O2 pushes the envelope

The IPKat has learnt of an intriguing decision from Professor Ruth Annand, sitting as the Lord Chancellor’s Appointed Person. O2 applied to register a range of mobile phone icons, such as a picture of an envelope, a football and a phone with an arrow pointing at it (used, it seems, to denote downloads) for a variety of goods and services, including telecommunication apparatus and services.

The Hearing Officer refused the applications as being descriptive under s.3(1)(c). In a nutshell, Professor Annand said that this was the wrong approach. Instead of looking at whether the mark in question consisted exclusively of signs or indications that designated the characteristics of the goods or services, or if instead they contained other elements which would have rendered them not wholly descriptive, the Hearing Officer looked at the icons to see whether they had any additional elements (such as colour) which would confer distinctive character upon them.

However, Professor Annand held that the Hearing Officer was correct for most of the icons in terms of result. The marks were barred from registration – but under s.3(1)(b) NOT s.3(1)(c) since consumers would not seen them as distinguishing origin.

This type of case makes the IPKat rather uncomfortable. There clearly is a public interest in keeping signs which are sort of allusive to one of the functions of the goods or services free, but is not directly descriptive of those goods or services free, but the system isn’t quite equipped for tackling these kinds of concerns. It seems risky to leave the availability of such signs to other traders to consumer perception, but this is exactly what shifting the issue to s.3(1)(c) does.
O2 pushes the envelope O2 pushes the envelope Reviewed by Unknown on Tuesday, June 19, 2007 Rating: 5


  1. This is the same issue they have been having for some time - the confusion between the technical basis for s. 3(1)(b) and (c) arguments. The ECJ has made it clear that freihaltesbeduerfnis is only appropriate as a basis in relation to 3(1)(c) - hence you can counter-argue that in fact the mark is not wholly descriptive/the normal way of describing and as such there is no need to keep free.

    3(1)(b) however is only intended to cover those marks which could not function as a trade mark for the goods of interest. Arguably O2's do (I'm not from O2 or their advisors). The real issue with 3(1)(b) is that it is much more difficult to overturn as it is a perception which doesn't need a strong basis (as opposed to 3(1)(c) which is subject to proof of descriptiveness in the UK/"sister territories")

    It simply seems that 3(1)(b) is the choice of the examiner in a hurry who feels that a mark should not be registered, but simply cant decide why...

  2. 3(1)(c) doesn't actually need proof of dscriptiveness but I agree with much of what's said above.

    The APs rationale in this case is I think at best unclear, at worst, at odds with other authorities.

    Surely the reason the mark is devoid of distinctive character is because the icons fulfil a descriptive function:namely to indicate a particular function or feature of eg a mobile phone.


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