SPOT THE DIFFERENCE

Under s.41(2) of the UK Trade Marks Act 1994, an applicant can file a single application for the registration of a series of marks where all of the marks “resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark”. Where a mark is considered unregistrable by the Registrar, under s.37(3) he must inform the applicant and give him an opportunity to make representations or amend the application, otherwise the application will be refused. The Lord Chancellor’s Appointed Person (LCAP) considered the requirements for series applications in the recent Gateway case.

Gateway applied to register a series of fifteen marks comprised of three or four “cow spots” (the characteristic black on white blotches found on many cows) for Classes 9 and 35 in a single application as a series. The Registrar refused the application, stating that the marks did not constitute a series since they differed as to their material particulars and that, furthermore, none of the applied-for marks could be divided into separate series (e.g. one of three spot marks and one of four spot marks) since the marks possessed a low level of distinctive character. What he meant by this was that any variation, including the number, size and configuration of the sports in each mark, affected the identity of each mark. Gateway appealed to the LCAP, arguing primarily that the concept behind all the marks was the same, so they would all “ring the same bell at the same pitch” in terms of their perceptions and recollections of the relevant consumer and that, even if this was not the case, Gateway should have been given the opportunity under s.37(3) to take corrective action to neutralise the objections. Gateway also objected to the test the Registrar used for determining the identity of the mark and doubted that he had made the assessment from the point of view of the relevant consumers.

The Hearing Officer’s decision was set aside and the case was remitted to the Registrar: According to the LCAP, the identity of a mark must be judged by reference to the specific individuality of that mark, assessed according to the way it would be perceived and remembered by the average consumer of the goods or services concerned, rather than by reference to the general nature or common characteristics of all the marks in issue. The average consumer here is reasonably well-informed and reasonably observant and circumspect. The assessment under s.41(2) requires an examination of whether all visual, aural and conceptual differences are insubstantial in terms of their effect on the identity of reiterated trade mark.

In this case, it was wrong to take an “all or nothing approach” i.e. that either all of the marks constituted a single series or none of the marks constituted a series. Instead, the marks could be divided into “sub-combinations” of marks that would satisfy the requirements of s.41(2). Comparing each of the fifteen marks with each other would require a hundred and five different comparisons, but it was not necessary for the LCAP to perform such a comprehensive analysis. Clearly there were differences in at least five of the comparisons that would modify the distinctive character of the marks in issue, according to their impact on the perceptions and recollections of the average consumer, and so the complete set of fifteen was not registrable as a series. However, since there was scope for some corrective action which would salvage some of the marks as a series, the Hearing Officer should not have denied Gateway the opportunity to take appropriate corrective action under s.37(3). It was for the Registrar to determine which marks could be saved, though the LCAP did not think that it would be sufficient to simply divide the application into one for three-spot marks and another for four-spot marks.

The IPKat notes that the LCAP has taken a narrow approach in requiring a mark-for-mark comparison and by not paying attention to the concept behind the series. Such a strict approach is called for by the wording of the Act. However, the IPKat also welcomes the LCAP’s realistic approach to the division of invalid series. Nevertheless, the IPKat wonders what benefit is conferred by being the owner of a series of marks. If the marks in the series are really so similar, then any use by a third party that infringes one of the series would in any event infringe all of the series, in which case it would be sufficient just to have a single registered mark.

European Court of Justice’s ruling on how to tell if marks are identical here
Identical cows here and here
Cow-spotting here, here, here and here