Supermarket chain Tesco has been refused a trade mark registration for the word Clubcard.
Tesco applied to the UK Intellectual Property Office (UKIPO) in January 2011, for a trade mark registration for Clubcard as the name of its customer loyalty scheme. The application was refused in December 2013, on the grounds that the word was “devoid of any distinctive character” and was “commonly used by third parties”.
Tesco lodged an appeal and which has now been rejected.
Trade Mark or Descriptive Term?
In the UKIPO’s original ruling, it was noted that Tesco often used the words ‘Tesco Clubcard’ in its marketing, thereby associating Clubcard with the retailer’s name, rather than referring to it as a brand in its own right. During the appeal, Tesco submitted evidence of marketing where just the word ‘Clubcard’ was used, but this was held to be not strong enough to show that the term is anything other than descriptive. It was considered that whilst customers inside Tesco stores would understand that the retailer was referring to its own loyalty card, they wouldn’t necessarily make the same association when asked for a ‘club card’ elsewhere. The public therefore did not see the word as a trade mark, but rather as a descriptive term.
Trade Mark Advice from SH&P
At Stevens Hewlett & Perkins, we have experienced trade mark attorneys who can help you on a range of trade mark issues. These include checking whether your proposed new trade mark conflicts with the existing rights of others, applying to protect your trade mark in the UK and overseas, and taking action to deal with those who are infringing your trade mark rights.
When you come to us for advice, your initial consultation is completely free – so why not book an appointment with us today?