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IP Cases & Commentary – Details

27 July 2010

Intelligent Sensor - Case 0/189/10 Appeal to the Appointed Person (Amanda Michaels)

This case is another example to appellants of the very narrow remit which now exists for appeals from a UKIPO hearing officer’s decision.

Although the appointed person could accept that this was a borderline case and a trade mark which some hearing officers would not have found to be objectionable, as there was no ‘distinct and material error of principle’ in the hearing officer’s decision, there was no basis for the Appeal Tribunal to overturn that decision.

The applicant sought registration of the trade mark INTELLIGENT SENSOR in respect of a wide range of goods in class 9. The UKIPO hearing officer refused the application on the basis of both Sections 3(1)(b) and (c) of the UK Trade Marks Act, finding that the mark was non-distinctive and descriptive in relation to the relevant goods claimed.

An appeal was lodged against the refusal in respect of the claim to television receivers (TV sets) and cellular phones.

The appellant argued that the hearing officer had erred in finding that, in relation to these goods, the mark applied for would be seen by members of the public as designating the nature or characteristics of the goods. They argued that the term ‘intelligent sensor’ would not in ‘normal usage’ describe the goods or any essential characteristic of the goods and was not an ‘obvious choice’ to describe the goods.

However, the appointed person did not believe that the ‘obvious choice’ test was appropriate and found that the hearing officer was right to consider instead whether the average consumer of the goods would see the mark as referring to a characteristic of the goods (TV sets and cellular phones with an intelligent sensor function) rather than as indicating trade origin.

She similarly dismissed the appeal case under Section 3(1)(b). Even if the mark lacked a direct and specific relationship with the goods, the hearing officer was still entitled to refuse registration on the basis that the mark would be perceived as a promotional slogan and not as an indicator of origin.

From one perspective, there seems to have been some force in the merits of this appeal, particularly on the issue of reasonable forseeability – the mark must be apt for descriptive use in trade in order to be objectionable under Section 3(1)(c). If it is not in normal usage as a description in the trade and would not be an obvious choice as a description, there is force in the argument that consumers are more likely to see the term as a trade mark, rather than as a description.

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