After standing by and watching its brand equity arguably being laid waste, Hormel, maker of the luncheon meat we all love, had to act. It applied for a Community Trade Mark covering email suppression services. Come again? Stephen Groom gets to the meat of the story.
Topic: Brands
Who: Hormel Foods Corporation
Where: Office for Harmonisation in the Internal Marketing (Trade Marks and Designs), Alicante, Spain
When: July 2006
What happened:
Struggling like the rest of us against waves of it, SPAM's owner (the maker of the tinned meat product that is) decided to fight back.
Hormel Foods Corporation of Austin, Texas was fed up with watching its brand equity swamped and vainly demanding that to distinguish, those referring to its meat product always used the capitalised "SPAM."
In December 2004, it applied to register SPAM as a Community Trade Mark ("CTM") for "Services to avoid or suppress unsolicited emails" in class 38 and related services in classes 36 and 42.
These services were light years from the goods for which Hormel already had fully registered CTMs. These had been valid since 1996. They covered the predictable "meat fish and poultry" etc in class 29, the perhaps not so predictable "coffee, tea, cocoa" etc in class 30 and the downright surprising "clothing footwear and headgear" etc in class 25.
The CTM registering authority was not happy with the 2004 applications. It said that such was the principal meaning of the word "Spam" for most European Union markets that to seek to register "SPAM" for the service of suppressing unsolicited emails fell foul of the first rule for trade mark registration. This is that no trade mark will be registered if it is primarily descriptive of the goods or services the owner is trying to register it for.
"Spam" referred directly and unequivocally" the Examiner found, "to characteristics of the services applied for" and therefore the registrations were refused.
Unbowed, Hormel appealed the decision. It argued that an average English speaking person would not necessarily associate "SPAM" with unsolicited email. But a Google search against SPAM contradicted this. Of the 214,000,000 hits, 199,000,000 made no reference to Hormel.
So Hormel's appeal was dismissed and unless they appeal again, they will have to live with their meat, fish and clothes CTMs for now.
Why this matters:
One has to sympathise with Hormel. There they were, minding their own successful business and a worldwide brand, when a chance Monty Python sketch reputedly inspired its hi-jacking to describe something completely different (so to speak).
But who knows what might have happened if Hormel had moved more quickly with this ill fated filing, and more to the point, what on earth they would have done if they had got their "email suppression" CTM. One imagines the Herculean task of stemming the tide, largely against organisations not worth suing, would have persuaded them to go back to what they know best anyway. After all, far from being damaged, surely an otherwise tired brand has arguably benefited from happening to be also one of the world's most used words.
