Royal Mint sovereign mark opposition upheld on appeal

An opposition against the application of The Royal Mint to register the word mark 'Sovereign' was filed by The Commonwealth Mint & Philatelic Bureau Limited (CMPB) on the grounds that:

The word SOVEREIGN is in common use in and beyond trade, and is widely recognised as a word describing coins of a particular type and denomination that may be legal tender in any one of a number of different countries/territories.

The opposition was upheld by the Hearing Officer on the basis that sections 3(1)(c) and (d) of the Trade Marks Act 1994 applied and the applicant had failed to prove acquired distinctiveness. The Royal Mint appealed each of these findings.

Section 3(1)(c)

This precludes from registration,

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.

The Hearing Officer found that 'sovereign' is a kind of gold commemorative coin rather than a name that distinguishes goods from a particular undertaking.

This was concluded as, both statute and marketing material produced by the Royal Mint make reference to the denominative value of a sovereign and the coin remains legal tender in the UK for the equivalent value of £1. The Hearing Officer therefore took the view that the contested mark was excluded prima facie from registration by virtue of section 3(1)(c).

Section 3(1)(d)

This section prevents the registration of,

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The Hearing Officer held that although the relevant average consumer is likely to be aware that most sovereigns offered for sale in the UK are Great British sovereigns issued by the Royal Mint on behalf of the UK Government, there are also 'sovereign' gold coins from at least the Isle of Man, Jersey, Australia and Gibraltar which are also available for sale within the UK.

Therefore, although British sovereigns are by far the most common in the UK, the word 'sovereign' when used alone does not guarantee the trade origin of such goods and has become customary in the current language and established practices of trade. Section 3(1)(d) therefore prevented the registration of the contested mark.

Acquired distinctiveness

It was accepted that a large proportion of the relevant public would have been familiar with the name 'sovereign' at the relevant date and have associated it with coins issued by the Royal Mint. Equally, however, a large proportion of the public would also have been aware that other territories also produce gold commemorative coins known as sovereigns that are traded in the UK.

Accordingly, the word 'sovereign' had not acquired a distinctive character as a trade mark and when used in the absence of words such as 'British' or 'The Royal Mint' it would also be recognised as denoting similar coins produced by undertakings other than the Royal Mint. The evidence therefore failed to show that a significant proportion of the relevant class saw the goods as originating from a particular undertaking as a result of the contested mark rather than due to any other marks that were also present, as is required to show acquired distinctiveness as set out in cases such as Cadbury and Windsurfing.

The High Court decision

The Royal Mint was unsuccessful in each of its challenges against the Hearing Officer's conclusions and the High Court found that all could be reasonably reached. In particular, the Royal Mint contested the dismissal of its expert evidence given by two Museum curators. It was held that although both were extremely knowledgeable in the field, neither were typical traders or collectors of gold commemorative coins and therefore their views were unlikely to be representative of the relevant average consumer and therefore their evidence could not be determinative.

Case details at a glance

Jurisdiction: England and Wales
Decision level: High Court (Chancery Division)
Parties: The Royal Mint Limited and The Commonwealth Mint and Philatelic Bureau Limited
Citation: [2017] EWHC 417 (Ch)
Date: 03 March 2017
Full decision: http://www.bailii.org/ew/cases/EWHC/Ch/2017/417.html