We’ve all been there. The Marketing team comes up with a shortlist of branding ideas for the latest product or service – and at the top of the list is a brand which is descriptive. As trade mark lawyers, we wouldn’t be doing our jobs properly if we didn’t explain that the descriptive brand will be more difficult to register as a trade mark than a made-up, distinctive name (in the UK anyway). Plus, it’ll be harder to enforce. However, the appeal of a descriptive brand (simple and clear) can’t be denied, especially with internet searching and online sales now so important.
In this post, we’ll take a look at a few obstacles to enforcing a descriptive brand in the UK and Europe, and how to overcome them. We’ll assume that you’ve already managed to get the descriptive brand registered as a Community Trade Mark (CTM) – ideas for improving your chances of that are for another day. Two recent UK cases show that even where a CTM is cancelled for being descriptive, the brand owner can still get a result in the right case by relying on unregistered rights.
By way of background, a registered trade mark which is “descriptive” is vulnerable to cancellation in Europe. A trade mark is descriptive if it consists:
…exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering the service, or other characteristics of the goods or service.
Obstacle 1 – Invalidity counterclaim
The first obstacle you’re likely to face is a counterclaim to invalidate the mark. Of course, you can have an argument about whether your mark is truly descriptive within the meaning of the case law. However, even if you lose that argument, you can save your mark from cancellation if you can show the mark has “acquired distinctiveness”. That is, your use of the mark after registration means it now serves to identify goods/services as coming from you, as opposed to any other trader.
How do you prove acquired distinctiveness?
You need substantial evidence of use of the mark. This would include e.g. sales volumes, size of customer base, marketing spend, market share, number and geographical spread of ads placed (online and offline), number of unique website hits, number and frequency (and size of audience) of promotional emails or other communications, awards won, sponsorship activities, and press clippings, including online reviews referring to the mark. It is important to show how the mark is used (for example, whether other marks are present). If you can get evidence showing that customers have approached you having seen an advert or article using the mark, that will help. As will evidence that trade and professional associations use the mark to identify your business.
It is also possible to conduct a survey to prove acquired distinctiveness. The role of surveys designed to prove confusion in UK trade mark litigation is now rather restricted following recent Court of Appeal decisions. But the Court may be more likely to allow survey evidence when it is designed to prove acquired distinctiveness. This happened in the recent Enterprise v Europcar case relating to Enterprise’s ‘e’ logo.
What if your CTM is cancelled?
One drawback of your CTM covering the whole EU is that if it contains descriptive English words, in order to combat an invalidity counterclaim you will have to prove acquired distinctiveness not just in the UK but also a number of other EU countries where English is sufficiently well spoken for the descriptive character of the words to be perceived (e.g. Ireland, Malta, Netherlands, Germany, the Nordics, etc).
Even if you can’t do this and your CTM is cancelled, all is not necessarily lost.
Preserving registered trade mark rights
You could “convert” a CTM which is found invalid into a bundle of national trade mark applications with the same filing date as the original CTM. This of course excludes any territory where the grounds for invalidity are made out. In those countries, you could re-file for a national trade mark if you subsequently started to trade there and built up sufficient evidence of acquired distinctiveness.
Alternatively, you could re-file for a CTM (with a later filing date), once you have built up acquired distinctiveness throughout all EU territories where the mark was found to be descriptive.
Enforcing unregistered rights in your brand
If you lose your CTM, you may still have unregistered rights you can use to stop infringers. In the UK, you could rely on “passing off”. You would need to show you have “goodwill” in the brand, the adverse party’s use of its mark misrepresents that its goods/services are yours, or have some trade connection to you, and this causes you damage. Two recent UK cases (Sofa Workshop and Ukulele) show the value of such a claim. In those cases:
- The CTMs relied on in each case (SOFA WORKSHOP and THE UKULELE ORCHESTRA OF GREAT BRITAIN) were found to be descriptive.
- The claimant successfully proved acquired distinctiveness, but only in the UK (and some other EU countries), not in all relevant EU countries.
- As a result, the CTMs were invalidated.
- However, the claimants still won because they succeeded on their passing off claim.
In both cases, the evidence which persuaded the Court that the CTMs had acquired distinctiveness in the UK was sufficient to found “goodwill” for passing off purposes.
When considering a passing off claim, if you are based outside the UK it is worth bearing in mind you will need a customer base in the UK and not just a reputation there. This was confirmed by the UK Supreme Court in the recent NOW TV case.
How about outside the UK? Passing off is an English law concept, but there may well be other grounds you can rely on elsewhere. For example, in many countries within continental Europe a claim can be brought on grounds of “unfair competition” where you have an established business in that country under your brand.
Obstacle 2 – Descriptive use defence
Let’s say you manage to defeat the invalidity counterclaim, either by arguing your CTM is not descriptive or by proving that it has acquired distinctive character in all relevant territories. The next thing a defendant might throw at you is a ‘descriptive use’ defence (saying that their mark is simply an indication concerning the characteristics of their goods/services).
To succeed, such use must be “in accordance with honest practices in industrial or commercial matters“. Essentially, this means acting fairly in relation to the legitimate interests of the trade mark owner.
In the Ukulele case, the defendant fell at this hurdle. The founders of the defendant business had known about the claimant when they were setting up. The Judge found they ought reasonably to have known that “from a commercial standpoint they risked objection from [the claimant]“, and that in pressing ahead the defendants acted outside “honest practices”.
Obstacle 3 – “Small differences” defence
If you don’t manage to knock out the counterclaim, and are relying on a passing off claim in the UK, you may face an argument that even small differences between your mark and the defendant’s mark are enough to avoid passing off. The Office Cleaning Services case established the principle that where a trading name is wholly or partly descriptive, the Court will accept comparatively small differences as averting confusion, on the basis a greater degree of discrimination can be expected from the public than where trade names are distinctive.
However, the defendants failed on such an argument in the Ukulele case. The Court found that the principle from Office Cleaning does not apply where the claimant’s trade name has acquired a “secondary meaning”, so that in the relevant market it has come to function as a trade mark. If your (at first sight) descriptive brand has a secondary meaning, the Court will be more likely to hold that any confusion established results from the defendant’s sign appropriating that secondary meaning, and not from the mere fact that the defendant is describing its business in the same way.
Descriptive brands have commercial appeal, but they are harder to protect and to enforce in the UK and rest of Europe. Even so, you can bolster your position by making substantial, widespread use of your brand in a trade mark manner, in effect educating the public that it is a brand. Even if you lose your CTM, an application for conversion could still preserve registered rights in at least some parts of the EU. For enforcement, you could fall back on any unregistered rights you have built up through use (for example, under ‘passing off’ in the UK).