There were tears for the Berkshire Eye Clinic recently when the UKIPO refused its application for THE BERKSHIRE EYE CLINIC on the basis that the mark is non-distinctive in relation to goods and services in classes 9, 10 and 44 (see the full decision here). It must have been all the more galling given that the mark had initially achieved publication after earlier objections were overcome by demonstrating acquired distinctiveness, only for the UKIPO to re-evaluate its position following the intervention of a third party. The refusal of the application in this manner raises some interesting points about the predictability of decision-making at the UKIPO and the ever-present threat of third party intervention.
The legal analysis in the decisions is not ground-breaking. The Hearing Officer ultimately followed Chiemsee in relation to the assessment of acquired distinctiveness and, based on the duration and geographical extent of the use demonstrated, found that the mark had not acquired a distinctive character sufficient to overcome the inherent objections. Whilst the Hearing Officer noted a disparity between the mark as registered versus the mark shown to be used in the evidence, the decision did not hinge on this disparity, although it was raised as a factor in the rejection of the claim to acquired distinctiveness.
The most note-worthy point arising from these proceedings, in this blogger’s view, is the impact of the third party in exercising rights to intervene in the proceedings under s.40 TMA. The mark THE BERKSHIRE EYE CLINIC had been accepted for publication in March 2016 following a largely successful claim for acquired distinctiveness (only a small section of the goods and services initially claimed had been removed from the application). However, shortly after publication, the Registrar received third party observations filed on behalf of Mr Vaughan Tanner, an Ophthalmic Surgeon with the Royal Berkshire Hospital, questioning the acceptance of the mark. The resulting late objection led to a reversal of the initial assessment of the evidence of acquired distinctiveness and, ultimately, the rejection of the application on the same grounds as had been previously overcome.
There are many reasons why the third party may have chosen to intervene under s. 40, rather than opposing on absolute grounds, given that they proceeded while the mark was published. It may be that they did not want to duplicate the work already invested in the intervention (which had been filed earlier but not accepted by the Office), that they preferred to have a lesser degree of input than with the Opposition or perhaps that the intervener was interested in anonymity. Regardless of motive, the decision in intervene serves as a reminder of the grounds of action available to any third party.
The decision feels a little tough in relation to the class 9 goods, against which the mark is not obviously inherently non-distinctive. In addition, whilst intervention is not a particularly common occurrence, this decision serves as a reminder of the potential power held by intervening third parties under s.40 TMA.