/services, are generally not acceptable for registration.

Outlined below is a summary of a few of the key principles which guide the assessment of whether a sign is ‘distinctive’ or not.

Inherent distinctiveness

Specific goods/services and average consumer

Context is key. A sign’s degree of distinctiveness may vary between categories of goods/services, dependent on factors such as whether it has a more identifiable meaning within some contexts compared with others.

In order to focus the assessment on the relevant goods/services, the courts use a fictious character, the average consumer, to assess the impression of the sign within the marketplace and whether it would be recognised as a signifier of trade mark origin, or an identifier with some other purpose.

Mark as a whole

Distinctiveness is assessed as a whole. Even where components of a sign are descriptive, the overall impression of the sign may still be distinctive as a result of the combination of the constituent components.

Relatively low threshold

Only a minimum level of distinctiveness is required. The essential question is: could the sign function as an indication of trade origin?

Provided it is not descriptive, generic, customary in the relevant trade, merely promotional or laudatory, the sign has a reasonable prospect of being considered distinctive.

Cannot be purely promotional or laudatory

This principle is particularly relevant in relation to slogans, which often serve a solely promotional or laudatory purpose. In order to meet the distinctiveness threshold, the slogan will often need to introduce some unusual choice of language, requiring a degree of cognitive effort on the part of the average consumer to interpret the mark, creating an impression beyond ordinary advertising language.

Acquired distinctiveness (“distinctiveness through use”)

If a sign fails to meet the threshold for qualifying as inherently distinctive, it may still obtain UK registered trade mark protection on the basis of “acquired distinctiveness”, i.e. where evidence is filed showing that sufficient commercial use has been made of a sign in the UK such that consumers perceive the sign as indicating the commercial/trade origin of the goods/services in question.

Evidence must focus on use of the sign in the UK

The evidence must be focused on use in connection with consumers based in the UK. Evidence of use in other countries and/or the registration of the sign in other countries is of no legal weight.

Mere use is not sufficient

UK consumers must have been exposed to the sign as applied for in the trade mark application (or a substantially similar sign) and the use made must have been in line with the essential function of a trade mark, i.e. to indicate the commercial/trade origin of the goods/services in issue. Descriptive, ornamental or informative use will be discarded from the assessment.

Consumers must have been trained into recognising and regarding the sign ‘as a trade mark’, i.e. as indicating the commercial/trade origin of the goods/services in question.

Evidence of substantial sales and marketing campaigns will assist, but that alone will not suffice.

Types of evidence

Useful evidence to file includes details of:

  • How long the sign has been used in the UK
  • How intensively and extensively (i.e. the geographical spread) the sign has been used in the UK
  • The volume and value of sales
  • Promotional spend, activity and examples of advertising materials and campaigns that have been run in the UK with the aim of educating the relevant public to see and regard the sign ‘as a trade mark’
  • Market and consumer surveys which prove that a significant proportion of the relevant public have come to see and regard the sign ‘as a trade mark’, i.e. as a badge of origin
  • The market share enjoyed by goods/services sold under the sign

Conclusion

Not all signs can be registered as UK trade marks because they are not inherently distinctive. However, some may still be registrable if compelling evidence of acquired distinctiveness can be obtained and filed with the UK IPO.

 

 

 

 

 

 

 

Need assistance?

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.