Trade marks for businesses are more than a brand name and logo. Many businesses are expanding their portfolio to include other indicators of their business which are recognisable for their customers.
Following in the footsteps of the likes of Cadburys and Louboutin, Tefal sought the registration of an unusual mark by registering an application with the UK Intellectual Property Office (UKIPO) for the ‘red dot’ that is featured in the middle of their cookware products.
The application was initially filed in December 2018 and the application included an image of a frying pan with the red dot detailed in the centre of the pan. When first considered by the UKIPO, the application was rejected on the basis that it lacked distinctive character and on that basis the relevant consumer would not recognise it as a trade mark.
In response, Tefal made a request to the examiner to conduct a survey across the high streets of the UK to highlight that the red dot has distinctive character and has developed this over time. The examiner confirmed that Tefal needed to make the decision as to the evidence it was to submit. After a number of time extension requests, the survey evidence was submitted.
The examiner considered the evidence submitted in the context of sub brands. As the red dot varied in form, with some including a capital T, the examiner needed to consider as to whether they are fell under the heading ‘acceptable variants’ and therefore were enough to evidence use.
Unfortunately for Tefal, the Office decided that on the basis of the survey evidence and other evidence submitted, the red dot served as an indicator of heat rather than as a symbol of the brand. Therefore the application was refused. This case highlights that it is important to ensure all symbols used as there as a brand identifier and not there to highlight the function of a product, as if this is the case, it can burn your cases of trade mark success.
If you would like to discuss your trade mark needs, please get in touch with the team today.