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As Trade Mark Attorneys, one of the questions we are asked on an almost daily basis is whether new marks are registrable. As UK IPO practice is forever evolving, it can be helpful to conduct regular reviews of the kinds of marks being refused by the UK IPO. In the latest instalment of our seasonal round up, we take a look at some interesting refusals of UK trade mark applications which issued in the second half of 2022.
With the growth of veganism and plant-based diets, it is hardly surprising that recent years have seen an increase in trade mark applications for plant-based goods. A German applicant filed a UK designation of an International registration for the following mark covering ‘Dairy products and dairy substitutes’ amongst other goods in Class 29.
The application was refused under Section 3(4) of the 1994 Trade Marks Act as the mark includes the term ‘Milk’ which is a protected term under EU Regulation No. 1308/2013 (which applies directly in Great Britain by virtue of a Statutory Instrument). Under this Regulation, the term milk is reserved for dairy products derived from animals, but this application covered dairy substitutes. Despite the mark making clever use of the prefix ‘un’, which the applicant clearly believed denotes to the consumer that the product is not an animal based dairy product, the UK IPO refused the application stating this was not sufficient to prevent the average UK consumer from being confused in to thinking that the products were derived from animals.
We would have expected the UK IPO to raise a further objection that the mark is deceptive in relation to ‘dairy products’, but it did not do so, presumably because to raise this objection would have been to contradict the assertion that the public would not understand the term ‘unmilk’ as referring to a product which is not milk.
This raises an interesting discrepancy between the protected meaning of terms like milk and the understanding of these terms by consumers. Although colloquially it might be common for consumers to refer to plant-based alternatives as ‘milk’, manufacturers in the industry are prevented from doing so and these refusals suggest that they will also struggle employ a play on words to indicate a product is not milk or dairy.
Not disguised enough
Plantfuel tried to pre-emptively evade refusal for the UK designation of its mark ‘NO F***CKING WHEY’ (No. WO0000001663264) by replacing the implied ‘UCK’ with asterisks, but had little success. Section 3(3)(a) of the Trade Mark Acts states a mark should not be accepted if it is contrary to public policy or to accepted principles of morality and was cited as the reason for this refusal. The UKIPO saw the mark as offensive and therefore unregisterable.
Whilst the UKIPO does not have a history of being particularly harsh on refusing swear words in applications, over the past few years it appears as though there is a change in practice and the UKIPO is becoming stricter when it comes to refusing marks containing profanities. Historically, the UK IPO has been willing to accept mark such as FCUK as registrable, but over the last few years, there are an increasing number of examples of marks including profanities being refused.
Interestingly, the mark NO F***ING WHEY was also refused by the EU IPO, but for entirely different reasons. Under article 7(1)(b) and 7(1)(c), the EU IPO argued the mark is descriptive and devoid of distinctive character. According to the EU IPO, the relevant consumer would see the sign as descriptive of a product not containing whey protein, as the application covered such goods, it was refused. In the EU IPO refusal, there is no mention of profanities being contrary to public policy suggesting that maybe a more relaxed approach is being taken by the EU IPO in this area.
According to the UKIPO register, Plantfuel’s mark is still under examination, meaning Plantfuel may trying to overcome the refusal so watch this space!
ASTRA sweets received a refusal for its UK application for the 3D shape of the beloved, fizzy flying saucer sweet. This is one in a long line of examples of the inherent difficulties trade mark owners face when trying to secure registered protection for the shape of a product.
(No. W 00000001657674)
This mark was refused, citing Section 3(1)(b) and (c) indicating that the mark was devoid of distinctive character and served to indicate the kind of product being sold. Despite ASTRA Sweets now owning the brand responsible for the creation of the sweet, given its popularity over the decades it is now seen as too generic to be registerable. In the refusal, the UKIPO provided the Applicant with a number of ‘flying saucer’ sweets sold by a variety of distributors, demonstrating it is now a generic confectionary shape.
This is an example of a brand becoming the victim of its own success and an important lesson in the need to invest in timely trade mark applications for marks which are expected to be commercially valuable.
George Floyd IP Holdings LLC was met with a refusal when trying to register the mark ‘GEORGE FLOYD’ (No. WO0000001667009). After his tragic death at the hands of Minneapolis police in 2020, George Floyd’s name became synonymous with the Black Lives Matter and anti-police movement across the US and beyond.
The UKIPO cited Section 3(6) of the Trade Marks Act in the refusal arguing the application was filed in bad faith. According to the UK IPO, should the mark be registered by anyone other than the George Floyd estate, they would unfairly be taking the property of others. This decision echoes reasoning put forward by the UK IPO when it refused applications incorporating the names of famous footballers by people who are obviously not those footballers. This approach (which is set out as the practice to be followed in the UK IPO Examination Guide) is, however, considered to be incorrect following appeals to the Appointed Person in other cases in which it was found that it was not the UK IPO’s place to raise objections on the grounds of third party rights ex officio. We have reported on the Appointed Person’s decision in the IP KAT Legal blog.
According to the UK IPO online register, the application recently proceeded to publication, but no further decisions have issued by the UK IPO. We must therefore assume that the refusal was overcome by filing permission for the application provided by George Floyd’s estate. For the time being, it seems the UK IPO has not updated its practice and is not taking heed of the Appointed Person’s comments.
This article was written by Devyani Patel, trainee Trade Mark Attorney and Sarah Neil, Trade Mark Senior Associate
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