The IPKat is intrigued by a story in The Scotsman. A UK company has applied to register KIKOY as a trade mark for clothing. However, the term differs by only one letter from the word KIKOI, a Kenyan woven cloth worn by fishermen, which is also now popular among tourists to Kenya. The head of the Kenyan Intellectual Property Institute said:
The IPKat says that this seems to be an example of the phonetic equivalent of a term that, although not understood as descriptive by many current UK consumers, would be needed in the future by other traders. This would render it descriptive under the ECJ’s watered down freihaltebedurfnis doctrine.
"The move will lock out [Kenyan] exporters from the British market, costing the country millions of shillings and jobs."An opposition is underway by a group of Kenyan exporters, aided by the Traidicraft Exchange.
The IPKat says that this seems to be an example of the phonetic equivalent of a term that, although not understood as descriptive by many current UK consumers, would be needed in the future by other traders. This would render it descriptive under the ECJ’s watered down freihaltebedurfnis doctrine.
Kikoi kicks up a fuss
![Kikoi kicks up a fuss]()
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Thursday, February 22, 2007
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Where is the binding legal authority for saying that a phonetic equivalent of a descriptive term cannot be registered ?
ReplyDeleteRe Trade Mark "Orlwoola" (1909) 26 RPC 850 (C.A.)). ORLWOOLA unregistrable as a mis-spelling of the descriptive term ALL WOOL. There are many more example where that one came from.
ReplyDeleteKIKOY Contrary to the press report no opposition has been filed against the application to register this word in Class 25. The low cost route of filing "observations" has been used. (TMA Sec 93) The application is now marked "Delayed Acceptance" while the examiner decides whether the observations affect the acceptability of the mark. An opposition could still be filed.
ReplyDeleteNow there's a real golden oldie anonymous number 2 ! But does it hold in these more enlightened (!?) days ?
ReplyDeleteThe UK Trade Mark Registry guidance suggests that phonetic equivalents may be registrable if visually distinctive (Reed and Reed applied, the ECJ's Postkantoor ignored ! ).
All together now, repeat after me,there are no golden rules in trade marks !
Come on, anonymous no.4 - you know what anonymous no.1 meant. He/she/it wasn't talking about registering a phonetic equivalent of descriptive term for something it doesn't describe (eg KIKOY for beer) but for something it does. And when a phonetic equivalent is registrable because it's visually distinctive, tm protection surely protects only the distinctive visual impact and not the same-sounding descriptor qua sound. There ARE golden rules, lots of them. The trouble is spotting which one to apply when they collide with one another!
ReplyDeleteApart from registering the mark, the serious issue is locking out the Kenyan exporters from the UK market, which to me is not an issue even if the KIKOY is registered as a Trade mark.So long as the exporters do not use KIKOY as trade mark, i would presume they are safe from any infringement action.
ReplyDelete