No go for GO: Skechers scupper trade mark applications

In the next few weeks, this Kat will be posting on a number of cases that are still of interest though they are no longer "hot news", these being decisions on which was unable to comment at the time they were published since he was up to his whiskers in conferencing and foreign travel. The first of these is GO Outdoors Ltd v Skechers USA Inc II [2015] EWHC 1405 (Ch), a 19 May decision of Mrs Justice Rose, sitting in the Chancery Division, England and Wales, on an appeal from a decision of the UK Intellectual Property Office.

GO Outdoors ('GO') -- apparently the UK's largest specialist retailer of camping equipment, outdoor clothing and footwear -- applied to register as UK trade marks the words GO WALKING and GO RUNNING in both stylised and non-stylised forms (as represented on the right) for rucksacks and bags (Nice Class 18) and retail services connected with the sale of clothing and accessories (Class 35).

GO had used these marks over many years in its stores' signage, marketing literature and radio and television advertising throughout the UK. US footwear manufacturer Skechers opposed on absolute grounds, objecting that the marks were devoid of any distinctive character under the Trade Marks Act 1994 s 3(1)(b) and that they were purely descriptive contrary to s3(1)(c) of the same Act.

The hearing officer [the seasoned George Salthouse, interjects Merpel] dismissed the opposition under s 3(1)(c) since he concluded that the terms "go walking" or "go running" did not actually describe the basic activities of walking or running: while "walking" and "running" described the basic activity, the addition of the word "go" altered their character by turning them into an order or exhortation to carry out the activity in question.  However, he agreed with the challenge based on the marks' inherent distinctiveness under s 3(1)(b), holding that they failed to meet the criteria in Case C-398/08 P Audi AG v OHIM [the 'Vorsprung durch Technik' case, noted by the IPKat here] in that they lacked originality, did not require any interpretation by the relevant public and were not indicative of a particular undertaking. Nor had the marks acquired distinctiveness through use.

GO appealed, submitting that the hearing officer had wrongly treated Audi as deciding that a mark had to possess a certain originality or resonance requiring at least some interpretation by the relevant public or setting off a cognitive process in the mind of that public in order to have inherent distinctiveness; that he had made findings in relation to distinctiveness under s 3(1)(b) that were inconsistent with his findings on descriptiveness for s 3(1)(c); (3) and that he had failed to give proper weight to the evidence of the use of GO's marks over the years.

Mrs Justice Rose dismissed GO's appeal. In her view:

* the hearing officer would have been wrong to hold that Audi established that slogans could not be distinctive unless they had originality or resonance, since the requirement for a trade mark to be distinctive was no different than for any other type of mark -- but he didn't hold like that since he took the trouble to consider whether GO's marks were distinctive even if they lacked originality or resonance. The reason why he said they lacked distinctiveness was because they would not enable the average consumer to distinguish goods being retailed by one undertaking from those of another.

Skechers: putting the boot in

* the reason why the hearing officer's findings in relation to distinctiveness and descriptiveness were apparently inconsistent was because they were made in answer to very different questions. In relation to descriptiveness the issue was whether the terms were descriptive of the retail services for which GO sought registration ( they weren't), while the distinctiveness issue was whether the public would recognise those marks as an indication of origin because they were inherently distinctive or had acquired distinctiveness through use (which they wouldn't).  He thus rejected the claim to distinctiveness of the marks not on the basis that they were descriptive of the retail services but because the public would perceive them as merely pointing to where the goods were to be found in the store, not as indicating that they were from a particular source. There was therefore no inconsistency.

* on the evidence -- photographs of the inside and outside of GO's stores, its in-store banners and posters and copies of advertising material -- the hearing officer's stated reasons for finding that it did not show the kind of use that would cause the marks to acquire distinctiveness had been clearly set out and there was nothing wrong with his conclusion.

For good measure she added, obiter, that the hearing officer's decision that GO's marks did not describe the activity of shopping for outdoor clothes or shoes and did not comprise a sign or indication which might designate characteristics of that service was clearly correct.

Adds the IPKat, it is not always appreciated that, unlike oppositions under the Community trade mark system, which can only be made on relative grounds where the opposition is founded on the existence of an earlier registered or unregistered right, oppositions in the United Kingdom can (as in this instance) also be made on absolute grounds of refusal.  Merpel notes that it's never to late for GO Outdoors to rectify the position: all they have to do is just keep on using the target marks as trade marks for the goods and services in question, spend lots of money on educating their customers, suppliers and everyone else that the words "GO Walking" and "GO Running" are specific indicators of their products, amass loads of evidence to that effect, hope that someone else will use the same words in the course of trade so that they can successfully sue them for passing off -- and then apply again. Should be easy!

Rules of GO here, not to be confused with the 'other' GO here
Go Fly a Kite here
Go take a running jump here
Go to Hell here