Wednesday, 28 October 2009

Distinctive IP: Issue 23, 28 October 2009 WHY IS ! NOT A TRADE MARK?

The wonderful thing about IP is that, no matter how long you do it, it never makes sense. A good example of this is a recent European decision refusing an application by the German fashion house with the silly name - Joop! - to register ! (yes an exclamation mark) as a trade mark for clothing.

Readers who observe that wonderful convention of allowing a decent interval to elapse between receipt of Distinctive IP and its despatch to Deleted Items, know that a mark can only be registered if it’s distinctive, either inherently (think Google), or through many years of uninterrupted loss-making, sorry that should read ‘use’ (think South African Airways). In this case there was no meaningful use of ! throughout Europe, so the issue was simply whether it was inherently distinctive. Nein exclaimed His Lordship, Judge Schadenfreudeglockenspielbratwurstliebfraumilch or some such thing, because consumers won’t see ! as a sign denoting origin, but rather as a promotional message or eye-catcher.

Here’s the thing. When a trade mark consists of a word, the enquiry’s always simple - if the word isn’t inherently distinctive then it can only be registered if it has become distinctive. With some other types of marks, however, a further consideration is added – the courts say, now look here, we don’t think consumers see this thing you’re trying to register as an indicator of origin, so it’s not inherently distinctive, which means you’ll need to show us that you’ve used it for yonks, and that consumers now understand that it is a trade mark and that it’s yours.

Now I get this argument when people try to register things like the shape or colour of the product - products must of necessity have a shape and colour, so it’s the name that is seen as the trade mark. Which means that you have to prove that the shape or colour is now seen as a trade mark too. Albeit a subsidiary one - you never hear anyone saying they have a contract with the yellow-coloured cell phone company do you!

But what about logos? Isn’t the logo the purest form of brand, the true descendant of the random and often simple sign burned on livestock? Even if it is also subsidiary to the name – if you go into an Edgars and ask for a tick t-shirt you’ll get a look that’s even more vacant than the one you’ll get if you ask for Nike, and if you hit Witbank and say ‘ my good man, do you have one of those restaurants that operate under what’s known colloquially as the Golden Arches logo?’, you’ll get a look that’s even more dof than the one you’ll get if you say ‘hey boet, where’s McDonalds?’

So if the logo doesn’t illustrate the product, and it isn’t something that others in the business need to use, why should its simplicity or its accessibility (! is, of course, available on a keyboard near you) be held against it? It’s mysterious stuff this, it really is!

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