Distinctly undistinctive: Originality key to trade mark protection

Brand owners should ensure new brand names are original and capable of indicating the trade origin of the goods or services they provide, or they may find they have little, if any, protection.

 

A trade mark must be distinctive and it must be capable of performing the ‘essential function’ of a trade mark, namely identifying the commercial origin of the goods or services supplied by the brand owner, enabling the consumer to distinguish the brand owner’s goods or services from those which derive from competitors.

Marks which are purely indicative of the character of the goods or services in question generally are not capable of receiving protection. It has long been understood that laudatory words, which operate as an indication of quality, are generally incapable of registration as a trade mark as they tend to lack the requisite distinctiveness to fulfil the essential origin function.

In some cases, a brand owner can acquire distinctiveness in an otherwise descriptive mark through use.

Descriptive or laudatory marks which slip through the net and achieve registration are vulnerable to being declared invalid.
 

Lidl

It was therefore no great surprise that discount supermarket Lidl recently lost its fight to register a Community Trade Mark in its ‘Deluxe’ logo used on its premium range of goods.

The General Court of the European Union upheld the European trade mark registry’s decision to reject the mark.

Lidl had attempted to register the mark in the form of a stylised logo which incorporated elements other than the descriptive word, "Deluxe". The General Court considered the mark as a whole, but found that the word Deluxe was particularly prominent, and the graphic representation was nothing out of the ordinary and merely underscored the laudatory nature of the mark.

The General Court found that the mark would be perceived by consumers as a promotional tool or slogan to indicate the products were of a superior quality, but not as a guarantee of trade origin.
 

Supreme Petfoods

Similarly, a pet food manufacturer found it was unable to enforce its trade marks in the word "Supreme".

The High Court found that:

  • The word mark "Supreme" was descriptive and laudatory, so lacked distinctive character;
  • The specific font of the Word Logo added nothing to create distinctive character; there was a question whether the stylised "S" made it distinctive; the court considered it did not, but even if it did any protection would be limited to the stylised "S";
  • The Ribbon Logo had some distinctive character as a result of its visual presentation; but that did not confer any monopoly in the word element "Supreme" alone.

Supreme Petfoods had acquired ‘a slender degree’ of distinctive character in its marks through longstanding use in relation to small animal food, but the court declared the registration of the Supreme word mark and the Word Logo invalid except in relation to small animal food.

Use by a competitor of the word "Supreme" on packaging for its small animal food did not infringe Supreme Petfoods’ trade marks. The court found there was no effect on the origin function of Supreme Petfoods marks; the competitor’s use was purely descriptive of the quality of the product and, in any case, honest concurrent use; there was no similarity with the graphical elements of Supreme Petfoods’ trade marks (the presence of the non-distinctive word Supreme was not enough).
 

Comment

Brand owners may find it difficult to register promotional slogans as trade marks. A slogan which does not pass the distinctiveness test is unlikely to be saved by graphical representations included in a logo; if it is, the protection may be limited to the graphical elements of the mark and not the slogan itself.

The key message is that it pays for brand owners to be original when creating their brands.