At the last hurdle, the application by business incentive specialists Red Letter Days to register ‘Experience gifts’ as a trade mark was way-laid by a consortium of competitors. But that may not be the end of the story.
Who: Red Letter Days Plc of Muswell Hill
Where: The UK
When: October 2003
In 1998 business incentive scheme suppliers Red Letter Days Plc of Muswell Hill created "Experience Vouchers".
In 2001 they filed an application to register EXPERIENCE GIFTS and EXPERIENCE GIFT as trade marks in the UK. Registration was sought in 6 classes of goods and services. Theses included printed matter, printed publications, books, vouchers … gift vouchers, gift certificates in class 16, the service of issuing certificates in class 36, travel services in class 39, entertainment and leisure services in class 41 and accommodation and beauty and spa services in class 42.
There was concern amongst others in the industry that for Red Letter days to achieve what would be a monopoly right in the use of the phrase EXPERIENCE GIFTS in the sector would place an unfair restriction on others' descriptive use of the words. Accordingly a consortium of four "experience voucher" players including WH Smith, Acorn Sports, (now part of Virgin), Virgin Experiences and Exhilaration (now owned by lastminute.com) lodged a last minute objection to the Red Letter Days application.
In the meantime, Red Letter Days had filed an application to register the same EXPERIENCE GIFTS brand as a Community Trade Mark, to be valid across all 15 states of the European Union. However, the rule for CTMs is that if the trade mark in question turns out not to be registerable in any single EU member state, the CTM cannot be achieved and the brand owner must resort to individual applications in each member state.
This was exactly what happened in this case, as the WH Smith consortium succeeded in their opposition to the Red Letter Days application in the UK.
Why this matters:
Promotions and Incentives magazine mistakenly reported the case as dealing with an application to register EXPERIENCE VOUCHERS. According to the UK trade mark register their was never any such application.
But whatever, the real trade mark Red Letter Days sought to register, EXPERIENCE GIFTS, was always going to run into difficulty on account of its innately descriptive nature. To achieve registration a trade mark has to be "distinctive." To put it another way, it has to be capable of distinguishing products coming from one source over the same products coming from a different source. If the branding is innately descriptive of the products or services for which it is intended to be used, it is going to be much harder to get it registered.
This problem can in some cases be overcome by long, established use of the brand in the marketplace, before the application to register it is actually filed. Having apparently used the EXPERIENCE GIFTS brand for nearly three years before filing their own application, Red Letter Days may well have hoped that this would have done the trick for them here.
However, if despite this, the brand remains overwhelmingly descriptive and a cogent case can be put by the opposition that registration would place an unfair restriction on them in their everyday, descriptive use of exactly the same words, the application will fail.
Despite this story, branding including the word EXPERIENCE remains popular. California-based Computer Sciences Corporation are currently seeking a CTM for EXPERIENCE RESULTS in four classes including business services, financial services and communication services. Nice Systems Limited of Israel have a UK registration of EXPERIENCE YOUR CUSTOMER in four classes including business services, electronic online services and "product promotion and advertising data for consumer product manufactures, distributors, wholesalers and retailers and providers of inter-active services, by means of an online computer database", and telecommunications services. American Multi-Cinema Inc of Missouri have recently withdrawn an application to register EXPERIENCE THE DIFFERENCE in the UK for services including cinema and theatre.
And last but by no means least, Red Letter Days Plc pops up again as the proprietor of UK registered trade marks THE EXPERIENCE TICKETS, EXPERIENCE TICKET, EXPERIENCE TICKETS and THE EXPERIENCE TICKET in six classes of goods and services including gift vouchers, gift certificates, travel services, entertainment and leisure services and accommodation, beauty and spa services!