The UK Intellectual Property Office ("IPO") has recently rejected an application to trade mark the term 'WILDFLOWER' in relation to toiletries and perfume products (under Class 3). The Registrar considered the mark to be descriptive of the characteristics of the goods under s3(1)(c) of the Trade Marks Act 1994 ("the Act") and therefore also devoid of distinctive character under s3(1)(b) of the Act.
This decision provides a useful recap of the position under English and European law in relation to the grounds for refusal of a trade mark application, and highlighted the correlation between Article 3(1)(c) and 3(1)(b).
In particular, the Registrar noted the following points:
- The essential function of a trade mark is to guarantee the identity of the origin of goods or services offered to the consumer without possibility of confusion.
- Signs and indications which may serve in trade to indicate characteristics are incapable of fulfilling the essential function.
- It is in the public interest to allow descriptive signs to be used by all.
- The sign does not have to be used in a descriptive way the fact it could be is sufficient.
- The test is the perception of the sign by a reasonably well informed consumer in the country in which the application for trade mark registration is made.
- The test to be applied is on first impression – the perception of commercial origin must be immediate.
- The Registrar's 'frontline role' is to prevent the granting of undue monopolies.
- If a mark is descriptive of characteristics for the purposes of s3(1)(c) of the Act, it follows it is devoid of distinctive character under s3(1)(b). A mark could be devoid of distinctive characteristics under s3(1)(b) for reasons others than it being descriptive.
In the application for the 'WILDFLOWER' trade mark, the Registrar considered that the consumer's level of perception may vary according to the goods concerned. The reasonable consumer of perfume would apply 'at least a moderate level of attention on purchase', recognising its personal and expensive nature.
Whilst the Registrar accepted 'WILDFLOWER' could not be precisely identified by consumers, she concluded that the relevant consumer of the goods would see the sign 'WILDFLOWER', on first impression, as a means of describing the characteristic of the goods, taking into account the normal English language definition. The application was refused.
This case serves as a useful reminder of the Court's approach to grounds for refusal of trade mark registrations and the difficulties faced by applicants if trade marks could be used to describe any aspect of the goods/services' characteristics. This should clearly be considered carefully by businesses considering registering a trade mark, to avoid facing any objections by competitors. It is also important for businesses to be aware of this to protect their positions if a competitor is seeking to obtain a monopoly over a descriptive/non-distinctive term which could impact on its own trade.