In the last couple of years OHIM and, to a lesser extent, the UK IPO have stepped up how rigorously new applications are examined for registrability. The effect has been an increase in registrability
In the last couple of years OHIM and, to a lesser extent, the UK IPO have stepped up how rigorously new applications are examined for registrability. The effect has been an increase in registrability objections being issued against trade marks that may previously have been accepted. This obviously makes it more important than ever for a new trade mark to be considered carefully before being adopted, and for marketing departments to develop creative brand names rather than adopting the "it does what it says on the tin" approach.
However, this increased rigour is also starting to impact on existing brands as illustrated in Reed Exhibitions Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-633/13). Here the General Court upheld OHIM's original decision to refuse their application for registration of the word mark INFOSECURITY in Classes 16, 35 and 41, even though the applicant had registered a variation as a Community Trade Mark over a decade earlier in 2002. The basis for the refusal was that the mark was considered both descriptive and devoid of distinctive character. The applicant attempted to overcome the objection by arguing inherent distinctiveness and acquired distinctiveness but was ultimately unsuccessful (save for a limited number of claims in Class 35).
Comment
What is arguably more interesting about this decision is the trend highlighted for existing brand owners rather than the specifics of the arguments raised. It is the aim of any business for their brands to evolve over time, and possibly for new goods and services to be offered under a trade mark as a brand continues to grow. It will always be prudent to ensure new goods and services are covered in a trade mark registration which will mean making fresh applications. It is also common for brands to reinvent themselves by updating existing trade marks. The decision in Reed Exhibitions highlights the continued risk of utilising arguably descriptive and/or non-distinctive trade marks even if you have previously managed to secure protection for them.
Existing brand owners should always consider the inherent registrability of their trade mark before proceeding with a fresh application. Considering the matter before filing will allow an applicant to decide whether a visual element such as a logo could be added to their arguably descriptive trade mark to alleviate the risk of an objection being raised. If a new visual element is not an option, time spent collating extensive evidence of acquired distinctiveness through use of a "risky" trade mark before a fresh application is filed will be significantly less pressured than when faced with a deadline to respond to an objection. However, if filing in the EU, it must be kept in mind just how difficult it can be to prove acquired distinctiveness for a Community Trade Mark as it must be proved throughout all 28 Member States of the EU. This cautionary tale also helps to highlight the importance for brand owners to maintain extensive documentary evidence of use of their trade marks in case a situation like this ever arises.
However, this increased rigour is also starting to impact on existing brands as illustrated in Reed Exhibitions Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-633/13). Here the General Court upheld OHIM's original decision to refuse their application for registration of the word mark INFOSECURITY in Classes 16, 35 and 41, even though the applicant had registered a variation as a Community Trade Mark over a decade earlier in 2002. The basis for the refusal was that the mark was considered both descriptive and devoid of distinctive character. The applicant attempted to overcome the objection by arguing inherent distinctiveness and acquired distinctiveness but was ultimately unsuccessful (save for a limited number of claims in Class 35).
Comment
What is arguably more interesting about this decision is the trend highlighted for existing brand owners rather than the specifics of the arguments raised. It is the aim of any business for their brands to evolve over time, and possibly for new goods and services to be offered under a trade mark as a brand continues to grow. It will always be prudent to ensure new goods and services are covered in a trade mark registration which will mean making fresh applications. It is also common for brands to reinvent themselves by updating existing trade marks. The decision in Reed Exhibitions highlights the continued risk of utilising arguably descriptive and/or non-distinctive trade marks even if you have previously managed to secure protection for them.
Existing brand owners should always consider the inherent registrability of their trade mark before proceeding with a fresh application. Considering the matter before filing will allow an applicant to decide whether a visual element such as a logo could be added to their arguably descriptive trade mark to alleviate the risk of an objection being raised. If a new visual element is not an option, time spent collating extensive evidence of acquired distinctiveness through use of a "risky" trade mark before a fresh application is filed will be significantly less pressured than when faced with a deadline to respond to an objection. However, if filing in the EU, it must be kept in mind just how difficult it can be to prove acquired distinctiveness for a Community Trade Mark as it must be proved throughout all 28 Member States of the EU. This cautionary tale also helps to highlight the importance for brand owners to maintain extensive documentary evidence of use of their trade marks in case a situation like this ever arises.