UKIPO rejects Tefal’s figurative ‘red dot’ TM bid
The UK Intellectual Property Office (IPO) has refused to register French cookware manufacturer Tefal’s figurative mark, after finding the applied-for trademark as devoid of distinctive character.
On Monday, November 23, the office dismissed Tefal’s application of a trademark consisting of a “plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan”.
In 2018, Tefal applied to register the trademark in class 21, covering frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks.
However, in early January 2019, an IPO examiner objected to the mark’s registration under section 3(1)(b) of the Trade Marks Act 1994, noting that the mark was devoid of any distinctive character.
In a bid to have its trademark registered, Tefal undertook a survey of 400 people across the UK’s High Streets, aimed at providing evidence of acquired distinctiveness.
An IPO hearing officer again rejected the trademark. Tefal appealed against the decision but, earlier this week, the office rejected Tefal’s bid.
Edward Smith, on behalf of the IPO, said: “Whilst I may not have chosen to use the term ‘banal’ in respect of the sign as filed, I cannot disagree with the examiner’s and hearing officer’s conclusion that, in the prima facie case the sign is devoid of (any) distinctive character.”
Before turning to acquired distinctiveness, Smith said that he must note his “grave concern that the applicant’s exposure of its sign, ‘The Famous red Spot’ is, and has been all along, an indicator of heat rather than an arbitrary or random red spot”.
He added: “If the sign has been used to achieve a technical effect, as an optimal heat indicator to show the consumer when the pan is hot enough to start frying or cooking, in my opinion this would militate, at the very least, against any perception that may have arisen that the use was as a trademark and a guarantee of origin.”
However, the IPO went on to conclude that whether the sign is performing a technical function and so invalid should not be further considered, because the trademark should be refused under section 3(1)(b).
Turning to the survey, the IPO said that the survey simply shows “‘recognition and association’ of a major player in the cookware sector, rather than the kind of material perception as a trademark which is required by the case law”.
Smith concluded: “I have considered the totality of the evidence submitted and the legal submissions made and have concluded, like the hearing officer, that the plea of acquired distinctiveness fails to show that a significant proportion of relevant consumers, not just associate the sign with the applicant, but regard it as a trademark guaranteeing the origin of the goods.”
The trademark application was refused.
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