About the authors:
Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses. Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions.
Claire Bothma: Claire is a trainee trade mark attorney. Claire’s work encompasses a wide variety of industries, with a particular interest in the food, beverage and retail sectors. Claire’s practice includes pre-filing and strategy advice, filing and prosecution, portfolio management and contentious matters. Claire has considerable experience in trade mark law and practice across the African continent.
Is a mark which is descriptive for goods, also descriptive for the retail of those goods?
Between 2019 and 2022, Thatchers Cider Company Limited (Thatchers) filed seven trade mark applications for CLOUDY LEMON. The applications had varying degrees of stylisation and sought protection for alcoholic drinks, typical merchandising goods and related retail services.
One of the applications was opposed by Brothers Drinks Co. Ltd (BDC):
The opponent opposed the registration under section 3(1)(b) and (c) of the Trade Marks Act 1994 in relation to retail and wholesale services in relation to alcoholic and non-alcoholic beverages. BDC argued that, in particular:
- 3(1)(b) – the mark was devoid of distinctive character in relation to retail and wholesale services for the sale of lemon-flavoured beverages with a cloudy appearance; and
- 3(1)(d) – the mark designated a characteristic of the retail services.
Thatchers argued that:
- the stylistic design was visually striking and conferred the mark with sufficient distinctive character to make it registrable;
- even without the stylisation, the mark was not descriptive of the opposed services or their characteristics as it did not convey a sufficiently direct and concrete link to the opposed services;
- the average consumer would require a further mental step to associate the mark with the services.
The Hearing Officer held that:
- while CLOUDY LEMON was an apt descriptor of the flavour of alcoholic and non-alcoholic beverages, the question was whether the average consumer of the services in question would perceive CLOUDY LEMON as being descriptive in relation to retail and wholesale services for the sale of the same goods;
- CLOUDY LEMON did not directly describe the goods offered through the services but an incidental attribute of the goods, as the goods could be sold in different flavours;
- While CLOUDY LEMON was used to describe a lemon-based flavour which was available for certain types of beverages, it was not a necessary feature of the goods, and retailers of alcoholic and non-alcoholic beverages were likely to stock goods flavoured with a variety of flavours;
- there was not a sufficiently direct and specific relationship between the mark CLOUDY LEMON and the contested retail and wholesale services to enable the public immediately to perceive, without further thought, a description of those services or one of their characteristics; and
- The public was likely to accept the mark as an indication of trade source even when used in relation to retail and whole services selling ‘cloudy-lemon’ flavoured beverages.
The examiner had already refused registration of CLOUDY LEMON in relation to cider and alcoholic beverages. This decision illustrates that a trade mark may be distinctive for some (e.g. retail of cider) but descriptive for others (cider).
Thatchers’ strategy of filing several trade marks with varying degrees of stylisation has ensured it obtains the broadest protection it can in law. The real prize though, registration of CLOUDY LEMON for cider, was beyond its reach.
Read the full decision: Trade Mark Inter Partes Decision O/856/22 (ipo.gov.uk)