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Saturday, 9 April 2016

'Corn Thins' trade mark found to be descriptive

For quite some time, producers of crackers and breads have incorporated the term "Thins" into their product names. Examples which Kat readers may be familiar include Ryvita Thins, Nut-Thin and Sandwich Thins.   Jim Dennis, a partner at Gordon Dadds, brought to the attention of the IPKat another such product, which was recently embroiled in a trade mark battle. ‘Corn Thins’, made by Real Foods Ltd, has been sold in the EU since 2012.  In January 2012, Real Foods registered ‘Corn Thins’  in standard characters as a CTM mark [now EU TM]. Two years later, Rude Health Foods Ltd applied for invalidation of this mark based on Article 7(1)(b) and 7(1)(c) of the Community Trade Mark Regulation (CTMR), alleging that the mark was devoid of distinctive character and descriptive (judgment available here).

Grammar cat agrees with the Cancellation Division
In assessing descriptiveness under Article 7(1)(c),it was accepted that ‘Corn’ was descriptive of the goods, being ‘flatbread slices predominantly of corn’. However, the grammar pedants at the Cancellation Division found that the word ‘thins’  to be a neologism, suggestive of the nature of the product, rather than descriptive, because ‘thins’ is the third person conjugation of the verb ‘to thin’. The combination of ‘corn’ and ‘thins’  therefore did not make  grammatical sense since ‘thins’ is not an existing noun. This Kat finds this surprising as it seems apparent that ‘thins’ indicates the nature of the goods. She would not have gone so far as to consider the classification of the word as a noun, verb or adjective in reaching this conclusion. It seems unlikely to her that the classification of the word would have a significant impact on interpretation by the average consumer.

The Cancellation Division also found that the evidence submitted, showing  that ‘Thins’ had been used descriptively on many other products, was not relevant because they either post-dated registration or were undated. The Division asserted that  evidence regarding  descriptive use of the word in the food sector had to be prior to the date of registration.  They found that the arguments asserting distinctiveness under Article 7(1)(b) were also based on the  arguments asserting descriptiveness and thus failed for the same reasons.

The Fourth Board of Appeal came to what this Kat thinks is a more sensible result, finding that ‘Corn Thins’ is indeed descriptive of the goods. According to the Board, [para 18]—

 “Indeed, no evidence at all is necessary for the self-evident fact that the average English-speaking consumer will immediately perceive the word ‘THINS’ for the registered goods ‘crispbread slices predominantly of corn’ just as a description that such slices are thin” and [ para 24] “This is even corroborated by the evidence submitted by the respondent itself; in the UK magazine ‘Food Matters’ from August 2006, under ‘new products’, where it states ‘Corn thins they say they are – and indeed they are!’”

The assertion by the Cancellation Division that ‘thins’  is not descriptive because it is a verb rather than a noun was also addressed. The Board of Appeal took a common-sense approach and stated [para 19]—

 “The relevant products being slices of food, the only reasonable quality that the word ‘THINS’ could refer to for the English-speaking relevant public is that the slices are thin. This is not mere allusion but it clearly describes the product at hand, regardless of the fact that the word may be newly coined and is not present in English dictionaries.”

The Board of Appeal also noted that combining two descriptive terms does not make them any less descriptive, and the capitalisation of ‘T’ in thins did not equate to use as a trade mark.

With regards to evidence of use in the food sector, the respondent argued that ‘thins’ was not descriptive in 2012 at the  time of registration. The Board of Appeal referred to cases of C-191/01 Doublemint [para 32] and T-19/04  Paperlab [20], which both state that that the mark did not have to be descriptive at the time of registration. Rather, the assessment depends on whether the mark could be descriptive. The Board drew a distinction between 7(1)(c) and 7(1)(d).  It  stated that whether a sign is used in a descriptive way by the majority of the public is dealt with by Article 7(1)(d). which addresses  trade marks,consisting exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade.

Finally, in considering acquired distinctiveness under Article 7(1)(b), the Board found that [para 29]—
“evidence submitted in this regard is manifestly insufficient”.
This Kat would have expected Real Foods to focus their efforts on demonstrating acquired distinctiveness rather than descriptiveness, particularly as the product had been sold for two years prior to the invalidation proceedings. Under Article 52(2) of the CTMR, “Where the Community trade mark has been registered in breach of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods and services which it is registered.”

In defending against invalidity, Real Foods, somewhat surprisingly, did not argue that the mark had acquired distinctiveness until the appeal stage. The evidence relied on at that stage consisted of sales volumes and advertising material, which the court rejected because such use of the sign was not enough to demonstrate consumer awareness of the sign as a trade mark.

Corn Thins has now been removed from the register.

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