Paint effect held to lack distinctive character

United Kingdom
In In the matter of Application 2390030 in the name of Vibe Technologies Limited (Case 0-166-08, June 16  2008), the appointed person has upheld the hearing officer’s decision to reject an application to register a three-dimensional mark because the applicant had failed to demonstrate that the mark had acquired distinctiveness through use.  
In April 2005 Vibe Technologies Limited applied to register as a trademark in Class 9 of the Nice Classification a repeating pattern creating a crackled paint effect in respect of a surface finish applied to loudspeaker enclosures.
The UK Intellectual Property Office raised an objection under Section 3(1)(b) of the Trademarks Act 1994 on the grounds that the mark:
  • was devoid of distinctive character; and 
  • appeared to have a merely decorative purpose in relation to the goods. 
Vibe was given a series of extensions to supply evidence as to how the mark had acquired distinctiveness through use.
Vibe requested a hearing, which was held in November 2006. The objection raised by the examiner under Section 3(1)(b) of the act was maintained and the application was suspended for three months for Vibe to produce further evidence to show that the mark had acquired distinctiveness. The further evidence submitted by Vibe did not convince the hearing officer and a further extension to July 2007 was granted. The application was refused in July 2007 on the grounds that:
  • the mark was excluded under Section 3(1)(b); and
  • the evidence provided had failed to demonstrate that Vibe’s use of the mark had resulted in the average consumer taking the mark to be a guarantee that goods bearing it originated from Vibe. 
Vibe appealed on the following grounds:
  • The hearing officer had applied the wrong test for acquired distinctiveness. The hearing officer’s view was that where a non-distinctive mark was used alongside a distinctive mark, there was a greater burden upon the applicant to show that the non-distinctive mark had come to be seen as a secondary trademark. Vibe argued that it was sufficient to show that use of the mark meant that the relevant class of persons perceived that the product on which the mark was placed originated from the applicant.
  • The hearing officer had applied the wrong test in requiring evidence which demonstrated that the mark was relied upon as an indication of origin.
  • The hearing officer had made a number of errors in her appraisal of the evidence filed by Vibe.
The appointed person held that the hearing officer correctly set out that where a secondary mark is used in conjunction with another distinctive mark, it may be more difficult to show that the secondary mark had become distinctive.

The appointed person referred to three propositions for determining the threshold for relying on the trademark as an indication of origin:

  • Mere association between the applicant and the mark was insufficient;
  • Use of the sign must establish, in the perception of the average consumer, that the product originates from a particular undertaking; and
  • That perception must result from the use of the sign as a trademark (ie, the applicant must have done something to identify the mark as a trademark); mere extensive and exclusive use of a mark on its own was unlikely to achieve this.

The appointed person found that propositions one and two were correct. The test to be applied was whether it could be shown that a significant proportion of the relevant class of consumers rely upon the mark in question on its own as indicating the origin of the goods. It was not necessary for the applicant to have expressly promoted the mark as a trademark. However, consumers would be more likely to rely on the sign as indicating the origin of the goods had it been explicitly promoted as a trademark. 

In addition, the appointed person held that the hearing officer’s decision was a finding of fact arrived at after a detailed review of the evidence (with which the appointed person agreed). Despite it being apparent that Vibe had used the mark on its loudspeaker enclosures, it had also been shown that Vibe’s goods were sold primarily by reference to the trademark VIBE, which was predominantly used on its loudspeakers and advertising material. Vibe also promoted the pattern as one of a number of surface finishes in which the goods were available. There may have been an association between the mark and Vibe, but there was no evidence to suggest that consumers placed any reliance on the mark when making their purchasing selection. 

The appointed person also indicated that the extensions given to Vibe were over-generous and that Vibe should have been given no more than two opportunities to file evidence of acquired distinctiveness.
Therefore, the hearing officer's decision to reject the application was upheld on the grounds that the mark was inherently non-distinctive and had not acquired distinctiveness through use.
Rebecca Plumbley, Hammonds LLP, London

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