In 2012, the British Standards Institution (BSI) applied to register its well-known British Kitemark device (above) as an ordinary trade mark in the UK for a variety of goods and services. The device had previously been protected in the UK via a number of certification marks since at least 1921. That ordinary trade mark has now been held to be invalid except in relation to standards development, certification and related services.
The decision is a useful reminder that there is no legal requirement in the UK for a sign used to indicate the quality of third party goods to be registered as a certification mark. It also indicates that use of a mark before its application date can not only render a non-distinctive mark distinctive but can also potentially render a distinctive mark non-registrable.
The Kitemark device has been used in the UK since 1903 as a designation of certain specified quality standards and is extremely well-known. Over the years, the BSI has owned over 50 certification mark registrations for the device covering a wide variety of goods. However, all of these registrations were allowed to expire or were surrendered or withdrawn before the BSI applied to register the device as an ordinary trade mark in the UK in 2012. The BSI did so because of the constraints surrounding certification marks including the fact that the owner of a certification mark cannot itself provide the goods or services it certifies. The ordinary trade mark covered nearly every goods class and a wide variety of services.
In early 2017, Omega Flex Ltd ("Omega") applied to invalidate BSI's ordinary trade mark registration for the Kitemark device. The action arose as a result of a dispute between the parties in which Omega alleged that the BSI had allowed one of Omega's competitors to apply the Kitemark to its products despite not meeting the relevant standard. Prior to the hearing, the BSI voluntarily surrendered all of the goods classes and some services from its registration. On the remaining services covered by the device, the Hearing Officer held:
- The question of whether a mark possesses the requisite distinctiveness under section 3(1)(b) of the Trade Marks Act 1994 (the "Act") must be assessed according to the perception of the relevant public. That perception is formed by the lines and contours of the mark itself but can also be altered by the use that has been made of the mark: "If a mark that is inherently non-distinctive can achieve registration in circumstances where the relevant public has been educated to recognise it as indicating origin, then the opposite must also be true." Here, the relevant public had been educated to view the Kitemark device as indicating quality standards and not the origin of goods and services. The Kitemark therefore lacked distinctiveness - and was invalid - for all goods and services other than standards development and certification and related services.
- The Kitemark device was also invalid (other than for standards development and certification and related services) under sections 3(3)(a) and (b) of the Act as its registration was contrary to public policy and the mark was likely to deceive the public. The Hearing Officer held that, because of the ubiquitous perception of the device as indicating attainment of a particular quality standard, its use in relation to goods and services which do not meet these standards would have wide and potentially deceptive consequences. It could mean that the BSI could refuse to licence use of the mark for certain goods and services which meet the same standards as those goods and services for which it is licensed.
- The allegation of bad faith was also partially successful. To register the Kitemark device as an ordinary trade mark for a variety of goods and services whilst having the intention only to continue to use it to indicate a particular quality of third party goods and services is an act that falls short of the standards of acceptable commercial behaviour. The mark was therefore applied for in bad faith except in relation to certain standards and certification services.
This case is a useful reminder that how a mark is used, both before and after it has been applied for, can influence its registrability. It also reminds us that there is no prohibition in the UK on the registration of a sign as an ordinary trade mark for certification services.
Case ref: O/765/18 Louise Popple