Two recent decisions – one in the English High Court and one in Europe – have served as a timely reminder of the difficulties inherent in choosing descriptive words as trade marks.
Supreme Petfoods v Henry Bell
In this case, pet food maker Supreme Petfoods Ltd ("SPL") has suffered a setback in its High Court battle with rival animal food company Henry Bell. The High Court has ruled that the trade mark SUPREME, in both its plain word and stylised form, should no longer be registered, except in relation to "small animal food".
This case illustrates the perils of adopting as a trade mark a word such as "SUPREME" that can have descriptive connotations and then trying to enforce that mark against other traders who may use it as part of product names or as a description. The decision is also a reminder of how important it is for trade mark owners to pay attention to how their marks are used in practice.
Invalid marks
Under EU trade mark law, signs which are descriptive of the characteristics of the goods or services for which they are registered are not supposed to be registered as trade marks. As such, at any time after registration they can be declared invalid on an application by a third party and wiped from the register. In some cases, marks which would otherwise be invalid can nevertheless survive because by the time a challenge is made, they have acquired distinctiveness through the use made of them.
In SPL's case, the judge held that the word "SUPREME" was descriptive of a characteristic of pet food and should not have been registered. However, he was persuaded – just – that by the time the validity of the mark was challenged, it had acquired just enough distinctiveness to remain protected for "small animal food". A key factor in the decision was the fact that whilst SPL's product brands such as "Russel Rabbit" had become well known, their actual corporate brand "SUPREME" had not been promoted sufficiently to create distinctiveness for that mark.
SPF did manage to keep its registrations for its "ribbon" trade marks comprising the combined word SUPREME and a coloured logo. But the scope of protection these provide is much less than the word SUPREME. This ruling will certainly make it far less risky for other traders to use of the plain word "SUPREME in their product names for similar products.
Also, the ruling underlined that where a descriptive word such as "Supreme" is used as part of a product description, this may well afford a defence to an infringement claim on the basis that the use is purely descriptive and does not adversely affect the functions of the trade mark in question. The Court accepted that by describing its own "Mr Johnson's" brand of rabbit food as "Supreme" rabbit mix, Henry Bell were using the term descriptively and not as a trade mark. So there was no infringement anyway.
Lidl Stiftung v OHIM (Deluxe)
Most supermarket retailers have sought to create premium sub-brands within their own-brand product ranges. Among wells known examples of these are Tesco "Finest" and Sainsbury's "Taste the Difference".
Discount supermarket Lidl has its own such brand under the name "Deluxe" and sought to register it as a Community trade mark for a variety of goods and services. However, Community trade mark office rejected the application on the basis of descriptiveness and the EU's General Court has now upheld that decision and ruled that Deluxe does not meet the requirements for trade mark protection. This is in spite of Lidl's attempt to register it in the form of a stylised logo.
It remains to be seen whether, in the fullness of time, Lidl will be able to reapply for registration on the basis of acquired distinctiveness. But for the time being the coast is clear for other traders to continue using Deluxe without fear of a trade mark infringement claim from Lidl.
