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A business can trade under the same name for many years and still be told it cannot register it. Under section 3(1) of the Trade Mark Act 1994, the UKIPO will refuse a mark which describes the goods or services. It cannot distinguish one business from another or is simply customary in the trade. A refusal is not always the end of the road. If the mark became recognised through use before the application was filed, it can still be accepted based on “acquired distinctiveness”.
The test
The central question is whether the average consumer of the goods or services now expects everything sold under the mark to come from a single business. The mark does not need to have been distinctive from the start, but it must have become so by the date of the application. The use of the filing date is not considered.
The UKIPO’s approach follows the Court Of Justice’s guidance in Windsurfing Chiemsee. The factors include the mark’s market share, how intensive, widespread and long-lasting its use has been, how much has been spent promoting it and the proportion of the relevant public who identify the goods with a particular business because of the mark and statements from trade or professional bodies.
Market share, turnover and advertising
The key theme is context. A turnover figure means very little until it is set against the size of a market. Several hundred thousand pounds a year is a tiny share of the diary sector, and it is unlikely to have taught the public to see a name as a trade mark. The same figure in a small, specialised publication market could reach a significant proportion of its readers. Generally, it is harder for a mark to become distinctive for cheap everyday goods in a crowded market than for expensive specialist goods in a small one.
Evidence should normally show turnover for about five years before filing, being broken down by goods or services where practical. The UKIPO considers turnover, advertising, and the length of use together, so very high sales and promotion can make up for a shorter period of use.
Gaps in use are judged on the facts. A strawberry grower who sells for only two months a year over a decade can still show continuous use, given the seasonal product. A trader with twelve years of sales but a two-year gap just before filing will face closer scrutiny, and much will depend on how strong the sales were before and after the gap.
Advertising figures are normally given for at least three years before filing. They should show the type of advertising so the UKIPO can see whether it was national or local.
Use across the whole UK
Distinctiveness must be shown throughout the whole UK. In Bovemji Verzekeringen NV v Benelux-Merkenbureau, the court held that acquired distinctiveness must be proven across the whole territory, so strong regional recognition is not enough. Showing that English descriptive words have become distinctive in Scotland alone will not succeed, and limiting the registration geographically does not change that.
There are some exceptions. If the mark is a word in a language understood in only part of the country, it is enough to show distinctiveness among that linguistic group, such as a Welsh word recognised by a substantial proportion of Welsh speakers in Wales. National Advertising can count as UK-wide use, so sales in every region are not essential. Failing to show recognition in a very small and discrete area such as the Isle of Man will not prevent registration. However, export sales alone do not help and use only outside the UK can support acceptance.
What evidence to submit
Evidence is normally given in a declaration or a witness statement with dated exhibits. Useful information includes brochures, catalogues, price lists and advertisements showing how the mark is used and dated before the filing date.
Turnover and advertising figures, broken down by goods or services where possible. The areas of sale across the UK. For financial services, the number of account holders or investors or branches, since. Total sums lent or insured can overstate recognition.
Statements from trade or professional bodies.
The evidence must also match the application. The specification should reflect the goods or services the exhibits show, not broader claims. Use across a range of stationary items may support the general term, but use on one item support a general term, but use on one item supports only that item.
Key takeaways
Start keeping dated records of sales, advertising and examples of use now, because the evidence must predate your filing date. Check that it covers the whole UK and every item in your specification. If you are unsure whether your mark needs evidence, the Trade mark Room can search and advise before you file it.
