Skip to content
In UK trademark law, one of the main fundamental requirements for registering a trademark is that it must be distinctive. The UK Intellectual Property Office (UKIPO) and the Trade Mark Act 1994 provide key insights into what is considered “distinctive” and how distinctive a trademark must be from its competitors. Section 3(1) of the Trade Mark Act sets out four key reasons a trademark application may be refused. These being:
- S3(1)(a) The trademark must be capable of being a trademark
- S3(1)(b) The trademark must not be devoid of a distinctive character
- S3(1)(c) The trademark should not be purely descriptive of the good or service
- S3(1)(d) The trademark should not be just a generic term
Section 3(1)(b) of the Trade Mark Act 1994 establishes that the trademark must not be devoid of distinctive character. This means that the trademark must be able to function as a badge of origin and must identify the goods or services of the business, distinguishing itself from other businesses. Its purpose is to prevent a monopolisation of common words and phrases that all businesses should be allowed to use. Preventing this will also help to ensure that the trademark will serve its actual purpose and protect the average consumer’s interest in reducing confusion. An example of something distinctive would be “Apple” for computers, as the average consumer would not be confused between the food Apple and the Apple company that produces computers and technology. However, an example of a trademark that is not distinctive enough would be basic slogans, simple geometric shapes or common words such as “The Best Coffee Shop”.
The distinctiveness of a trademark is often categorised based on a distinctiveness level. One level is that if the trademark is highly distinctive and includes invented words with no prior meaning, or arbitrary words, that are common words used in unrelated industries, it will be easily registerable. Another level is suggestive marks, which are best shown through “Netflix”, which combines “net” and “flicks” together and will most likely be registrable as it does not directly describe the service. Generic terms will most likely not be registered because common names for goods or services can not be monopolised; an example would be trying to trademark “laptops” for computers. If this were to be registered, it would stop competition, resulting in the potential increase in price and decrease in innovation driven by a need to compete against other competitors.
One landmark case that helped establish what may be considered distinctive is Baby Dry (Procter & Gamble, 2001). Procter & Gamble attempted to register the mark “Baby Dry” for a brand of disposable nappies and were initially rejected under Section 3(1)(b) of the Trade Mark Act 1994. It was argued that the trademark “Baby Dry” was too descriptive of the product that Procter & Gamble were trying to sell. Procter & Gamble then appealed this decision, and following this, the European Court of Justice (ECJ) found that “Baby Dry” was an unusual combination of words, which in turn gave the trade mark a distinctive character. Whilst “Baby” and “Dry” are common words in the English language, their combination could not be considered a usual way to describe a baby’s nappies. It was also found that “Baby Dry” was not a grammatically correct sentence or phrase that was not descriptive of the product.
On the other hand, if the trademark were “Dry Baby Nappies” instead, it would be a grammatically correct sentence and be descriptive of the goods and would be refused. This also emphasised that the court does not require a high level of distinctiveness to be registered, but needs some level of distinctiveness. This case set an important precedent and lowered the threshold for distinctiveness in the EU and UK trademark law.
Whilst Baby Dry (Procter & Gamble, 2001) loosened the strictness of the level of distinctiveness, Postkantoor (2004) established clear limits on distinctiveness and set far stricter rules for registering trademarks with descriptive elements. A Dutch company applied to register Postkantoor as a trademark for various goods and services relating to postal services. It was rejected because Postkantoor is the Dutch word for “Post Office” and was purely descriptive and would be a monopoly if it were to be accepted. The legal issue here is that “Post Office” is a generic term, and under Section 3(1)(c) of the Trade Marks Act 1994 alongside Article 7(1)(c) of the EU Trademark Regulation, it established that:
“A trademark must not consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or services, or other characteristics of the goods or services.”
This helps understand the rejection of this trademark as they found “Post office” to describe the service simply and immediately conveys the sort of service they were offering. This resulted in the trademark lacking distinctiveness. Furthermore, the word “Post Office” must be freely available to competitors and should not be monopolised, as the phrase is essential for other businesses. An attempt was made to use the “Baby Dry” argument, but it was rejected. The ECJ argued that “Baby Dry” is an unusual and imaginative combination of words, while “Postkantoor” is just a straightforward and commonly used phrase. This case tightened the rules on what was distinctive and what was not, as it established that a word that is commonly used to describe a service can not be monopolised.
How to overcome a lack of distinctiveness?
If a trademark lacks inherent distinctiveness, it may still be registered if the owner can prove that it has acquired distinctiveness through long-term use, advertisement, promotion, or market surveys. One example of where common words or phrases that describe the service being provided have been accepted due to acquiring distinctiveness, is British Airways. The two common words, “British” and “Airways”, are inherently descriptive of the service being provided, but became distinctive through widespread public use of this term to recognise the company.
However, this is not always possible, so the trademark must change to comply with the level of distinctiveness required to be accepted. This change can be made by using unique or distinctive words instead of commonplace words, combining words creatively in a non-descriptive way, or adding logos or stylised elements to distinguish it from competitors. If you can make your trademark distinctive enough to avoid being descriptive of the goods or services being provided using these methods, you will stand a higher chance of the trademark being accepted.
Conclusion
In conclusion, the level of distinctiveness is critical when determining whether or not a trademark will be successfully registered. The requirement that the trademark be distinctive serves to protect the average consumer from being confused about the product or service they are purchasing, and to ensure that businesses can not own a monopoly on certain items or products. Section 3(1) of the Trade Mark Act outlines the grounds for refusal based on a lack of distinctiveness prohibiting trademarks that are just descriptive or generic. Key cases such as Baby Dry (Procter & Gamble, 2001) and Postkantoor (2004) have helped establish the level of distinctness needed, the former establishing that there is flexibility, whilst the latter establishing clear limitations on what can and can not be registered.
