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No Half Measures, except for retiring staff members

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat thanks his friend David Stone (Simmons & Simmons) for drawing his attention to Coca-Cola Company's Appeal, Case O-079-10 before another of the IPKat's friends, Appointed Person Professor Ruth Annand, on 28 February 2010.

As David observes, this was an appeal from the decision of the United Kingdom's Intellectual Property Office (IPO) to reject an application by The Coca-Cola Company to register the word mark NO HALF MEASURES in relation to entertainment and other services in Class 41. The ground of rejection was that the applied-for mark was devoid of distinctive character under Section 3(1)(b) of the Trade Marks Act 1994. He explains:

"The decision is particularly interesting in relation to two main points. The initial IPO hearing was before hearing officer Mr RA Jones, who retired before the unsuccessful applicant made its request for reasons (which enable it to lodge an appeal). The written reasons were therefore given by another hearing officer, Mr AJ Pike, without the trade mark applicant being afforded an opportunity to be heard by Mr Pike. Professor Annand held that this was a breach of Rule 63 of the Trade Mark Rules -- the right to be heard -- saying "the situation is analogous to the death of a judge in the period between trial and judgment reserved. A fresh hearing should be appointed before a hearing officer with no involvement in the case".

This will require a change to UK-IPO practice.

The second aspect of the decision is good news to any trade mark applicant who has struggled to obtain a UK trade mark registration for a slogan without the benefit of proof of distinctiveness acquired through use. Prof Annand helpfully explains the reasoning of the Court of Justice in Case C-398/08 Vorspring durch Technik and the "Catch 22" created by the "misunderstanding and over-enthusistic application of OHIM v Mobelwerk". Rather than remitting the application to yet another hearing officer, she allowed the appeal and found the mark unobjectionable under Section 3(1)(b) for all the services for which it was applied. Several of her comments will be helpful to those trying to convince the IPO to register slogans as trade marks".

Merpel is in two minds about the retirement point: while she fully agrees that the parties have a right to be heard, she can't decide if that's truly applicable here. The IPKat gowever is wholly in agreement with the good Professor regarding the registrability of slogans. An admirer of the Vorspring durch Technik decision, he is delighted that it has already been put to good use.

Full post as published by IPKat on March 31, 2010 (boomark / email).