Who: Retro Bag Shop and Brain Poulton
Where: The Intellectual Property Office
When: 11 August 2014
Law stated as at: 6 October 2014
The Retro Bag shop applied to register the trade mark below (the “Logo”) in class 18 for the following goods: imitations of leather, travelling bags, handbags, rucksacks, purses, wallets; flight and shoulder bags.
Mr Poulton opposed the trade mark application on the basis of section 3(1) (d) of the Trade Marks Act 1994 which prevents registration of trade marks which consist exclusively of signs or indications which have become customary in the language or in the bona fide and established practices of the trade.
Mr Poulton claimed that “Northern Soul” was descriptive of a genre of music since the 1960/70s in the North of England. He claimed that the clenched fist originated from the “black power” movement in that period and that the Logo had been used on bags and badges for the past 40 years. Several witnesses gave evidence of the use of “Northern soul” and the logo over that period.
On the evidence, a number of businesses were selling bags with the Logo before 27 December 2012, including the applicant himself, who sold £80K worth of such bags between 2006 and 2012.
Also the opponent showed that several manufacturers were producing such goods which made their way to the market as Northern Soul memorabilia, with clear evidence that such traders saw the mark as a generic badge of allegiance to the Northern Soul movement.
A number of the opponent’s witnesses were seen to be typical of the section of the public interested in products bearing this mark as part of the common “language”.
The Hearing Officer also considered the use of the Logo on t-shirts, which although not directly relevant, did help to understand how the relevant public would have appreciated the use of the Logo on bags.
In conclusion the Hearing Officer held that this was a clear case where the essential distinguishing function was not fulfilled by the mark. The opposition was therefore successful and the Retro Bag Shop’s application refused.
Why this matters:
This is a reminder of the role of one of the absolute grounds for refusal of registration of a trade mark. This is engaged when the mark has become customary in the current language or in the bona fide and established practices of the trade.