In a recent ruling, the UK High Court has warned businesses to ensure that the scope of their trade marks is clear and precise or risk their marks being invalidated.
The High Court based its ruling on a judgment of Europe’s highest court, the Court of Justice of the European Union (CJEU), which was handed down two years ago – known as the IP Translator case. In that judgment, the CJEU said that trade mark applicants must ensure that the goods and services to be covered by an application are identified with sufficient clarity and precision to enable competitors and others to understand the scope of protection. Applications which lacked the necessary clarity and precision would be rejected. The UK High Court has now extended the effect of the CJEU’s ruling. The result is that where the goods and services to be covered by a mark are not identified with clarity and precision in the initial trade mark application, not only may the application itself be rejected but, if the mark does proceed to registration, the registered trade mark may be invalidated later on this ground. That could have significant brand protection implications for many businesses.
The High Court ruling
The claim in the UK was brought by Total Ltd (‘Total’) against YouView TV Ltd (‘YV’). From 2007, Total provided bespoke telecommunications services under the brand ‘Your View’. It obtained a UK registered trade mark for ‘Your View’ in classes 9, 35 and 38 covering, amongst other things, ‘database programs’, ‘computer databases’ and ‘telecommunications services’. In 2010, YV began offering a television programming service via set top boxes under the mark ‘youview’. Total brought proceedings for trade mark infringement and YV counterclaimed for invalidity of Total’s trade mark. It relied on IP Translator and argued that the trade mark should be invalidated because the goods and services in the trade mark specification lacked sufficient clarity and precision. Total responded by arguing that IP Translator had only said that a trade mark application which lacked clarity and precision should be rejected – it had said nothing about registered marks being invalidated later on this ground.
The High Court accepted YV’s argument and extended the scope of IP Translator to provide for subsequent invalidation for lack of clarity and precision in the goods and services covered by the mark. However, on the facts, it was satisfied that the scope of protection of Total’s trade mark was clear and precise and refused to invalidate it. The High Court said some element of uncertainty around the goods and services covered by a trade mark was to be expected (this was inherent in how the goods and services had to be described in the trade mark application). The question was whether there was such a lack of clarity and precision in the specification as to create an unacceptable or unreasonable level of certainty regarding the scope of protection of the mark. The Court should focus on the core and natural meaning of the words used in the application. On the facts, there was no significant doubt about the meaning of the words ‘database programs’, ‘computer databases’ and ‘telecommunications services’ and no unacceptable uncertainty regarding the scope of their application.
Businesses looking to obtain trade mark protection in the UK and the EU should heed the warnings in this ruling. The drafting of the initial trade mark application is key to minimise both the risk of the application being rejected (with the resultant loss of time and cost and the negative impact on wider brand strategy) and the registered trade mark subsequently being invalidated (which could leave a business without core brand protection in a significant market). Expert advice should always be sought when trade mark strategy is being developed and trade mark applications being made.
Squire Patton Boggs has a team of trade mark experts across the globe. They can advise on the specific trade mark issues in local markets and also on the wider global picture. For more information on any trade mark issues, feel free to call our Director of Trade Marks, Chris McLeod.