Whilst it is tempting to use descriptive words or superlatives as brand names – they are easily picked up by consumers and tell the potential purchaser something about the quality or purpose of the goods – such terms are usually likely to be difficult to enforce as trade marks (owing to the court's reluctance to have a descriptive word monopolised by one trader) and such trade marks run the risk of being cancelled.
A recent illustration of this is a case decided involving the brand name "Supreme" which was the registered trade mark of Supreme Petfoods (Supreme Petfoods Ltd v Henry Bell & Co 2 February 2015) The trade mark owner attempted to use its registration to stop another pet food company using the word "Supreme" on their packaging. The word trade mark SUPREME which was registered for "animal foodstuffs" was held by the judge to be invalidly registered as a descriptive or laudatory term for all its specification, except small animal food where some distinctiveness was found within trader buyers.
The defendant had used "supreme" on its pet food but the judge, Mr Justice Arnold, held that "even if [the] use of the sign SUPREME would be perceived by the average consumer as partly distinctive, the fact remains that the word is descriptive or at least laudatory." There was no actual confusion. In the judge's view, the use of the sign Supreme on the defendant's pet food "does not interfere with Supreme Petfoods' ability to exploit the UK word trade mark". Further, it did "not amount to unfair competition with Supreme Petfoods and is in accordance with honest practices in industrial and commercial matters". Thus, it did not infringe and in any case the defendants had a defence as they were using it descriptively i.e. it was not "use as a trade mark". There was also evidence of honest concurrent use. Neither were the defendants committing passing off.
The case illustrates the risk of attempting to enforce a trade mark which is a laudatory or descriptive term of itself against use which could be classed as descriptive of laudatory. A separate trade mark registration using the word Supreme on a ribbon logo was held to be valid for animal foodstuffs generally. The greater trade mark value of descriptive/laudatory terms used in combination with logos (here a ribbon effect with the stylised word Supreme within it) should be noted, where such slogans are more likely to be held valid.
Burden of proof in "double identity" cases
A more technical point arises from this decision: which party bears the burden of proof in infringement proceedings in relation to damage to the functions of the trade mark?
Following a thorough assessment of the CJEU decisions in this area, Arnold J concluded that it was unclear which party bears the burden of proof in this regard where there is use of an identical mark for identical goods or services. However he declared his preferred approach to be this:
- once a trade mark proprietor has shown that there is use in relation to any of the goods or services for which the trade mark is registered, the defendant bears the burden of proving that the use does not affect, nor is liable to affect, any of the functions of the trade mark.
Arnold J held that this approach was more consistent with the CJEU jurisprudence on exhaustion of trade mark rights, although he acknowledged that an alternative view - where the defendant has the onus of proving that there is no likelihood of confusion but once it has done so, the burden passes to the proprietor to show that some of the other functions of the trade mark have been damaged - might be preferred by some, since TRIPs only requires a presumption of damage to the origin function and not any other functions of the trade mark ("it is much less obvious why such damage [to other functions] should be presumed").