ORDNANCE SURVEY FAILS TO GET CTM

The IPKat has learnt that the Ordnance Survey has failed to register the word mark OS as a CTM for its core goods.

The Ordnance Survey is Britain’s official national mapping agency. It applied to register OS as a CTM for various goods. The examiner refused the application for Classes 9, 16 and 42 on grounds of descriptiveness and lack of distinctiveness. The examiner claimed that OS was a known abbreviation for Ordnance Survey and that it would inform consumers that goods or services bearing it came from an official map-making agency. The Ordnance Survey appealed.

The appeal to the Second Board of Appeal was unsuccessful and the mark was found to be descriptive, and hence to lack distinctiveneness.

It was not disputed that OS is a short form of Ordnance Survey and that people often referred to Ordnance Survey maps or OS maps, which are often very different from those produced by commercial publishers. The mark would inform consumers that the goods or services so marked originated from an official map-making agency.

A mark must have some distinguishing feature in order to be capable of functioning as a trade mark i.e. of being able to distinguish the goods of one undertaking from those of another. The OS mark had no such distinguishing feature. Instead, it conveyed to the relevant English speaking public the message that the goods in question were of the kind that one would expect to be provided by an Ordinance Survey, regardless of whether it was the Ordinance Survey of Northern Ireland or of Great Britain. This message would not be limited to printed material and would include global positioning systems and software related to mapping.

The relevant consumer would probably also perceive the mark as an indication that the goods or services in question were of above-average quality because they had been produced by the Ordinance Survey, and not just any commercial publisher.

The promotional message was unequivocal and meant that the relevant public would see the mark as a statement to the effect that the goods and services were being offered by one of the Ordnance Surveys of the Member States, and not as an indicator of origin.

The IPKat says that the Board’s statement that consumers would perceive the goods as being of above average quality because they came from a national mapping agency does not square with the fact that the mark was thought not to indicate origin. Perhaps this is another manifestation of the problems faced by the makers of goods who have an effective monopoly in the type of goods that would be covered by that mark.