This blog post has been contributed by Professor Jonathan Griffiths, Module Convenor for Intellectual Property.
As students of intellectual property law know, an application to register a sign as a trade mark (under the Trade Marks Act 1994) is to be refused where the sign is “devoid of distinctive character” (s 3(1)(b), discussed in section 12.3.2 of the module guide). An applicant will nevertheless be able to secure registration where it can be demonstrated that the mark has “acquired distinctiveness” (under the proviso to s 3(1), also discussed in section 12.3.2 of the module guide).
The issue of distinctiveness goes to the very heart of trade mark law and a recent decision of the UKIPO’s Trade Mark Registry presents a valuable opportunity for you to consider the approach to the issue on interesting facts. The applicant (Tefal) sought to register an unusual figurative sign comprising a red circle presented in a certain position on its cookware (see below):
The application was accompanied by the following description:
The mark consists of a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan) as shown. The dotted lines do not form part of the mark and are entered to show the position of the mark on the goods.
It was made in respect of “frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks” (all in Class 21).
“Devoid of distinctive character”
In considering whether the mark applied for was “devoid of distinctive character”, the Hearing Officer set out the established approach to s 3(1)(b) -. This requires a decision-maker to interpret the provision in the light of its general underlying interest (in this instance, the essential function of a trade mark to guarantee the identity of the origin of the goods and services offered to the consumer under the mark. The assessment of the application of this function is to be made by reference to the goods and services for which the application has been made (listed above) and by reference to the perception of the average consumer for those goods and services. This assessment is to be made without reference to the actual use that has been made of a mark in practice.
In applying these principles, he came to the conclusion that the ordinary consumer would view the red circle as a feature of the product itself – as purely decorative or functional – rather than as distinguishing the goods of a particular undertaking. The ground for refusal of registration under s 3(1)(b) thus applied in this instance.
However, even where an application is refused under s 3(1)(b), it may be saved if the applicant can demonstrate that the mark has “acquired” distinctiveness through actual trading (see the proviso to s 3(1)(b), (c) and (d)). The law on acquired distinctiveness has been established in a number of judgments discussed in your module guide (see, in particular, (C-108 & C-109/97) Windsurfing Chiemsee EU:C:1999:230 and Société des Produits Nestlé v Cadbury UK Ltd  EWCA Civ 358. The latter case requires the applicant to demonstrate that it has “used the sign applied for as a trade mark” .
In applying the required approach in the light of the evidence advanced by the applicant, the Hearing Officer noted that the pan-buying public had been exposed very significantly to the red dot mark on cookware. Marketing and sales were extensive. However, the evidence presented (which included a survey) did not prove that the public identified the mark as a trade mark. Rather it suggested that a significant proportion of customers viewed the mark as having some form of technical function (to designate a “hot spot” on the pan) -. The Hearing Officer also doubted whether the applicant had demonstrated sufficient “confidence” in the sign, either by applying it separately from its trade name (although that is not, in itself, required by the case-law) or by referencing it specifically.
Overall, it was concluded that the applicant had failed “to show that a significant proportion of relevant consumers, not just associate the sign with the applicant, but regard it as a trade mark guaranteeing the origin of the goods” .
While this decision is not significant as a source of authority for future interpretations of s 3(1)(b) and the proviso, it provides a very good example of the application of the principles underlying the law in this area. Yet again, it demonstrates the difficulty that applicants will have in demonstrating that consumers will recognise signs other than standard trade names and logos as trade marks. It is always vital to consider how the relevant consumer would view the mark applied for. The potential functionality of the red dot provides another interesting feature of the specific case.