NO TM FOR MUSLIM HERITAGE


The IPKat has come across Mrs Hearing Officer Ashworth’s decision in MUSLIMHERITAGE.COM.

The sign was applied for in respect of a website in Class 41 on the subject of Muslim Heritage.

The applicant pointed to its well-established use of the muslimheritage.com domain name, but Mrs Ashworth was unimpressed. She began by pointing out that arguably this should have been a s.3(1)(c), rather than a s.3(1)(b) objection, since the term described the contents of the website. However, this did not alter the ultimate result.

The average consumer would see the sign as leading to a website about Muslim heritage, rather than as an indication of source. The addition of the ‘.com’ would likewise be seen an internet address, rather than as converting the term into an indication of source. The fact that the applicant had organised an exhibition under the banner “1001 Inventions: Discover the Muslim Heritage of our World” was of no assistance. It was not use in relation to the applied for services, and use in a single exhibition was unlikely to lead to acquired distinctiveness.

The IPKat says this is clearly right. Adding a gTLD to a descriptive term can’t render a sign registrable. He’s appalled though to see a misplaced apostrophe in the decision, where the Hearing Officer says:
The exhibition was very specific in it’s content “1001 inventions” then “Discover the Muslim Heritage of our world".
For shame!
NO TM FOR MUSLIM HERITAGE NO TM FOR MUSLIM HERITAGE Reviewed by Unknown on Monday, January 22, 2007 Rating: 5

7 comments:

  1. Does this decision mean that "English Heritage" would not be registerable?

    ReplyDelete
  2. Yes, in my view it is unregisterable - in word only format.

    The fact that it has been registered in the UK is down to the proprietor showing that the term had 'acquired' trade mark status in the eyes of the average consumer.

    The Hearing Officer in Muslim Heritage.com only had the prima facie case to consider. It seems that no formal evidence of acquired distinctiveness had been filed.

    ReplyDelete
  3. Dear anonymouses (or is it 'anonymice'?) - since this post correctly identifies the superfluous apostrophe in "it's", may I draw your attention to the correct spelling of the word 'registrable', which is, er, 'registrable' and not 'registerable'.

    ReplyDelete
  4. I blame anonymous number 1 as he/she led me astray. I knew the correct spelling all along.

    PS Have you noticed that MS Word keeps underlining 'registrable' as if it doesn't exist ? You'd have thought Microsoft of all people would recognise the term.

    ReplyDelete
  5. Sorry, mea culpa! Perhaps I was led astray by the use of the word by the Patent Office:

    http://www.patent.gov.uk/search.htm?words=registerable

    What is Jeremy's excuse for writing Gruss with no umlaut in an earlier blog though? We should be told.

    ReplyDelete
  6. In due course their rights to the phase enabled them to secure englishheritage.co.uk using Nominet's DRS.

    http://www.nominet.org.uk/digitalAssets/3883_englishheritage.pdf

    ReplyDelete
  7. I meant phrase - sorry to carry on the typo errors!

    ReplyDelete

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