“A straightforward slogan about customer service standards which could be applied to any undertaking” said the IPO when rejecting outright the first attempt to register this snappy phrase for various products and services. But recently O2 was back for a second bite at the cherry. Simon Fisher finds out if things got better this time.
Topic: Brands
Who: O2
Where: UK
When: 15 July 2010
Law stated as at: 25 August 2010
What happened:
The UK Intellectual Property Office (UK IPO) has partially rejected O2's application to register "We're better, connected" as a trade mark for goods in class 9 and services in classes 35 to 45.
The trade mark, which was applied for by O2 in April 2008, was initially rejected in its entirety on the absolute grounds that the mark is devoid of any distinctive character, being a "straightforward slogan/statement about customer service standards which could be applied to any undertaking".
The UK IPO stated that the phrase would immediately be understood by a consumer as referring to the provider's superior connections and that, while the phrase was particularly descriptive in relation to the telecommunications industry, it could easily be applicable to any product or service which could be characterised by its "ability to connect".
However, following the decision of the European Court of Justice concerning Audi's successful registration of the trade mark "vorsprung durch technik", the UK IPO was persuaded to waive its objection in respect of those goods and services for which the concept of "connectivity" was meaningless, such as security and training. However, this has still resulted in a rejection of all goods and services in class 38, which unfortunately for O2 means excluding telecommunications.
Why this matters:
This decision again emphasises that trade marks which may be conceived as a "promotional message" or which convey objective and simple messages are not always devoid of any distinctive character solely by virtue of those characteristics.
In fact where a trade mark possessses "originality" and "resonance" capable of being remembered resulting from, for example, word-play, imaginative or creative use of language or simply from "unexpectedness", then it is unlikely to be devoid of any distinctive character at all.
