In a bid to create a control over the word ‘Sovereign’, the Royal Mint made an application to register it as a trade mark for gold commemorative coins.
However, this application hit a number of stumbling blocks, the first being an opposition from the Commonwealth Mint & Philatelic Bureau Ltd arguing that the term ‘Sovereign’ was a widely recognised and widely used term for a coin of a particular type and denomination from a number of different countries, therefore it should not be protected in the UK.
The Hearing Officer who considered the opposition favoured this view and refused the application on the basis of the Absolute Grounds for refusal under the Trade Marks Act 1994. These grounds focus on the mark itself and how its constructed. The grounds relevant here were that the mark consisted of words that has become customary in the established practices of the trade and it designates the kind and quality of the goods.
The Royal Mint tried to rebut this by claiming they had acquired distinctiveness through use. They stated that in the UK, as they are the only ones entitled to make or issue a sovereign as legal tender, their use of the word has built the required distinctiveness.
The Hearing Officer did not agree and refused the application on the following grounds:
- Sovereigns are legal tender in the UK;
- The Royal Mint drew attention to the value of sovereigns in its marketing material;
- The Royal Mint’s marketing material uses “sovereign” in an analogous way to other denominations such as the Queen’s £5 coin which was issued for the diamond jubilee; and
- Although the Royal Mint closely assesses the quality of the sovereigns, this is also true for the other coins it mints such as the £1 coin and “pound” is not a trade mark for coins;
- Although the average consumer is likely to be aware that most sovereigns offered for sale in the UK come from the Royal Mint, there is trade in the UK of coins from other countries e.g. Australia; and
- Although the Royal Mint has sold a large volume of coins over a long period of time and had a very significant share of the gold coins market in the UK, it had not established that consumers perceived gold coins as originating from a particular undertaking based on the word “sovereign” alone.
This decision was appealed, and Newey J considered the previous decision of the Hearing Officer and focused on the question, whether the fact that no one but the Royal Mint can make sovereign coins for United Kingdom purposes means that the word “sovereign” must be distinctive of its coins?
After deliberation, Newey J concluded the answer to be ‘no’ as firstly, the trade in gold commemorative coins is international, secondly, a small proportion of ‘sovereign’ coins have been made outside of the Royal Mint’s control and lastly, gold ‘sovereign’ coins from other countries such as Australia are available in the UK.
This was the end of the Royal Mint’s trade mark bid but the case did give a good description of the likelihood of any future coin related trade mark applications.
For more information or any IP assistance, do not hesitate to contact Lawdit Solicitors.