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25 March 2019
UK trade mark dispute: not enough specific evidence to be mugged off
In March 2016, McMug Ltd filed a UK trade mark application for the mark "okayest". A few months later, the mark proceeded to registration for the following products:
"Beakers of glass; Beer jugs; Beer mugs; Beverage coolers [containers]; Bottle coolers; Bottle openers; Bottles; Boxes for biscuits; Boxes of ceramics; Boxes of china; Boxes of earthenware; Boxes of glass; Ceramic mugs; Ceramic tableware; China mugs; Chinaware; Coasters, not of paper and other than table linen; Coasters (tableware); Coffee cups; Coffee mugs; Coffee pots; Cups; Cups and mugs; Cups (egg-); Cups (Egg -); Cups (Fruit); Cups made of china; Cups made of earthenware; Cups made of porcelain; Cups made of pottery; Cups of paper or plastic; Drinking cups; Drinking cups and saucers; Drinking flasks; Drinking receptacles; Drinking steins; Earthenware; Earthenware mugs; Flasks; Flasks for travellers; Flasks for travellers (Drinking -); Glass mugs; Hip flasks; Money boxes; Mugs; Mugs made of china; Mugs made of plastic; Mugs made of porcelain" (in class 21).
In February 2018 (18 months after registration), AMC Photographics Limited applied for the "okayest" registration to be declared invalid. This action was based on the fact that the mark is devoid of distinctive character as it is a wholly descriptive dictionary word (a superlative of okay), and also that the word is used by many traders on novelty goods and therefore was customary in the current language and in the bona fide and established practices of trade for such novelty items.
AMC specialises in the printing of large, professional-quality poster, photo and canvas prints, CD and DVD duplication and printing/production of novelty items, such as mugs, mouse mats and tote bags. They clearly had an interest in the registered term and a desire to remove it from the register, potentially concerned that they would be infringing based on their use despite submitting evidence to suggest that such use may have started before the registered mark.
McMug denied the claims made in the invalidity action and filed a counterstatement to that effect. They decided not to file any evidence to support their position. By comparison, AMC submitted written submissions and a large volume of evidence including two witness statements. These statements included examples of other third parties using the mark "okayest", as described below, and also references to online websites, dictionaries, blogs, book extracts and newspaper articles.
The first witness statement stated that they first came across the word "okayest" on a T-shirt in Canada in 2011. In 2014, AMC designed a range of mugs decorated with phrases that included the word, such as WORLD'S OKAYEST BROTHER, and started selling them in March of that year. In 2016, they had sold 500 units of these which turned over £3,500.
AMC also stated that they were not the only retailer selling mugs with the mark "okayest" affixed on them. Evidence from Amazon was submitted in support, showing examples of the mugs bearing THE WORLD'S OKAYEST MUM, BROTHER, SISTER, BOSS, and so on, sold by other retailers.
The decision addresses the leading cases in relation to distinctiveness, descriptiveness and how they apply to the "okayest" registration. It was, however, found that the evidence supplied did not indicate that the word "okayest" is/was used to designate any characteristic of goods. The most plausible possibility was that it might describe the quality of the product, but it did not seem likely that traders in the novelty field would legitimately describe their products in this way in an attempt to tell the consumer that the mug they have purchased is "super average".
Neither would the relevant public perceive the word as a description of the goods or some characteristic of them. As shown in the small amount of use (on mugs) put forward, the word was intended to describe, as part of a longer phrase and in a jokey fashion, the person who is using the product. The term was therefore not directly descriptive to the consumer or trader.
Furthermore, the various examples of evidence submitted was not specific enough to the registered products for the mark to be found as non-distinctive. To this effect, the Examiner found that there was no reason why the word in itself would not be able to function as a trade mark. Being in the dictionary is, of course, not sufficient to remove the mark from the register. If it were, many trade marks would be perceived as non-distinctive.
The application for invalidation was, therefore, unsuccessful and the mark "okayest" remains registered for the class 21 products.
This case is a useful reminder that, even after registration, a mark can be challenged on the grounds of non-distinctiveness, descriptiveness, etc. It also confirms that the evidence must be specific to the goods/services concerned and also, depending on what is being argued, the perception of the relevant public, consumer or trader. Simply submitting evidence from various sources without linking them to the goods or services, or the consumers/traders, is not likely to be enough.
Case Ref: O-046/19
For further information on this topic please contact Christopher Benson or Tom Hooper at Taylor Wessing by telephone (+44 20 7300 7000) or email (firstname.lastname@example.org or email@example.com). The Taylor Wessing website can be accessed at www.taylorwessing.com.
This article has been reproduced in its original format from Lexology – www.Lexology.com.
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