KIPI Trademark Rulings
In Re T.M.A No 111293 in the name of Daigeo Ireland, 27 June 2024
Facts
On March 2020, Diageo Ireland (the Apllicant) filed an application to register trademark number 111293. The trademark was for goods in class 32 of the International Classificatio of Goods and Services (Class 32: Beer, porter, ale; lager; stout; non alcoholic beverages.
On 28th May 2020, the Trade mark examiner issues a refusal notice indicating that the application had been refused registration on the grounds that it lacks essential elements under Section 12 (a, b, c and d) of the Trade Marks Act.
On 6th November 2020 the Applicant filed written submission against the refusal to register their mark. The applicant argued that the proposed trademark did infact possess a degree of distinctiveness in connection to goods or services as it denotes it as originating from a particular entity.
Specifically to support its argument that the trademark is distinctive and different from the norm the applicant stated in its submissions that
The applicants trademark is three dimensional (3D) trade mark. The proposed mark is stubby, and not as slim as bottles generally used for berrs in Kenya, The bottle is charactereised by a wider finish with a curved stubby short neck. This merges into stubby, prominent rounded shoulders that in turn merge with broad body that finally joins the broad base. The appearance of the bottle is almost like two curvatures flowing and sitting on top of each other with the saller circle on top. The small circle just nenath lid/cap of the bottle and the other at the shoulders.
Furthermore the Applicant also argued that the lid was shallow so that the circle is made more pronounced by comparison and contributes to the stubber look. They also stated that the free flowing double circular design is deliberately made so that it distinguishes itself from other bottles in the trade. The Applicant further argues that the contours and stubbier girth was a design feature to provide consumers a more substantial and balanced hand feel and pronounced grip. They argued the experience of holding their stiubbier bottle would be so distinct, that the consumer from feel alone would be able to differentiate the Applicants bottle from different bottles in the market. The arguments are strange considering they are explaining tactile/sensory feel to a 3D image.
Issues
Whether the Applicant’s proposed trademark had the essential elements for registration as provided under Section 12 (a,b,c and d) of the Trade Marks Act (No 51 of 1965)?
Rule
Section 12(1) of the Trade Marks Act stipulates as follows:
“In order for a trade mark (other than a certification trade mark) to be registrable
in Part A of the register, it must contain or consist of at least one of the following
essential particulars—
(a) the name of a company, individual or firm, represented in a special or particular
manner;
(b) the signature of the Applicant for registration or some predecessor in his business;
(c) an invented word or invented words;
(d) a word or words having no direct reference to the character or quality of the
goods, and not being according to its ordinary signification a geographical name or a
surname;
(e) any other distinctive mark, but a name, signature or word or words, other than
such as fall within the descriptions in paragraphs (a), (b), (c), and (d), shall not be
registrable under this paragraph except upon evidence of its distinctiveness.”
Analysis
The Applicants mark was a 3D image of a beer bottle, to be registered in class 32 (beer; porter; ale; stout; non alcoholic verages. However an image of a beer bottle to be used as a trademark in that certain class goods must differ sufficietntly from the norm; if it does not then the 3D mark will be seen by consumers of the goods in question as the product itself and not the indication of origin.
The Assistant registrar essentially did not believe that having a 3D mark of a beer bottle could inherently function as a source identifier. The ruling applies the principle that to valid for registration, a three dimensional mark must depart significantly from the norms or customs of the industry as laid out in Lindt (Case c-98/11 P) and Mag Instrument Inc v OGIM [2004].
The Applicant’s arguments relied soley on inherent distinctiveness and not acquired distinctiveness through use. However the average consumer is not generally accustomed to identifying product origin based on shape alone, especially in the abscence of other identifiers like words or graphics. The burden therefore, is higher for 3D marks.
While the Applicant highlighted that the same mark was valid for EUIPO registration and was in their perspevcytive persuasive evidence; The Assistant Registrar correctly noted that foreign registration does not override the criteria under Kenyan law. The mark was utlimately found to be ‘devoid of any distinctive character for the purposes of Section 12 and does not serve the trade mark function. The Applicant’s mark does not depart significantly from the norm or customs of the industry.
Conclusion
The Applicant’s mark T.M.A 111293 lacks the essential elements for registartion under Section 12 of the Trade Marks Act. is not distinctive. The Trade Mark Examiner’s refusal notice dated 28th May 2020 is hereby upheld. The application shall not be allowed to proceed to publication in the Industiral Property Journal.
Ruling available here.