Final nail in the coffin?

1st Dec 2018

The failure of another application may mark the end of the road, suggests Gavin Stenton. O/563/18, Edward Green & Company Ltd (Application), UK IPO, 11th September 2018.

Final nail in the coffin?

O/563/18, Edward Green & Company Ltd (Application), UK IPO, 11th September 2018

Key points

  • The average consumer of luxury fashion goods is likely to be the general public, irrespective of a premium price point
  • Applicants for, and users of, non-traditional signs should invest in educating their consumers so that they recognise such signs as veritable badges of origin

Following two unsuccessful attempts at registration in 2006 and 2009, Edward Green & Company Ltd (Edward Green) filed a UK application for a sign covering footwear (and accessories) in class 25. 

On 11th April 2017, the Examiner raised an objection under s3(1)(b) of the Trade Marks Act 1994, stating that the mark was devoid of distinctive character. Edward Green subsequently requested a hearing and filed evidence of acquired distinctiveness. Following a hearing on 4th September 2017, the s3(1)(b) objection was maintained and the evidence of acquired distinctiveness held to be insufficient. Additional submissions and evidence of acquired distinctiveness were filed on 7th November 2017. However, on 4th December 2017, the objection was upheld and the application refused. Edward Green then filed form TM5 on 4th January 2018, requesting a full statement of grounds of the reasons for the refusal. 

Examiner’s grounds

The Examiner stated that, despite Edward Green’s attempts to persuade the Examiner to the contrary, the relevant consumer was the general public. Although Edward Green’s shoes cost more than £900 per pair, it did not follow that the relevant consumer would be a specialist and it would be inappropriate to discount potential members of the public based merely on the Applicant’s commercial intent. 

The Examiner then explained that the sign was devoid of any distinctive character because it “does not possess any particular feature which would distinguish it from simply a series of nails used to fix the heel to the upper part of the sole”. Consumers would not therefore attach any trade mark significance to such a simplistic sign.

When considering acquired distinctiveness in the context of non-traditional trade marks, the Examiner focused on the doctrine of reliance and referenced Vibe Technologies (O/166/08), noting that: (i) mere association is not enough; (ii) the use of the sign must establish in the perception of the average consumer that the product originates from a particular undertaking; and (iii) that perception must result from the use of the sign as a trade mark. 

In assessing the evidence of acquired distinctiveness (which included details of the shoe manufacturing process, turnover figures, advertising strategy and witness statements from customers and trade experts), the Examiner explained that it failed to demonstrate that the sign itself had been used as a trade mark, or had made any attempt to highlight to consumers that the nail heel pattern denoted trade origin. Citing Birkenstock Sales GmbH (O/072/18), the Examiner concluded that the evidence would have been more persuasive had the Applicant shown that it had conducted a programme of education in its marketing activities.

EU challenges

Edward Green has a corresponding EU trade mark application (No 17945135) pending before EUIPO that includes a claim of acquired distinctiveness. On the basis of its UK trade mark application, this EU application is likely to face significant challenges, not only because acquired distinctiveness will need to be shown in all 28 Member States, but also possibly on the basis that the nails (as “characteristics” of the sign) could be construed as being necessary to obtain a technical result (which cannot be overcome by demonstrating acquired distinctiveness).

Gavin Stenton is a Chartered Trade Mark Attorney, and Partner at Penningtons Manches LLP

Holly Strube, a Senior Associate and Solicitor at Penningtons Manches LLP, assisted with this article.