Acquired distinctiveness and sub-brands - Tefal ‘red dot’ mark is denied trade mark protection by UKIPO

An inevitable consequence of being at home all the time is that one has to learn how to diversify their cooking repertoire - and with that comes an increasing awareness of the cookware on the market. So, when this Kat saw that the UK Intellectual Property Office turned down a registration attempt by Tefal for their ‘red dot’ mark last month, well… she wasn’t not going to look into it a bit more.

The Tefal 'red dot' mark in question

In the present case, registration of the mark in the UK was denied due to lack of distinctiveness under Art 3(1)(b) of the Trade Marks Act 1994 (‘TMA’). Featuring sub-brands and everyone’s favourite trade mark law quandary - survey evidence - let’s see what happened.

Background

In December 2018, registration was sought for the above mark as a position mark (later clarified to a figurative mark, since the UK does not expressly recognise position marks, unlike the EUIPO), consisting of “a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan)”. Registration was sought for the following class 21 goods: frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks.

Upon first examination in January 2019, the mark was rejected on the basis of section 3(1)(b) TMA as the mark was deemed to be devoid of distinctive character, on the basis that the mark, when seen by the relevant consumer, would not have trade mark significance attributed to it.

The applicant sought permission from the examiner to conduct a survey across UK High Streets in order to demonstrate acquired distinctiveness of the mark, with the examiner merely stating that the applicant must decide for itself the evidence it chooses to submit to prove acquired distinctiveness, and no comments being made about the questions asked. Following several extensions to respond to the comments of the examiner, the applicant submitted survey evidence and other material intended to show acquired distinctiveness.

Section 3(1)(b) TMA

Upon prima facie examination, the Hearing Officer noted that the sign was merely “a feature of a certain colour, proportion and position, being plainly visible within the overall shape of a(ny) pan”. It was questionable whether the feature was independent from the pan itself and that, much like shape marks, the consumer may not ordinarily consider such a feature as a trade mark in and of itself. As such, it would be unlikely to perform the essential function of trade marks since it would be perceived by the relevant consumer as decorative and/or functional. 

Acquired distinctiveness

Referring to Windsurfing Chiemsee and KitKat (EWCA), the Hearing Officer noted that the fact that a particular sign may be associated with a single undertaking does not amount to distinctiveness. The shape would have to be proven to operate as a trade mark, and thus must have been used as a trade mark in order to educate the relevant consumer that it guarantees the origin of the product.

With regards to this point, the Hearing Officer considered the context of sub-brands. Referring to BL O/072/18 (the UK iteration of the the Birkenstock sole mark case), it would have to be shown that the proprietor has the confidence to rely on the sub-brand to convey an origin message, and that this was apparent in the proprietor’s marketing. This would not be undermined by the fact that there were different versions of the red dot (some versions featuring a letter T prominently in the middle of the dot, and some where the red dot was plain) as they would fall within the range of ‘acceptable variants’ and ‘uses in conjunction with other composite marks’, as per C-12/12 Levi Strauss. 

Chef Kat
Credit: me :)

It was noted that - whilst the figures for sales, promotion and advertising, as well as total market share in the UK were substantial - the simple exposure of the sign would not be enough. It was pointed out that the ‘Famous Red Spot’, as it was referred to by extensive advertising, was all along an indicator… of heat. In the Hearing Officer’s opinion, this would prevent any perception that the use of the mark was as a trade mark and a guarantee of origin.

This position was confirmed when looking at the survey evidence. With reference to JLR v Ineos Holdings (see IPKat analysis here), it was noted that an initial recognition figure of 32.5% was statistically significant. However, this significance was tainted by the fact that some survey respondents identified it as a ‘heat spot’ or 'when the pan is hot', and therefore the mark could not separated from its technical function in the eyes of many of the relevant consumers. It was also stated that the survey contained a leading question - namely, whether the respondent would identify a product with the mark as coming from a particular company.

The mark would have to be referenced in a way other than as a simple feature, or as a technical feature. Whilst it was not illustrated (nor was it for the Hearing Officer to illustrate) exactly how the applicant's confidence in the sub-brand could be shown, it was noted that this would not necessarily have to be through independent use of the sign, and that the red dot could have been referenced in other ways in promotional material, so that intent of its use as a trade mark could have been reinforced.

Consequently, the application was refused under s 3(1)(b) TMA for the goods specified.

Comment

Of course, this case presents a unique quandary due to the mark’s technical function. However, a fundamental principle of trade mark protection permeates this case - the need for the mark in question to be used as a trade mark. 

This case supports the possibility that less conventional marks could attain trade mark protection, whilst not being the ‘main’ mark behind which a brand indicates commercial origin if it is used in its marketing. One could for instance think of the Red Bull silver and blue colour mark (heard in the EUIPO Board of Appeal last year in revocation proceedings). There, use of the mark for energy drinks was found though use of the colour combination on display cabinets containing the drink in supermarkets (amongst other things). Whilst sub-brands were not explicitly referred to, it could be regarded as similar in this respect.

And then ... there is survey evidence. One should recall the Glaxo purple case in this regard, which emphasised the probative value of survey evidence as well as the manner in which survey questions are asked (there, interviewees were only shown one image representing a shade of the colour purple, as opposed to multiple images or shades, ultimately contributing to the General Court's conclusion that acquired distinctiveness had not been proven). Thus, whilst also trying to navigate around the possibility of leading questions, one has to be careful that the evidence one presents doesn't condemn them in the process - as reference to Tefal's red dot mark as a 'heat spot' did in the present case.