Tesco’s trade mark applications for the CLUBCARD mark and the stylised variation thereof, have been refused by the UK Intellectual Property Office (UK IPO) on the grounds that the marks are not sufficiently distinctive to be registrable.
Tesco filed trade mark applications for the plain word mark CLUBCARD and the stylised version . The specifications used in the applications covered a wide variety of goods and services in classes 9, 16, 35, 36, 39 and 41. Although the examiner accepted the marks for registration for some of the specification, the applications were refused for certain goods and services in classes 9, 16, 35 and 36, in particular, credit and encoded cards and the organisation of promotional incentive schemes, reward schemes and loyalty programmes, i.e. some of Tesco’s most important goods and services under these marks.
In making their decision, the examiner located a number of internet references showing use of the words “club card” by other third parties and so concluded the marks were incapable of functioning as a badge of commercial origin. With so much third party use of the word “club card”, the examiner maintained that the consumer could not identify these words as denoting one specific company.
Tesco filed evidence of use of the CLUBCARD marks to try and show that they had become distinctiveness by way of the significant use made of the marks and a hearing was held. Such use included reference to the fact that the marks in question had been in continuous use since 1995 and that “active” users of the Tesco CLUBCARD scheme totalled nearly 16 million in 2010.
But in this case, “every little” did not help Tesco, as the hearing officer maintained the examiner’s objection.
Whilst the hearing officer did not question the fact that Tesco is one of the largest providers of a loyalty scheme in the UK, the hearing officer questioned whether the evidence actually demonstrated use of the CLUBCARD marks on their own.
The hearing officer noted that much of the use of the marks was in combination with the trade mark TESCO and/or the slogan “Every little helps”. Although case law has confirmed that when filing evidence of use, this can include evidence of use of the mark with another mark (as per HAVE A BREAK) the mark being applied for, still has to be used in a way which is consistent with acting it functioning as a badge of commercial origin.
Where to now?
It is hard to believe that Tesco will abandon their applications for the CLUBCARD marks, especially considering the fact that there are probably well over 16 million subscribers to the scheme.
Tesco have the option of appealing the hearing officer’s decision, whether via the UK courts or by appealing to the UK IPO’s Appointed Person and so we will have to wait and see where Tesco go from here.