Now Don’t Relax! The Ultimate Dangers of Figleaf Marks
Two recent Board of Appeal decisions have highlighted the risk of seeking to enforce or rely upon trade marks that are likely to have secured registration due to the addition of figurative elements to an otherwise non-distinctive word mark.
Such marks have on occasion been referred to as ‘figleaf marks’, following an English High Court decision of November 2012 in a dispute involving the NOW trade mark, which had been registered as a Community Trade Mark (CTM) in relation to a number of goods/ services in classes 9, 35, 38, 41 and 42.
Mr Justice Arnold noted as follows1:
I would comment that it appears to me that [the claimant] only succeeded in obtaining registration of the CTM because it included figurative elements. Yet [the claimant] is seeking to enforce the CTM against signs which do not include the figurative elements or anything like them. That was an entirely foreseeable consequence of permitting registration of the CTM. Trade mark registries should be astute to this consequence of registering descriptive marks under the cover of a figurative figleaf of distinctiveness, and refuse registration of such marks in the first place.
Brand owners and trade mark practitioners will be familiar with the concept of a party securing registration for a stylised word mark (or a word plus logo composite mark), then seeking to enforce the registration as if it were for the plain word mark. It is within this context that the two Board of Appeal decisions are assessed.
In the first case, the opponent had secured registration for the trade mark in relation to beds, bed linen and related goods/services (CTM Reg. No. 4958955).
The mark lists the colour “red” under the description heading “Indication of colour”. The opponent relied on this trade mark to oppose a CTM application for the trade mark (CTM App. No. 9955212), in relation to identical and/or similar goods/services, claiming a likelihood of confusion between the marks.
The opposition was rejected at first instance: although the trade marks were visually similar to the extent that they coincided in the term ‘relax’, they differed in the typeface of the words, their colours, and the additional figurative elements in the application (the sleepy bear). The opposition division held that since the word ‘relax’ possesses a low distinctive character, the distinctiveness of the earlier mark lay in its graphic representation, typeface and colour. Overall, there was no confusing similarity. The opponent appealed.
On 05 September 2013 the First Board of Appeal dismissed the appeal. The Board of Appeal held that the impression of the earlier mark was dominated by its red colour and the particular typeface used. The impression that consumers would keep in mind of the contested application was the image of a sleepy bear. Nevertheless, overall the marks were held to be similar because they contained an identical word element.
Of course, similarity of marks is not enough to succeed in an opposition: there must also be a likelihood of confusion between them as a result. The more distinctive the earlier mark is, the greater the likelihood of confusion will be. Accordingly, the Board of Appeal went on to assess the distinctiveness of the earlier mark. It held that use of the English word ‘relax’ was so widespread that it was likely to be understood across the European Union (EU). In relation to the goods/services covered by the mark, the word would be perceived as one of the desired qualities of those goods – in other words, it was extremely descriptive, and consumers would not perceive it as a trade mark.
The Board of Appeal noted that consumers do not usually consider descriptive elements forming part of a composite mark as the distinctive and dominant element of its overall impression.
Where two marks share a common, descriptive verbal element, consumers will not conclude that goods/services sold under the marks emanate from the same commercial source.
The phonetic identity between the marks did not assist the opponent, since this was less important for the goods in question (ie beds and related items) which are marketed in such a way that consumers perceive marks designating such goods visually, do not tend to order the goods orally, and usually make a purchase only after a visual inspection. In such circumstances, consumers were more likely to remember the image of the sleepy bear in the application, which appeared at the top of the mark (here the Board of Appeal reiterated that trade marks are generally read or perceived from left to right and from top to bottom).
Overall, the Board of Appeal agreed that there was no likelihood of confusion between the marks, and the appeal was dismissed.
Just over two weeks later, the Grand Board of Appeal issued its decision in an opposition where the owner of the mark below, registered for vitamins and nutritional food supplements, had opposed an application for the plain word mark ULTIMATE GREENS for identical/ similar goods in classes 5, 29 and 302.
The opposition was successful, and the applicant appealed. In May 2013 the First Board of Appeal transferred the case to the Grand Board of Appeal, since it considered there was divergent case law on the assessment of composite marks where one element is a descriptive verbal element.
Importantly, the opponent’s earlier CTM application for the plain word mark ULTIMATE NUTRITION had been rejected for the same goods on the grounds of a lack of distinctiveness and descriptiveness. The Grand Board of Appeal stated that the only difference between that word application and the mark relied on in the opposition was the black rectangle, which the Grand Board of Appeal held was commonplace and lacked any distinctive character. Indeed, there was nothing unusual about the typeface of the writing, nor the placing of one word on another that could endow the mark with any particular distinctive character.
Once again, the Grand Board of Appeal noted that the level of protection conferred on a mark goes hand in hand with its distinctive character. Unsurprisingly, it held that the words ULTIMATE NUTRITION were descriptive of the goods in question, and lacked any distinctive character. In particular, the word element ‘ultimate’ was a promotional word used to indicate the superior quality of the latest goods available on the market; and the word ‘nutrition’ was a very basic English word for ‘food’. Both words were entirely devoid of any distinctive character across the EU, and consumers would perceive the mark ULTIMATE NUTRITION as a clear and unambiguous indication of the latest or the best nutrition available.
The Grand Board of Appeal re-emphasised that consumers would not consider a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by the sign. Although the Grand Board of Appeal acknowledged that opposition proceedings are not aimed at examining absolute grounds for refusal, it was bound to examine the scope of protection of the earlier mark.
Overall, there was only a low degree of visual similarity between the marks in question, since both contained a common element in the word ‘ultimate’. However, that element was not the dominant element in either mark, since it was descriptive and non-distinctive. The marks were dissimilar in all other aspects, and as such there was no likelihood of confusion (which includes a risk of association) between the marks. The Grand Board of Appeal noted that a risk of association could not be based on a non-distinctive element of a mark. The Grand Board of Appeal was keen to strike home the message that non-distinctive/descriptive elements of marks should be given appropriately low weight when assessing similarity. Ultimately it neatly summarised the commercial, take-home message for brand owners on the risk of adopting and registering non-distinctive marks:
Whereas, a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components.
These cases serve to illustrate once again how important it is for brand owners to adopt suitably distinctive words and logos as trade marks. Where stylisation is added to a potentially objectionable mark in an attempt to secure registration, this should itself be as distinctive as possible to avoid the claim of its being merely a ‘figurative figleaf’, designed to spare the blushes of an otherwise unregistrable sign.
- Starbucks (HK) Ltd & Ors v British Sky Broadcasting Group plc & Ors  EWHC 3074, at para 117
- The opponent also relied on another earlier CTM, comprising the words ULTIMATE NUTRITION superimposed over a circular world map with a laurel wreath surround.