DOUBLEMINT brings practice change at UK registry

The UK Trademark Registry has produced a practice amendment notice that sets out the approach UK examiners will take when considering whether to refuse registration of marks under Section 3(1)(c) of the Trademarks Act 1994 on the grounds that they consist exclusively of signs or indications that may serve, in trade, to designate a characteristic of the goods or services for which registration is sought. This is intended to reflect an approach consistent with the ruling of the European Court of Justice (ECJ) in DOUBLEMINT.

The ECJ held in that case that, in order to determine whether a trademark is excluded from registration under Article 7(1)(c) of the Community Trademark Regulation, it is necessary to ascertain whether the sign at issue is capable of being used by other economic operators to describe a characteristic of their goods and services. Criticizing the approach taken by the Court of First Instance, the ECJ indicated that the test is not whether the mark is exclusively descriptive; it is sufficient if one of the meanings of the mark designates a characteristic of the goods or services (see ECJ reverses DOUBLEMINT decision).

The ECJ also confirmed its earlier judgment in Windsurfing Chiemsee to the effect that it is not necessary for a sign to be in current use as a description before it is susceptible to an objection under Article 7(1)(c). It is sufficient that the sign is "capable" of being used as a designation of the goods or services.

However, the registry states that this applies only where there is a reasonable likelihood that the sign in question will serve a descriptive purpose in the ordinary course of trade. Examiners will therefore consider whether third parties are likely to use signs corresponding to the trademark applied for in order to describe characteristics of the goods or services covered by the application. The registry says that it will consider the position as at the date of the application, but it will also take account of new uses that are reasonably foreseeable at that date.

Examiners will continue to have regard to the ECJ judgment in BABY-DRY: when assessing a trademark consisting of two or more exclusively descriptive terms, the registry will take account of whether the words in question are juxtaposed in a manner that renders the mark resistant to natural descriptive uses. It will also continue to have regard to distinctions between a trademark and a description of the goods or services arising from the omission from the trademark of words or other components that would be essential in order for the sign to work as a description. In this respect, examiners will bear in mind that short hand for, or an abbreviation of, a longer descriptive term may itself be a term that may serve, in trade, to designate the goods or services or their characteristics. Shortening a longer descriptive phrase will not therefore automatically result in a trademark that is free from objection.

The registry also says that in determining whether a mark consists exclusively of a designation of goods or services, examiners will disregard entirely differences of a kind that may go unnoticed by an average consumer. Additionally, the presentation of a descriptive trademark in a graphical form that corresponds to common forms of presenting descriptions in trade - such as, the use of a colour or a simple border - is unlikely in itself to be sufficient to resist an objection under Section 3(1)(c) of the Trademarks Act.

Finally, the registry stresses that a mark that consists exclusively of a sign that may serve, in trade, to designate the goods or services or their essential characteristics is liable to be devoid of any distinctive character. In other words, the grounds that give rise to an objection under Section 3(1)(c) are also likely to support a further objection that the mark is devoid of distinctive character under Section 3(1)(b). However, the absence of a Section 3(1)(c) objection would not preclude the possibility of a Section 3(1)(b) objection being raised on grounds other than that the mark is descriptive of the goods or services covered by the application.

Chris McLeod, Hammonds, London