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In 2018, Tefal filed an application to register its ‘red dot’ as a trade mark. In this application the dot was placed in the middle of a line drawing of a cooking pan, as depicted below:
Source: UK Intellectual Property Office, Trade Mark Application No.UK00003361324
The application for this mark covered a narrow scope of cookware listed in class 21, namely, “frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, woks”. The mark was also accompanied by a description clarifying that the dotted lines of the drawing were not a part of the applied-for mark, and that protection was sought only in respect of the ‘red dot’ which could be affixed in the centre of any cooking receptacle (a pan, a saucepan, etc.).
Lack of inherent distinctiveness
The UK Intellectual Property Office (the UK IPO) refused to register the mark on the grounds that it lacks any distinctive character and therefore cannot be registered by virtue of section 3(1)(b) Trade Marks Act 1994. The UK IPO concluded that the relevant consumer would not be able to see a plain red circle as an indicator of origin of the product, but rather as being either (and purely) decorative and/or functional.
Further, the applicant’s argument that its ‘red dot’ is unique in the marketplace was neither sufficiently supported by evidence nor would it overall necessarily mean that such a mark would in its inherent characteristics be able to be perceived as a trade mark per se.
Tefal submitted its evidence of acquired distinctiveness in an attempt to prove it had educated the relevant public to see the ‘red dot’ as its badge of origin gained through its extensive use. Whilst the evidence of sales, promotion and advertising related to the pans featuring the ‘red dot’ was robust, it was not sufficient to demonstrate that the mark at issue was registrable. As the applicant’s advertising evidence itself referred to its ‘Famous Red Spot’ being a heat indicator, it would be seen by a consumer as a technical feature and not an indicator of origin.
In addition, Tefal relied on a survey which had been conducted on high streets throughout the UK. The results demonstrated statistically significant consumer recognition, where 32.5% of the respondents could indeed recognise the ‘red dot’ as indicating a connection with Tefal. However, since some of the respondents identified the mark as a ‘hot spot’, or ‘when the pan is hot enough’, it was confirmed that the mark serves a technical function rather than a trade mark function. The decision also criticised the applicant’s survey for containing a question leading the respondents to speculate about a company the product might have come from.
The applicant’s arguments and evidence failed to demonstrate that “a significant proportion of relevant consumers, not just associate the sign with the applicant, but regard it as a trade mark guaranteeing the origin of the goods”.
Nevertheless, Tefal still has a number of other IP rights and mechanisms in its arsenal to be able to enforce against third parties’ unauthorised use of the ‘red dot’.
Although position marks as well as other non-conventional marks are registrable in theory, in practice they often face a number of obstacles. While some position trade marks, such as the Louboutin shoe sole of a particular red colour, have been luckier with getting through to registration, marks with a technical effect rarely get accepted.
This case serves as a valuable reminder for businesses that when planning their advertising campaigns it is important to consider the legal implications and to ensure product marketing goes hand in hand with IP strategy.
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