There have been a veritable bounty of trade mark decisions recently on ‘distinctiveness’ (or lack of) which highlight the fact that just because a brand owner believes his products to be distinctive, doesn’t necessarily mean that the Judge will.

You may have heard that in the on-going Nestle/Cadbury battle with regard to the registration (or otherwise) of the shape of the KitKat biscuit bar, the Advocate General has recommended that the ECJ hold that in order to show acquired distinctiveness, an applicant (Nestle) would have to show that the public perceive that the trade mark being applied for (in this instance, the shape of the bar) as a guarantee of origin rather than merely associating it with the applicant’s goods. We raised this point earlier this week when discussing Capri Sun’s loss of their own 3D shape mark where the Hague courts held the mark to be invalid as the distinctive elements of the mark were necessary to achieve technical function. Similar reasoning seems to have been applied here in the Nestle battle.

Also this week the High Court upheld an IPO decision to refuse registration of CANARY WHARF on the grounds that the mark was devoid of distinctive character and that it designated geographical origin. (As frequent readers of our blog, you will of course know that designations of geographical origin are an absolute ground for refusal to register a trade mark.) Whilst our immediate retort might be ‘….yes, doesn’t CANARY WHARF designate geographical origin?” you might wish to know that apparently it doesn’t, or so argued the applicant. It is only since the construction of the estate that the name has become linked with a geographical part of London. Whilst I can appreciate the scope for argument, all evidence of distinctiveness is viewed by the appropriate examiner as at the date of application and one might be forgiven for thinking that’s a bit of no brainer then…..?

Finally, the EU General Court maintained an OHIM Board of Appeal decision that there was no likelihood of confusion between AGRI.CAPITAL and AGRICAPITAL based on the fact that the goods and services covered by each mark were not confusingly similar or even associated goods/services. The judge held therefore that consumers who knew one brand, would not necessarily be aware of the other and so the likelihood of confusion was not apparent. However, I’ve read that both companies were in the financial field, albeit at playing at different ends and I have to say that I anticipate seeing this case in the appeal court in due course.