• IN THE UK OFFICE

    No Smoke

    A recent appeal to the Appointed Person has confirmed the increasing influence of ECJ decisions on UK registration practice. The mark applied for was Cigar. The goods claimed were "chocolate, biscuits, wafers, cookies and confectionery". The application was rejected under Sections 3(1)(b) and 3(1)(c) at a Hearing. The Hearing Officer found that the mark, when viewed in relation to the goods claimed, may serve in trade to designate certain characteristics. He also commented that

    "The fact that the goods are not related to smoking is not relevant and I have to consider the possible effect that registration of this mark might have on other businesses in the food trade. For instance, it would seem perfectly reasonable that a novelty confectionery merchant would wish to describe, e.g. chocolate in the shape of a cigar as a cigar chocolate and use such a description in the promotion of these goods".

    In support of his findings under Section 3(1)(c), the Hearing Officer also referred to earlier decisions of the Appointed Person, in particular AD2000 (1997 RPC 168) where it was stated that

    "Although Section 11 of the 1994 Act contains provisions designed to protect the legitimate interests of honest traders, the first line of protection is to refuse registration of signs which are excluded from registration by the provisions of Section 3".

    The applicant offered to limit the specification of goods by the addition of the words "but not including any such goods in the form of cigars". However, this was also rejected as it would, in the Hearing Officer's view, render the mark deceptive (Section 3(3)(b)).

    The applicant appealed to the Appointed Person (Prof. Annand) who reversed the decision and allowed the application to proceed for all the goods claimed and without a limitation excluding cigar shaped products. In a wide ranging analysis of recent ECJ decisions in this area, the Appointed Person ruled as follows:

    • Dealing with the relationship between Section 3(1)(c) and Section 11(2)(b) of the 1994 Act and quoting from the Baby-Dry decision


    "It is clear from those two provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is…to prevent registration as trade marks of signs or indications, which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function".

    • Section 3(1)(c) was not concerned with the notion of keeping signs fully for use. This was addressed by Article 6 of the Trade Mark Harmonisation Directive (equivalent to Sections 11(2) and (3) of the 1994 Act).

    • The test for descriptiveness under Section 3(1)(c) should be determined in accordance with the first sentence of paragraph 39 of the Court's judgement in Baby-Dry. The relevant question is whether Cigar may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which registration is sought.

    • The Office's objections to registrability were based upon the assumption that "what is at issue here is really novelty shaped confections in the shape of cigars". The Hearing Officer in his decision used the expression "a cigar chocolate". The more usual expression would be "a cigar shaped chocolate". Such a syntactical difference from the usual way of referring to the product suffices, according to the reasoning of the Court of Justice in Baby-Dry, to indicate that the mark does not fall foul of Section 3(1)(c).

    • The Doublemint and Easybank decisions of the Court of First Instance are to the effect that in order to be regarded as having an exclusively descriptive character for the purposes of Article 7(1)(c) of the CTMR, a sign or indication must enable the relevant consumer to identify immediately and without reflection the goods or services at issue, or one or more of their characteristics.

    • At the date of the present application (11th February 1999), Cigar was not a term used (or which might be used) in the common parlance of the relevant public to designate chocolate, biscuits, wafers, cookies or confectionery or their essential characteristics. Instead, because those goods have nothing to do with tobacco or smoking, the mark is fanciful and possessed of sufficient individuality to indicate that the goods with reference to which it is to be used recurrently by the applicants are those of one and the same undertaking and, so qualifies for registration as an unused mark under the 1994 Act. That is the case whether or not the applicant uses the mark in connection with cigar shaped chocolate etc.

    • Because Cigar is fanciful when viewed in relation to the Class 30 goods claimed, the mark is not devoid of any distinctive character for the purposes of Section 3(1)(b).


    Comment

    This case shows that the recent line of ECJ cases dealing with absolute grounds of refusal in which the trade marks Baby-Dry, Doublemint, Easybank and New Born Baby have been accepted should lead to a less stringent approach to examination both at OHIM and EU national trade mark offices. The acceptance of Cigar for chocolate and similar, in the face of a general acceptance by the Tribunal that the phrase "cigar-shaped" was descriptive, confirms that marks that have even minor syntactical differences from the usual way of referring to the goods may, from now on, be viewed as acceptable. This development is, of course, a double edged sword. On the one hand, trade mark owners want their own marks to sail through to registration without trade mark offices raising what they see as unjustifiable objections. On the other hand, those trying to clear a mark for registration and use may now be faced by a host of UK, CTM and other registrations for marks that are, at best, of borderline distinctiveness. The defences against infringement found in EU national trade mark law as well as the CTM Regulation will offer very little comfort in such a situation, since the defences only come to the aid of those who intend to use the sign in a non trade mark sense.