Descriptive trademarks and figurative elements
This issue was highlighted by Mr Justice Arnold decision in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc  EWHC when he warned of the dangers attached to using “figleaf” marks.
This case concerned the claimants (PCCW) who had a registered Community Trade Mark (CTM) for the word “now”. The CTM was the word “now” with lines emanating from the “o” to create a star shape effect. The trade mark was registered for several services including television broadcasting and telecommunication services. The defendant (Sky) announced the launch of their new service “NOW TV” which provoked PCCW to start proceedings for infringement of their mark.
Sky applied to stay the infringement claim awaiting an application to invalidate PCCW’s CTM, but this was refused by Arnold J. Instead Arnold J ordered a trial to take place which would assess the issues concerning: the validity of PCCW’s CTM “now”; whether infringement had in fact occurred; and if a case of passing off existed.
It was held, that sky did not infringe PCCW’s CTM. Arnold J also stated PCCW’s CTM was invalid as it was devoid of distinctive character. This was because the dominant element of the CTM was the descriptive word “now” which had been commonly used in this sector, in relation to electronic programmes and online guides. “Now” did not constitute a brand name but merely a description and that is the way consumers would perceive it. The figurative elements of the mark namely, the lines creating a star shape radiating from the “o” were not taken into account in Arnold J judgement. He believed that PCCW obtained registration of the CTM only because of the additional figurative elements and that the only common attribute between the claimant’s mark and defendant’s was the word “NOW”. As such, PCCW’s claims of: infringement, likelihood of confusion, and passing off all failed. Arnold J warned trade mark registries of the consequences when he stated:
“… It appears to me that [the claimant] only succeeded in obtaining registration of the CTM because it included figurative elements. Yet [the claimant] is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place.”
Despite this pertinent warning of the risks involved cases continue to manifest.
The first case concerned a trade mark in relation to beds, bed linen, related goods and services and the colour “red” which had been obtained by the opponent. The mark lists the colour “red” under the description heading “indication of colour”. The opponent then relied on his mark to oppose a CTM application in relation to identical / similar good and services as a likelihood of confusion could manifest. This was rejected at first instance despite some visual similarities as they differed in: typeface; colours and other figurative elements. The opponent appealed this decision.
The First Board of Appeal dismissed the appeal in September 2013 when it held that the distinctiveness of the earlier mark came from the colour red and typeface used, thus this was the image consumers would remember. The contested application contained an image of a sleepy bear, which would clearly be the distinctive element remembered by consumers in relation to said products. However as both marks contained the term ‘relax’ the marks were held to be similar on the basis of an identical word element however similarity alone is not sufficient enough to be successful in opposition as a likelihood of confusion must exist.
The Board of Appeal assessed the distinctiveness of the earlier mark, stating that the word ‘relax’ would be perceived as a desired quality as oppose to a brand or trade mark thus it was descriptive. It follows that consumers would not consider descriptive elements as the distinctive and dominant element of the mark and subsequently would not conclude that such goods and services under said mark would emanate from the same origin. Accordingly the Board of Appeal concurred that there was no likelihood of confusion between the existing and disputed marks, the appeal was dismissed.
The second case in front of the Grand Board of Appeal concerned the opposition of an application for the plain word mark “ultimate greens” for identical / similar goods. The opposition was placed by a trade mark owner who had marks registered for vitamins and nutritional supplements. The opposition was at first successful but was later appealed by the applicant.
It should be noted that the opponent had applied for a CTM for the plain word mark “ultimate nutrition” which was rejected due to lack of distinctiveness and descriptiveness. The Grand Board of Appeal stated that the only difference between the word application and the mark itself was a black rectangle which was common place and lacked any distinctive character.
It was held that the words “ultimate nutrition” were descriptive of the goods in question and would be perceived as a desired quality by the consumer as oppose to a brand or trade mark. As such both were devoid of distinctive character.
The Grand Board of Appeal sort to reiterate that consumers would not consider a descriptive element of a mark as forming the distinctive and dominant element of the overall impression conveyed by the sign:
“Whereas, a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components.”
Accordingly the only common element between the marks was the word “ultimate” which was not the dominant element in either mark as it was descriptive and non-distinct. Therefore as the marks were dissimilar in other aspects the Grand Board of Appeal found that there was no likelihood of confusion between the marks. Furthermore, it was stated that a risk of association cannot be based on a non-distinctive element of a mark and that such figurative elements of a mark should be given low weight when assessing similarity.