What’s the policy of officials in charge of processing UK trade mark applications? Recent ‘Practice Amendments’ could save wasted time on fruitless applications.
Who: The Trade Mark Registry
When: Spring 2001
The UK Trade Mark Registry recently issued two "Practice Amendments" ("PAs") setting out their normal practice when processing applications to register particular types of trade mark. One Amendment dealt with slogans. These have only been seriously considered for registration at all since the 1994 Trade Marks Act, but since then the Registry has built up a lot of experience. The PA emphasises that slogans will not be admitted to registration if they are essentially descriptive, for instance by referring to the intended purpose of a product or to its characteristics, and are devoid of any distinctiveness. An example might be "Sticks for life" in relation to glue. One aspect the PA makes special mention of is advertising. If it seems to the Registry that other advertisers might legitimately want to use the same phrase to describe their products in advertising, the chances are that registration will be refused.
The other PA relates to brands incorporating domain name suffixes such as "marketinglaw.co.uk" Normally, the Registry says, suffixes such as ".co.uk" or ".com" will be ignored when considering whether a mark can be registered. This is because these designations are by now largely generic and not distinctive of any particular provider. However, the PA continues, there may be exceptions where the suffix adds something genuinely distinctive to the mark as a whole. An example it cites is "can and will.com" (tantalysingly the domain name of a site still "under construction" at the time of writing) where the ".com" does add distinctiveness to what would otherwise be an undistinctive phrase.
Why this matters:
It is always helpful to have guidance, over and above the wording of the statute, as to how applications to register trade marks will be processed. Particularly with no less than seven new top level domain name suffixes coming available shortly (see our other reports on marketinglaw on the ".biz" and ".info" suffixes) the registry will doubtless continue to be assailed by applications to register brands which include these suffixes. The writer must confess to some unease about the clarity of the dividing line between a suffix which adds distinctiveness and a suffix that does not. The UK Trade Marks Registry is under pressure, however, to demonstrate flexibility in order to stem the migration of applicants to the Community Trade Mark Office in Alicante.