Go Outdoors: descriptiveness and lack of distinctiveness are distinct grounds for refusal

United Kingdom

In Go Outdoors Limited v Skechers US Inc II ([2015] EWHC 1405 (Ch)), the High Court has upheld the decision of a hearing officer of the UK Intellectual Property Office that the marks GO RUNNING and GO WALKING are not capable of being registered as trademarks for retail services in Class 35 as both marks lack distinctive character.

This decision of Mrs Justice Rose was an appeal against the refusal by a hearing officer of trademark applications for GO WALKING and GO RUNNING. The applications for two series marks, containing the stylised form and non-stylised form of the marks were filed by Go Outdoors Limited on June 19 2012 in Class 18 and 35 of the Nice Classification for GO WALKING, and Class 35 for GO RUNNING. Go Outdoors is the United Kingdom’s largest specialist retailer of camping equipment as well as outdoor clothing and footwear. Skechers USA Inc II, a US-based footwear manufacturer, filed oppositions against the applications claiming that the marks lacked distinctive character and were descriptive, and therefore should not be registered pursuant to Section 3(1)(b) and Section 3(1)(c) of the Trademarks Act 1994, respectively. By the date of the hearing, the dispute concerned only the services in Class 35.

The hearing officer upheld the opposition on the basis of Section 3(1)(b). Applying the decision in Audi AG v OHIM (Case C-398/08 P), he considered that neither application possessed “a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public”. The marks, the hearing officer continued, could not be considered indicative of one particular undertaking. Go Outdoors submitted evidence of acquired distinctiveness which was rejected on the basis that the use demonstrated by the evidence did not equate in the hearing officer's view to distinctiveness. He considered that the evidence demonstrated that the mark was used to highlight a particular area of a Go Outdoors store, but would not be perceived by the average consumer as a badge of origin.

The hearing officer rejected the opposition in respect of Section 3(1)(c), however, as he did not consider that GO RUNNING or GO WALKING were descriptive of the retail services applied for in Class 35. Go Outdoors applied the hearing officer’s findings in respect of Section 3(1)(b) and acquired distinctiveness. Skechers appealed the findings in respect of descriptiveness.

Go Outdoors challenged the hearing officer’s findings in respect of Section 3(1)(b) on two grounds. First, Go Outdoors submitted that the hearing officer had wrongly interpreted Audi. Mrs Justice Rose agreed that the hearing officer would have been incorrect to treat Audi as establishing that, for a slogan to be registered, it must exhibit originality or resonance. The court in Audi, Rose J noted, was clear that slogans should be assessed in the same manner as any other mark. Rose J considered it was legitimate for the hearing officer to assess the applications in light of Audi. In that case, the originality and resonance of the slogan was part of the court’s reasons for allowing the application to proceed. The hearing officer, Rose J found, did not base his decision on this criterion alone. Rose J was satisfied that the hearing officer had considered the inherent distinctiveness of the applications correctly and had reached the correct conclusion that they would not enable the average consumer to distinguish one trader’s services from another’s.

Second, it was submitted that the hearing officer’s findings in respect of Section 3(1)(b) were inconsistent with his findings under Section 3(1)(c). This too was rejected by Rose J, as she considered that the questions posed by the two sections were very different in nature. Before turning to Skecher’s appeal in respect of section 3(1)(c), Rose J addressed Go Outdoors’ evidence of acquired distinctiveness. Go Outdoors argued that is evidence had not been given sufficient consideration by the Hearing Officer. Rose J found that the hearing officer had treated the evidence “concisely but clearly” in his decision, and upheld his findings.

Having rejected Go Outdoors’ appeal, it was not necessary for Rose J to deal with Skecher’s cross-appeal. Rose J expressed a view, however, that the hearing officer was correct to find that the marks were not descriptive of the services in question.

Whilst Section 3(1)(b) and Section 3(1)(c) are often considered together, this decision is a reminder that the two are distinct grounds for refusal subject to a separate treatment. A mark can be non-descriptive, yet fail to satisfy the requirement of being capable of functioning as a badge of origin. This is particularly the case as regards slogans.

Leigh Smith, Clifford Chance LLP, London

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