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5 July 2018Trademarks

UKIPO rejects ‘Experience’ TM at Jaguar’s request

The UK Intellectual Property Office (IPO) has upheld Jaguar Land Rover’s opposition to a “generic” trademark on the grounds of descriptiveness.

It delivered its decision on Tuesday, July 3.

Rooftop Film Club, an organiser of “unique film experiences” in cities including New York and London, applied to register the trademark ‘Experience’ with the IPO in August 2016.

The filing covered multiple classes (9, 16, 35, 38, 41, 42, 43, and 45) and cited goods and services including software, digital media, marketing services, and cinematic equipment.

In November 2016, Jaguar filed a notice of opposition and said the applied-for mark is a generic term which is widely used by third parties in relation to “entertainment/event based products and services”.

The relevant public would understand the mark to provide “general information on the nature of the goods and services concerned”, Jaguar claimed, and therefore it “cannot perform its essential function in denoting commercial origin”.

Jaguar gave the example of experiential marketing services, which Rooftop’s applied-for mark covered in class 35. ‘Experience’ is descriptive of these services, Jaguar said, and the public would believe “without further reflection” that the mark relates to a characteristic of the goods and services.

Rooftop filed a counterstatement which denied the grounds of opposition, but the IPO said it failed to file evidence or attend the hearing.

In its counterstatement, Rooftop denied that the applied-for trademark is non-distinctive and that consumers will perceive ‘Experience’ as a descriptive term.

“The trademark is sufficiently opaque and vague in nature so as not to provide any direct information about the relevant goods and/or services, and therefore is perfectly capable of functioning as a trademark”, Rooftop claimed.

The IPO said it held a case management conference (CMC) to discuss the volume of evidence filed by Jaguar. More than 900 pages were submitted, which the IPO said “grossly exceeds” the limits set out by the relevant regulations.

Jaguar was asked to file a reduced volume of evidence, which it did.

One exhibit Jaguar relied on was a printout from Wikipedia which defined the term ‘engagement marketing’ as an “experiential marketing” strategy which invites consumers to participate in a “brand experience”.

Additional exhibits showed the way that services related to entertainment, events, hospitality, cinema, and clubs used the word ‘experience’ in their advertising. Jaguar also referred to articles in the media, such as an advertorial on The Telegraph website entitled “The most amazing hotel experiences in the UK”.

The IPO agreed with Jaguar that the mark is descriptive of goods and services which provide practical contact with an activity or event, “particularly those which are interactive or which leave an impression on the user”.

Average consumers are not likely to consider the applied-for mark as “identifying a particular trade source of any of the goods and services for which registration is sought”, the IPO concluded.

The IPO ordered Rooftop to pay Jaguar £1,800 ($2,384) towards its costs.

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