Spicy decisions from the Trade Marks Registry

The IPKat brings you some highlights of the Trade Mark Registry's recent decisions:

  • Application to invalidate MASALA - the word mark MASALA was invalidated by Mr Hearing Officer Foley. He found that the sign, a constituent verbal component of various Indian spice mixtures, was both descriptive and customary in the trade for“cooked vegetables” in the Class 29 specification, “preparations made from cereals” in the Class 30 specification, and “foodstuffs comprising or made from any of the aforesaid goods”. The mark was merely descriptive for “infusions” and “tea and tea-based beverages”. However, it was valid in relation to beers and soft drinks. The IPKat thinks this is the right decision - he's not sure how this one got on the Register in the first place.
  • PUCCI Designer Petwear - the designer Emilio Pucci successfully opposed this mark under s.5(4) (earlier right protected by passing off). The decision is interesting from the passing off point of view as proof that you really don't need a common field of activity to succeed in a passing off claim. Mr Hearing Officer Landau found that the misrepresentation came as a result of the fact that a number of other designers had branched out into the petwear field. The damage came not only from potentially confused consumers, but also from the fact that there was a risk that the trade mark applicant would make low quality goods. The IPKat notes that such reasoning has been rejected by the Registry for the purposes of establishing detriment to repute under s.5(3).
  • MFI Make It Happen - Royal Bank of Scotland failed to convince Mr Hearing Office Reynolds that it had the goodwill in the slogan 'Make It Happen' that would allow it to assert an earlier right protected by passing off because it had used the slogan extensively with its housemark RBS. The IPKat notes that there appear to be an awful lot of s.5(4) cases floating around at the moment and wonders if there's a particular reason for it.
Spicy decisions from the Trade Marks Registry Spicy decisions from the Trade Marks Registry Reviewed by Anonymous on Friday, February 08, 2008 Rating: 5


  1. A beer or soft drink that is characterized by the flavor of masala is a (perhaps new) type of beverage that traders ought to be able to call "masala beer" or "masala soda." A registration of "masala" for such goods gives the trademark owner an unfair competitive advantage.

  2. The PUCCI case rang a bell, and sure enough there was a similar opposition which Emilio Pucci lost (see BL O/168/07).

    Keen readers may like to contrast these cases in terms of the evidence filed, which in the first case failed to establish goodwill but in the second succeeded.

    Also, in the first case 5(2) was run and the HO having found no likelihood of confusion under 5(2) was almost driven to reject the 5(4) case. In the second case, only 5(3) and 5(4) were run.

    One wonders then, in answer to your question Ilanah, whether it may pay to run 5(4) without 5(2).

  3. Sorry, on re-reading these cases it isn't so much the failure to establish goodwill under 5(4) that provides the main point of contrast, but rather the contrasting analysis of mark against mark.

    There are a number of difficult "precedents" here (McQueen/Alexander McQueen; Morgan/Lorna Morgan to name a couple).

    Still, the comments on 5(4) on its own being a good strategy remain.

  4. Thanks to you both. Further to what Mcvooty has said, this seems like what the ECJ is talking about when it keeps harping on about need to keep free - a situation where goods aren't currently being produced that would fit that description, but could be produced in the future (though, for the sake of the nation's tastebuds, I hope Masala flavoured beer is a long time coming!)


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