by Andy Harris
Tesco has recently had an application to register the word CLUBCARD as a UK trade mark rejected for certain goods and services, including loyalty cards. This was on the basis that the mark lacked distinctive character and is a useful example of the problems with trying to register ‘descriptive’ marks.
Distinctive or descriptive?
A key requirement for registration of a trade mark is that it is distinctive, not descriptive. A trade mark after all is meant to be a badge of origin, a way of distinguishing the goods and services of one trader from those of another. It is not meant to simply describe the particular goods or services.
This requirement of distinctiveness is harder to achieve with ‘word only’ applications as they have no graphic or visual bells and whistles to make the mark look more distinctive.
Tesco applied for a word only mark for CLUBCARD and for a slightly stylised version of it. The initial examination report indicated the marks lacked distinctive character. Tesco asked for a hearing to challenge this view.
How to become distinctive
The requirement that trade marks must be distinctive not descriptive is not absolute. Applications for descriptive marks can be granted where it can be shown that distinctiveness ‘has been acquired through use.’ In plainer speak that just means that the mark has been used so extensively that people see it purely as a trade mark (i.e. a badge of origin) and the fact that it is descriptive loses significance. This is why there are so many registered trade marks for marks which on the face of it seem entirely descriptive.
Not every little helps
Tesco argued that their CLUBCARD mark had acquired such ‘distinctiveness through use’ but the hearing officer disagreed. Although there was evidence of high numbers of users of Tesco’s Clubcard, the term CLUBCARD was also used by other traders.
Moreover, the use by Tesco of the CLUBCARD mark was usually alongside the TESCO and EVERY LITTLE HELPS trade marks. In this case every little clearly didn’t help as it could be argued that it was these other marks which really served as the badge of origin, with CLUBCARD simply being an additional descriptive term.
It would be a surprise if Tesco didn’t appeal. This is after all just the first decision and large brands such as Tesco don’t usually throw the towel in after round one, often regardless of the merits of their case.
Assuming they do appeal, one difficulty they may face will be the extent to which CLUBCARD is used generically to describe store loyalty cards. Once a trade mark starts to get used generically its function as a trade mark is immediately eroded. Rather than distinguishing the goods and services of one trader from another, it instead starts to describe only a general type of good or service, regardless of trader. There is a long list of examples of this unfortunate phenomenon, such as hoover, inoleum, walkman, escalator and sellotape, all of which morphed from badges of origin to generic descriptors. It may be CLUBCARD is going the same way.