Sarah Redmond, senior trade mark attorney and Stephen Sidkin, partner at Fox Williams LLP discuss the importance of choosing the right trademark.
When choosing a brand it is important to consider not only if there are any earlier rights that could conflict with your chosen name, but also whether the mark is capable of securing registration. Although it is possible to use descriptive names as brands, if you wish to obtain registration (and therefore a monopoly right in respect of the use of the brand), then it is important that you consider whether the mark can function as a trade mark.
On 4 June 2014, Bed Bath ‘N’ Table Pty Limited (the “Applicant”), filed an application for registration for BED BATH ‘N’ TABLE as an International mark designating the UK. The application was based on an Australian registration which had been registered since 1995.
The trade mark was filed for a number of goods including furniture, bath linen, bed covers and table linen as well as for the retailing of these goods.
Once an application is filed in the UK, it is examined for formalities as well as whether it is registrable as a trade mark. Marks can therefore be refused on the basis that they are descriptive (for example, you cannot register SOAP for soap) or that they do not have distinctive character (does the mark serve to identify the products for which registration is applied as originating from one particular source).
The UK Trade Mark Office considered the mark and the goods and service for which registration was sought and decided that it was acceptable for publication. Once the mark is published in the official journal third parties have 2 months in which to file oppositions against the registration of the mark. The opponent can either proceed on the basis that it has earlier rights which it considers conflicts with the application (for example, an earlier trade mark for BEDS N BATHS R US) or that it considers that the mark was accepted in error as it is without distinctive character or descriptive.
In June 2015, a Notice of Opposition was filed by Liberty Procurement Co. Inc. (the “Opponent”) the owner of the brand BED, BATH & BEYOND which is registered in the UK for a numerous goods and services.
Although the Opponent has registrations which cover the UK, it did not rely on these in the opposition. It is not clear why - but it could have been as the brand was not in use in the UK at that time (and as such could not be relied upon) or that it feared that arguing that the marks were similar would not be successful.
It is important that you consider whether the mark can function as a trade mark.
Accordingly the Opponent opposed the BED BATH ‘N’ TABLE mark on the basis that the mark was not registrable as it was without distinctive character and descriptive of the goods and services covered. In support of these arguments the Opponent claimed that the Applicant sought an unfair monopoly which would prevent legitimate and fair use by other traders to promote their goods. This is on the basis that these were words used in common parlance and so are not able to act as an indicator of origin. Further it claimed that the mark was descriptive on the basis that all the goods were for use in relation to beds, bath and tables and so served to indicate the intended purpose of the goods and so rendered the mark descriptive.
In support of its claims, the Opponent relied on numerous uses of the term “bed, bath and table” within the furniture and furnishing industry. The Applicant merely denied all the claims and referred to the fact that the mark had been registered in Australia since 1995 and used in Australia since 1975. As opposition proceedings are territorial, no relevance is given to this earlier use and registration.
The UK Trade Mark Office considered all the relevant case law and the evidence filed by the parties and issued a decision that the mark was registrable. It was decided that no evidence of BED BATH ‘N’ TABLE was established and if the words BED BATH AND TABLE were used together then other descriptors such as “linen” were used. On this basis, considering the mark BED BATH ‘N’ TABLE as a whole, it did not fall foul of a descriptiveness objection but merely alluded to the fact that the goods are for use in the household. It was also decided that the mark had distinctive character and so this Opposition was rejected. The Applicant was awarded £700 in costs. (The scale of costs in these matters is very low and it is unlikely that the Applicant recovered the costs incurred in defending this action.)
In this case, it is likely that the Applicant considered that the UK Trade Mark Office might issue an objection, but not that a third party would apply to oppose the mark on such grounds. As such even if your mark is accepted by the UK Trade Mark Registry, it is not always the end of the matter. Oppositions (and even cancellation actions after registration) can prevent a trade mark from being registered and cause an applicant to spend more money than expected on defending an action.