Greater devolution for Scotland is once again a hot topic for debate but the London IP Protection team has demonstrated that Scottish businesses don't need their own trade mark registry to protect their brands.
An intrepid team of Partner Leighton Cassidy, Solicitor Scott Hogan and Trade Mark Assistant James McAllister obtained approval from the UK-IPO to protect the slogan SCOTLAND'S ANIMAL WELFARE CHARITY as a trade mark in Scotland alone for their client - the Scottish Society for the Prevention of Cruelty to Animals (Scottish SPCA) - persuading the UK-IPO to go against its own policy in the process. In fact, this may well be the first UK trade mark to be granted geographically limited protection on an acquired distinctiveness basis following the change in UK-IPO's policy to conform with EU case law.
Slogans are notoriously difficult to register as trade marks; they are viewed as laudatory, promotional messages and are routinely refused registration on the basis that they lack distinctive character and won't be viewed by consumers as a trade mark i.e. a business identifier.
As a result, the team needed to prove that the slogan had acquired distinctive character through substantial use which had educated the consumer that SCOTLAND'S ANIMAL WELFARE CHARITY was a trade mark of the Scottish SPCA. However, the team's task was made doubly difficult, in this case, by the fact that the client's use was confined to Scotland, as the UK-IPO had previously determined that it would "not be sufficient to prove that a mark consisting of English words … has acquired a distinctive character in Scotland alone".
The team successfully argued that it was unfair to issue a refusal from the viewpoint of the average UK consumer if, for factual reasons, the consumer in question is and will only ever be found within Scotland and furthermore, that any refusal on this revised basis could not be maintained in the face of the compelling evidence of use submitted.
The UK-IPO policy was dictated by a European Court of Justice (as was) decision, which had held that a trade mark lacking an innate distinctive character can only be registered "if it is proven that that trade mark has acquired distinctive character through use throughout the territory of a member state.” (Bovemij Verzekeringen NV v Benelux Merkenbureau (EUROPOLIS) C-108-05).
The team was able to convince the UK-IPO that the client's application should not be viewed as if seen by consumers throughout the UK when the commercial reality, presented by the evidence, confirmed that the Scottish public represented the exclusive pool from which the Applicant's existing and potential consumers would be found. Once this matter of fact was established, it logically followed that the mark should be granted registered protection, limited to Scotland, if the evidence showed a substantial proportion of the exclusive pool recognised the products offered under the slogan were provided by the Scottish SPCA. Finally, the team pointed out that this approach would not be incompatible with the binding ECJ ruling as the Court had also indicated that use of acquired distinctiveness was only needed "throughout the part of the territory … in which there exists a ground for refusal."
This decision confirms that a slogan mark can enjoy registered trade mark protection if the Applicant can put forward evidence that shows the slogan identifies the goods and/or services of their business to its consumers. It also suggests that a mark may be protected, albeit with geographical limitations, if the evidence shows a business's consumers are concentrated in a single country of the Union and a significant proportion of those consumers identify the slogan specifically with the Applicant.
The UK-IPO is to be applauded for its common sense approach to a piece of European case law that is largely untested and has previously been criticised as being unclear. The UK does not want to find itself in the same position as the United States, where State trade mark registers sit uncomfortably beneath the Federal Register and small businesses are unsure of the protection they can rely on.
Partner Leighton Cassidy commented:
"This is a great result for the Scottish SPCA. The slogan SCOTLAND'S ANIMAL WELFARE CHARITY has played a major role in a long running campaign to reduce confusion with the RSPCA and now the Scottish SPCA will benefit from the ownership and enforcement rights that a trade mark registration provides."
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