UK trade mark examiners told to handle the PAN

On Friday of last week the UK-IPO issued a new Practice Amendment Notice, PAN 1/08. The text amends bits of the Examination and Practice Work Manual which guides the practice of trade mark examiners in the UK.

Right: while PAN 1-08 is available online, some Examiners still prefer to work with a hard copy

The text of this fascinating document goes more or less as follows:

"Work Manual, Chapter 3

10 Use of the Internet by Examiners and Hearing Officers

...
10.1 When are Internet searches justified?

Web-wide searches need not be carried out for every case. Searches should be conducted either where the Examiner has identified a descriptive meaning from the usual references (that is, technical dictionaries or subject-specific websites identified by the Registry as suitable reference sources), or because the Examiner has suspicions that an apparently non-descriptive word(s) has come to be used in trade as a description. The latter might arise in fast moving fields, such as information technology where it is often difficult to keep up with the current language of the trade [The IPKat wonders, if this is a fast-moving field in which terminology keeps changing, won't an examiner be less likely to suspect that an apparently non-descriptive word has come to be used in trade as a description, not more?]. However, the same point could apply wherever the goods/services appear to be of a new type or are highly specialised.

10.2 Procedural Requirements

The Registrar must observe principles of natural justice. This means that applicants or their representatives, are entitled to know the case against them, and be given an opportunity to respond to any material that has influenced the Examiner or Hearing Officer in coming to a view of the application which is adverse to the applicant. Accordingly, where an Internet search has been conducted any relevant results should be sent to the agent or applicant with the examination report [the IPKat assumes that it is a print-out that should be sent and not merely the relevant url, since webpages have a nasty habit of going out of date: see the Court of First Instance decision in the Beast guitar case]. If a search is conducted later any relevant results should be disclosed to the attorney/applicant. If a hearing is scheduled within seven days of the later search, the attorney/applicant should be given an opportunity to postpone the hearing.

When a file leaves the examination team for a hearing, no search results should be on the file which have not been disclosed to the attorney/applicant. If a search reveals no relevant hits a file note to that effect is required.

10.3 Relevancy

10.3.1 Section 3(1)(d) [of the Trade Marks Act 1994: unregistrability of words used in the customary language or established practices of the trade]

Before an objection is taken under Section 3(1)(d) it is necessary to pinpoint sufficient use of the sign by third parties prior to the date of the application to show that it was in use in the ‘customary language’ or ‘established practices of the trade’ at the relevant date. It is not possible to lay down a minimum number of uses required to show this as much depends upon the nature of the hits (for example, use in an advert for the goods/services in a popular daily newspaper would carry much more weight than an instance of journalistic use of the sign in an article on a web site) [presumably it also depends on the nature of the goods or services for which registration of the term is sought]. In order to be relevant the use should be in the UK (for example, UK website or extract from publications circulating in the UK). The references must show use that occurred before the relevant date. Extracts showing use on overseas websites (unless they include relevant extracts from UK publications) should not be used to support a Section 3(1)(d) objection.

10.3.2 Section 3(1)(c) [unregistrability of exclusively descriptive terms]

If needed a limited number of examples of use of the sign in the course of trade in the UK as a designation of characteristics of the goods or services may support a Section 3(1)(c) objection (and a consequential section 3(1)(b) objection [i.e. lack of distinctiveness]) where a descriptive meaning can be adduced from the ordinary meaning of the sign and the purpose of citing examples of use is therefore to illustrate the capacity of the sign to function as a description in trade. This is to be contrasted with the facts in the STASH Trade Mark case [BL-0-281-04] where the word lacked any prima facie descriptive significance (for clothing).

Examples of use of words in other jurisdictions are not usually conclusive without more. This is because the same word can be descriptive in one country and distinctive in another. However, overseas use may be relevant where:
(a) the ordinary meaning of the word(s) identified in the usual reference sources suggests that the sign may serve in trade in the UK as a description and the use made of the sign in other English speaking countries [or parts of countries, such as Benidorm?] is merely confirmation that the sign is apt for such use here, or
(b) the hits suggest that the sign in question had, at the date of the application, been adopted in other English speaking countries as the name of (or an abbreviation for) a new sort of product or service.

10.3.3 Use in trade

... objections under Section 3(1)(c) can only be based upon the existence or likelihood of the sign being used for descriptive purposes in trade in the goods/services. One or two isolated examples of journalists using a word as a description will not, without more, serve to show that an apparently meaningless or inapt word is apt for use in trade as a description. On the other hand, a persistent pattern of descriptive use by journalists (particularly in trade papers) is sufficient to establish that the sign is liable to be used in trade as a description [what if there are many examples, but they are all from the same journalist or are caused by the same-subeditor?].

