Descriptive Trademarks and the UK Law - Essay Example

Descriptive Trademarks and UK Law The purpose of intellectual property law is the protection of the ownership of rights to intellectual property. This intellectual property covers essentially everything from scientific inventions to the names of characters in literature. A particularly interesting area covered by the law is that of trademarks, designed and used for the branding and advertising of a particular company, product or idea. Until very recently however, UK law did not allow descriptive trademarks. Here we will look at basic trade mark law as defined under the Trade Marks Act 1994, and come to a better understanding of why such descriptors were not permissible as trademarks, and why that decision has since been reversed. The Trade Marks Law The present UK law regulating trademarks is the Trade Marks Act 1994. According to the Act, a "trade mark" means any sign capable of being represented graphically, which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.1 It is clear that any sign, including designs, is capable of being registrable when conditions are met. Shape of goods can be registered as trademarks. Though not explicitly worded, it is accepted that shapes include both two-dimensional and three-dimensional shapes. The general elements of a trademark include the capability of being represented graphically and distinguishing the goods or service from those of other undertakings. The distinguishing, or, distinctive capability of a trademark is essential, which can be seen from many UK and EU cases. For example, in the Procter & Gamble Company v Office for Harmonisation in the Internal Market, a registration was applied for a square tablet with slightly rounded edges and corners, but the registrar refused the application under Article 38 of Regulation No 40/94 on the ground that the mark applied for was devoid of any distinctive character.2 Descriptive Trade Marks This trademarks law is in contrast to what we will refer to as "descriptive" trade marks-that is, naming a product or company using words that describe what it is or what it sells. For instance, if one were to open a blue jean manufacturer in London, and refer to the company as "London Blue Jeans" this is considered a "descriptive trademark, and until recently was not allowed under UK law due to the highly descriptive nature and arrangement of the words. Rights of Trade Marks The UK Trade Mark Act 1994 Article 9 (1) provides that "the proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent." This article and Article 43 (1), which provides that the registration of a trade mark may be renewed at the request of the proprietor so long as the renewal fee has been paid3, conferred actually perpetual monopoly on the proprietors. Purpose and rationale: General rationale of IP law The intellectual property rights, argued by economists, are accorded in that if everyone would be allowed to take the advantage of the results of innovative and creative activities freely, the problems of "free rider" would have been rise. Therefore, no one would try to create anything, such as a car or plane if no special advantages would be given, and the economic growth and prosperity would become impossible. The IP law, to solve the problem, confers rights on those who invested (the creator, inventor or who paid for it) on the creations the right of monopoly to ensure that they would make use of the creation to maximize profits4. However, at the same time, there is also a principle of IP law to afford free accesses to those rights to the public after a certain period of monopoly in that it will enhance the economic development of the society with trade mark as an exception. Purpose and rationale: Trade Marks Law The function of trade marks, non-exceptive to the rule mentioned above, is to guarantee the origin of goods5, which inherently includes the meaning of identifying and distinguishing the business under that mark from other businesses by virtue of the use of the product, advertisement and other means to convey the information of the products. In my opinion, the function could be divided into three categories according to the principle of guaranteeing the origin of goods: first of all, distinguishing form other goods or services; secondly, guaranteeing the quality of the goods; thirdly, serving as advertisements. Take Coca Cola for example, it obviously serves the above three functions. The rationale of the protection is that a trademark6 provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, which has been mentioned at the first part. The perpetual protection for trademarks is different from that of the patents, which are characterized by having a limited term and the rights fall permanently into the public domain when the term expired. Accordingly, from the functional prospective, marks boost the economy in a special way: it achieves the economy-impetus purpose without rendering the right itself to the public domain. Why Descriptive Trade Marks Were Not Allowed Since the prime purpose of registered trademarks is to distinguish the goods of one trader from another, distinctiveness is an obvious prerequisite for registration of a mark. In a sense "distinctive" is the opposite to "descriptive". The less inherently suggestive of the goods in question a mark is, the more distinctive it is. So, by definition a made-up word is about as distinctive as it is possible to be. When a company or individual is able to register as a trademark, a word or words simply describing the product in question, UK law declared that an unfair monopoly would be acquired. For instance, if one were to open a blue jean manufacturer in London, and refer to the company as "London Blue Jeans" this could not be a registered trademark due to the highly descriptive nature and arrangement of the words. Anyone else selling in the same market would be concerned that, in using those words, or words similar, to describe their goods, they were infringing the exclusive right to sell under that mark. This would be restrictive of fair competition. So, descriptive marks would not generally be registered. The Baby-Dry Case The decision to allow descriptive trademarks to be registered is based upon the 2001 Procter and Gamble Baby-Dry case. The European Trademark Office had always refused to register trademarks that it judged to be too descriptive, basing its refusal on a very broad interpretation of the prohibition to register "marks consisting exclusively of descriptive signs or indications".7 Consequentially, many important descriptive trademarks could not be protected as a Community Trademark. Procter & Gamble had applied for the word BABY-DRY as a European wide trademark for "nappies". Many would say that Baby-Dry in the context of nappies is highly descriptive and would not therefore be allowed to proceed to registration. In fact, PG's original request for registration of the trademark was turned down on the ground that the mark applied for was descriptive of the function of the goods. PG appealed to the Court of First Instance of the European Communities. This Court confirmed the CTM Registrar's original decision. The mark was not allowed on the grounds that it was not capable of distinguishing PG's goods from its competitors' as the mark was merely descriptive of the goods in question. Procter & Gamble took the refusal to register its trademark 'Baby-Dry' for layers to the European Court of Justice, engaging a prominent trademark litigator to defend its case. PG argued that the inferior tribunals had misinterpreted the meanings of "descriptive" and "distinctive". The ECJ responded by clarifying the law in respect of distinctiveness/descriptiveness. In effect the Court said descriptive marks can be registered as long as the mark is also distinctive. PG submitted that a descriptive mark is not inherently prohibitive of free competition because registered trademarks do not give the owner an unqualified monopoly. The court decided that the purpose of prohibiting registration for descriptive words was not to prevent unfair competition since that was already provided for in the "honest practices" provision. PG argued, that only descriptive words which were not in any other way distinctive were unregistrable, and won. The ECJ in allowing PG's appeal, declared that if a word is descriptive and distinctive then it can be registered as a trademark under UK law. This is not to say that all descriptive trademarks are now allowed to be registered. To be sure, trademarks involving geographical or municipal locales are most often denied registration. However, if a trademark is found to be distinctive in its descriptiveness, such as the case of Baby Dry, where the two words describe clearly what the product does, but the word combination is not necessarily in common parlance. UK law is explicit in stating that you cannot register a descriptive trademark. However, in light of decisions such as Baby-Dry, the line between when a mark is to be considered descriptive or not has been somewhat blurred. The Trademark Registry indicated that they would adopt the so-called "Google test" whereby part of their consideration as to whether a mark was descriptive or not would depend on how many hits the mark achieved when searched on Google. The higher the number of hits, the more likely the mark will be considered to be descriptive. Therefore, while the law remains the same in stating that descriptive trademarks will not be allowed, the interpretation of this law has changed and become a bit less restrictive in recent years. That said, Recent decisions by the Registry have highlighted the fact that a very restrictive view is to be taken of marks when deciding whether they will be descriptive or not. Read More