What is Distinctive Character?

By definition, a trade mark must be able to distinguish the goods and services of one business undertaking from those of another.

This allows a consumer to choose between products from different sources when selecting one for purchase.

When a trade mark application is filed, it is examined to determine whether it has sufficient distinctive character.

But what does this mean, and how is it assessed?

A recent decision taken by UK Intellectual Property Office (UKIPO) has re-examined the necessary considerations when assessing distinctiveness. The decision under case reference O/0260/24 was taken on 26th March 2024.

The hearing related to an application to register a 3D mark depicting a large oval chocolate “drop” (of the type you would melt to add to cakes, mousses or other baked goods), with a small flower-shaped indentation in the centre. The application covered goods relating to chocolate products.

An image of the mark, as applied for, is shown below:

The application was refused registration because it was considered by the UKIPO to consist exclusively of a “non-distinctive” 3D representation of the product, which in essence depicted the basic and typical appearance of chocolate and confectionery products in the shape of an oval and decorated with a flower.

It was held that the shape was commonly used by other traders in relation to chocolates and confectionery products. The small decorative “flower” was considered to be no more than a decorative feature and that such features are typically used in relation to chocolate and confectionery products.

That being the case, consumers would not attribute any trade mark significance to this mark.

Overall, it was held that the mark did not feature a sufficiently unique character that would allow it to function as a memorable badge of trade origin (which is the purpose of a trade mark).

Following the decision, the applicant filed evidence to show that the mark had acquired distinctive character through use, but this was not deemed sufficient by the Examiner. A hearing was requested, and the objection was maintained. A request for a statement of reasons led to the publication of this decision.

When considering distinctive character, Section 3(1)(b) of the UK Trade Marks Act 1994 is relied upon, which states that ‘trade marks which are devoid of any distinctive character’ shall not be registered.

In its statement the UKIPO referred to the case Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Postkantoor) C-363/99 and remarked:

‘A trade mark’s distinctiveness must be assessed, first, by reference to those goods or services and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect.’

The UKIPO explained that when considering the goods upon which the mark is to be used, and also considering the applicant’s use of the mark, it was their view that the sign was nothing more than a 3D representation of the goods themselves.

With respect to the “relevant public”, the UKIPO considered this to be the general public who would be seeking to purchase chocolate products for their own consumption and also businesses operating in the catering sector, particularly insofar as those purchasing chocolate for use in bakery, pastry-making and confectionery.

They also stated that chocolate and chocolate products are everyday consumable products and that the applicant’s chocolate products would be purchased regularly as a sweet confection or for use in baking and cookery.

It was considered the relevant consumer would apply at least a “moderate” level of attention when considering whether or not to purchase these kinds of chocolate products.

Another necessary consideration was whether the mark departed significantly from the “norm” or “customs” of the food sector to an extent that it fulfilled its essential function of indicating origin. Were it to be held to do so then it could not be considered to be “devoid” of distinctiveness and, by definition, would therefore be distinctive, even if only marginally.

However, the UKIPO held that no evidence had been submitted by the applicant to support its assertion that the oval shape of the 3D chocolate product differed from the norms and customs of the trade and that the oval shape would not be unusual with regard to chocolate products.

What perhaps sealed the distinctiveness fate was the likelihood that the shape of the sign closely resembled the shape of a cocoa bean, this being a key chocolate-making ingredient.

Acquired Distinctiveness

Where a trade mark has acquired a distinctive character as a result of the use made of it, it shall not be refused registration.

Therefore, if sufficient evidence can be provided to show that consumers have come to associate a trade mark with the relevant goods or services an objection under Section 3(1)(b) can be overcome.

The guiding principles when assessing evidence to demonstrate acquired distinctiveness are set out in Windsurfing Chiemsee (Joined cases C-108/97 and C109/97):

‘In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and longstanding use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking.’

The UKIPO considered whether the evidence provided by the applicant and determined whether a significant proportion of relevant consumers would have come to perceive the mark as designating the goods of a single undertaking and that it served to distinguish those goods from those of other undertakings as a result of the use made of it.

Unfortunately, the evidence provided did the applicant no favours. Articles were submitted in evidence which focused on the shape of the chocolate product as serving a functional purpose, in other words, inadvertently demonstrating that a specific “oval” shape ensured that the chocolate could heat and liquify evenly.

Rather than the shape being distinctive as an indicator of origin, the evidence showed that it was oval for a reason, and by that token there was no reason to grant a right to a single business entity for that shape.

Although the sales figures submitted were considered to not be insignificant, the UKIPO cited the judgement in the KITKAT case [2014] where is was held that:

‘even if the product has been sold on a very large scale under and by reference to a highly distinctive trade mark (Kit Kat), and assuming that the shape has become well-known, this does not necessarily mean that the public have come to perceive the shape as a badge of origin such that they would rely upon it alone to identify the product as coming from a particular source.’

The UKIPO explained that although there may be some consumers who recognise and associate the shape, even exclusively, that does not necessarily mean that the shape itself functions as a trade mark.  Evidence should have been submitted to show that it is the mark applied for that is being used as a means of identifying the goods as originating from a particular undertaking (not goods that also bear the trade mark VALRHONA, which is the means by how consumers would readily identify the applicant’s products).

Had the applicant succeeded in registering the shape mark it would have then had an actionable right to challenge the use of similar chocolate “drop” shapes by competitors. Most people would probably consider this to be an unfair position.

How can I make sure my trade mark has distinctive character?

• Choose a brand name that catches the eye. Made-up names, acronyms or a “play on words” will often stick in the mind of a consumer.
• If your trade mark lacks distinctiveness, think about adding a feature that is distinctive in its own right. Avoid anything that may merely be seen to be “decorative” in nature.
• If your mark has been in use before you file your trade mark application to register it then make sure to collate as much evidence as you can to show your trade mark being used, in case you might want to rely on this evidence at a later date to shows that the mark had acquired distinctiveness through use.

If you have a brand that you consider may not be distinctive but wish to try and register it, then get in touch with us now for a FREE consultation and let us help you.