28. Domain names and Section 3(1)

... It is common-place for goods and services to be sold in the UK under [a domain]name, that is, the domain name is being used as a trade name or trade mark, and the Registrar will, subject to the usual criteria of the Act, permit domain names to be registered as trade marks. Elements of the domain name such as ".com" or ".co.uk" are considered to be totally non-distinctive. As a general rule, one should consider whether the remainder of the mark is descriptive or non-distinctive; if so, there is likely to be an objection under Section 3(1)(b) and or (c) of the Act.

There may be exceptions. For example TWIST AND SEAL would be liable to an objection for storage jars on the basis that it describes a characteristic of the goods,

Right: Seal without the twist ... or the .com (National Geographic)

whereas the addition of ".COM" gives the sign as a whole a trade mark character [in other words, when it comes to two unregistrable factors, 0 + 0 = 1, the ECJ's BABY-DRY equation].

For further guidance on domain names see BL O-008-07 (85Kb) ... Application ... by FSTC Ltd Foundation for Science Technology and Civilisation, for the mark MuslimHeritage.com. Also the Decision of the Second Board of Appeal of 18 July 2006 Case R 338/2006-2, DNI Holdings, Ltd for the mark SPORTSBETTING.COM

35.8 Use of Geographical Limitations to overcome objections

As goods travel, the actual geographical origin of the goods is not always apparent. An objection under Section 3(1)(c) cannot therefore be overcome by a limitation to exclude goods originating from the place whose name they carry.

In the past the Registrar has permitted a territorial exclusion to be entered under s13 of the Act in respect of services relating to little known locations (unless the place has a relevant reputation). This can no longer be allowed in view of the comments in Bovemij Verzekeringen NV v Benelux Merkenbureau, Case C-108/05 [EUROPOLIS], which makes clear that the mark must be distinctive in the whole of the territory of the member state [Merpel would like a little clarification here: is this what Bovemij clearly established?].

Addendum to Chapter 3

AIRPORT

Names of airports such as BIRMINGHAM AIRPORT will normally be acceptable for services without the need for evidence of distinctiveness to be filed. Objection should only be taken under Section 3(1)(b) and(c) where specifications include ‘transport services’ such as shuttle buses, taxis etc as it is likely that consumers would expect there to be more than one undertaking providing transport services to and from an airport and would therefore be descriptive of the destination/intended purpose of the services.

CONCEPT

The word CONCEPT is defined as “an idea, especially an abstract idea” [it means more than that, though: look at the UK-IPO's postal address]. Although there are goods and services where the mark, on its own, or with other matter, may be regarded as being distinctive, a cautious approach is required.

Objections under Section 3(1)(b) and (c) should be raised in circumstances where the word is considered to be descriptive, for example CONCEPT OF BIOLOGY in Class 16, CONCEPT in relation to modern construction, design, cars, music, fashion and art etc.

The word CONCEPT is also used in advertising to denote innovative and modern ideas such as DESIGN CONCEPT & FINANCIAL CONCEPT.

JUST

When meaning “we specialise in”, for example, JUST EDUCATION, object under Section 3(1)(b) and (c). This practice has been updated in line with High Court Decision Just Employment (a firm) v Just Employment Law Ltd [2007] EWHC 2203 (Ch)

When meaning “pure”, for example, JUST JUICE, object under Section 3(1)(b) and (c). When meaning “all that is required” for example, JUST PLUG IT IN, object under Section 3(1)(b) and (c). When used in a laudatory phrase, for example, JUST THE ONE YOU WANT, object under Section 3(1)(b) and (c).

The same practice will apply to SIMPLY marks, for example, SIMPLY WOMEN’S for clothing will attract an objection under Section 3(1)(b) and (c) [so SIMPLY by itself wouldn't ...].

MIRACLE

Acceptable for many goods and services when used on its own but care is required in relation to some articles of clothing such as MIRACLE PANTS and goods in for example, classes 3 and 5 and related services where claims to a MIRACLE product are widely used in advertising. When used in combination with other words for example, MIRACLE CURE, MIRACLE OF BIRTH etc. the word is more likely to have descriptive connotations.

ORGANIC

Marks containing the word ORGANIC would lead the average consumer to assume that the goods were either produced organically or derived from organic produce. Consumers would pay a premium for these goods and would be deceived if the goods were not organically produced.

As such an objection under Section 3(3)(b) should be raised if the specifications are not limited. This objection can be overcome by limiting all the goods to being of organic origin.

An EC directive has made it unlawful to refer to goods as being organic if they are not (see Article 2 of Council Regulation No. 2092/91 and the Judgment in Comité Andaluz de Agricultura Ecologica, C-107/04) [Merpel wonders, what about goods for which the word ORGANIC would normally be purely fanciful, such as motor cars?] ".