Lessons from aunty – Distinguishing trade marks

12 Jul 2016

A recent European trade mark decision highlights how risky it can be to simply register the word version of a trade mark that is used in a stylised form. The case also highlights an issue that may be worthwhile considering when creating a trade mark – simpler may be cheaper.

The decision in question involved a European registration for the trade mark Aunt Bessie’s in ordinary script for a range of foodstuffs. The trade mark Aunt Bessie’s is seemingly well known in the United Kingdom for goods like roast potatoes. The company that owns the registration opposed an application to register the trade mark Aunt Berta’s in a stylised form for the same goods.

Although the opposition succeeded in the first tribunal, the decision was reversed by the Board of Appeal. The Board of Appeal held that, although the goods were identical, there were sufficient differences between the trade marks to make confusion unlikely. In reasoning that raises a few questions, the Board of Appeal said that English speakers would easily distinguish the trade marks because they understand the word “aunt” and therefore know that two different aunts are involved here, whereas non-English speakers, for whom the word “aunt” is meaningless, will also distinguish the trade marks because of the differences between Bessie’s and Berta’s.

Interestingly, the Board of Appeal acknowledged that the visual appearance of a trade mark is particularly important in the food sector because of the way in which foodstuffs are bought, namely in busy supermarkets where there may be a lot of competing products, and where consumers don’t always have much time for reflection.

What makes the case unusual, however, is that the trade mark Aunt Bessie’s is in fact used in a highly stylised form, one that makes it quite similar in appearance to the stylised Aunt Berta’s trade mark that it opposed. In both cases, the name is in a stylised red script. However, this fact didn’t come into the equation because the company didn’t have a registration for the stylised form of its trade mark, and hadn’t relied on any “common law” or user rights to its stylised trade mark, something that would have required proof of use, reputation and likely confusion.

This decision highlights a dilemma that trade mark owners face. It’s absolutely essential to register a word trade mark in ordinary script to get the widest possible protection for the word. A registration for a word trade mark should cover all usages of the word, and all similar words. So, for example, if the trade mark that had been opposed in this case had featured the same script but with the name Aunt Bessie’s, or possibly even Aunt Bess’s or Aunt Bennie’s, the opposition probably would have succeeded, given the similarities of the names. But, because it comprised a name that was a bit different (Aunt Berta’s), the opposition failed.

The company that owns Aunt Bessie’s would have been in a far stronger position if it had also registered the trade mark Aunt Bessie’s in the stylised form in which it is used. The tribunal would then have compared the two stylised trade marks and may well have concluded that confusion was likely. Trade mark owners should sometimes treat a stylised word trade mark in much the same way that they treat a logo; in other words, as something that should be registered separately from the word trade mark, even though the two are used together.

A registration for the stylised version of a word mark puts the emphasis on the visual aspect of the trade mark rather than the word itself. This can be important because it can be easy to recreate the visual appearance of a stylised word trade mark without copying the word itself. Think, for example, of the famous cocaine version of the Coca-Cola stylised trade mark, where Coca-Cola Company filed a trade mark infringement claim against Gemini Rising Inc. based on its reproduction of a poster for commercial sale, which stated “Enjoy Cocaine” in the same script, colour and format as the well-known Coca-Cola trade mark. The Coca-Cola Company was successful in its trade mark infringement claim and the court recognised the distinctive quality of the Coca-Cola trade mark, as well as the business reputation of the company. The reality is that the more stylised a trade mark, the greater the need for a separate registration. This is something that should perhaps be borne in mind at the brand-creation stage.

The objection to filing separate trade mark applications for the word and the stylised form of the word is, of course, that it doubles the cost. But it’s probably worth the expense. If the Aunt Bessie’s case had been fought in South Africa, the owners of Aunt Bessie’s may well have relied on common law and registration rights. This would have been a costly exercise, involving the submission of evidence of sales figures, advertising expenditure figures and, preferably, instances of confusion. The cost of this exercise would have far exceeded the cost of a second trade mark application.

Trade mark filing strategies should therefore be carefully considered.

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)

Intellectual Property Law articles on GoLegal