29 August 2016

SHOULD’VE been accepted(?)

Specsavers has recently caused a media stir by having its UK trade mark application for SHOULD’VE accepted on examination by the IPO (Intellectual Property Office). If registered, Specsavers will enjoy the usual benefit of registration, namely a monopoly in the trade mark in relation to the registered goods and services.

The application is actually for a series of two marks, being SHOULD’VE, and to the anguish of English grammar lovers everywhere, SHOULDVE.  A UK series application is a good cost saving trick where two or more marks differ only marginally, because just one application can cover several marks. 

Specsavers seeks registered protection for a wide variety of goods and services, and eyebrows have been raised because the IPO has accepted that SHOULD’VE and SHOULDVE are inherently distinctive trade marks.  This means they are inherently capable of functioning on their own as indicators of trade origin.    When applications are filed to register common English words, the IPO can often raise an objection that the average consumer will not perceive them as indicators of trade origin because they lack distinctive character.  That said, it is possible for common words, numbers or even single letters to achieve registration in certain circumstances and this type of acceptance is not without precedent.  For example, the trade mark MAY was recently registered in the UK for, among others, advertising and business management services, and Carlsberg has registered PROBABLY for lager and beer.  

It is also worth remembering that if the IPO does raise an objection on the ground of non-distinctiveness, this may be overcome if the applicant can show that the mark has “acquired” distinctiveness through evidence of use which demonstrates that the consumer already associates it with the applicant’s good or services.  Alternatively, if the mark has not yet been put into use, the applicant may reapply for it accompanied by distinctive matter such as a house name or a logo in order to get the combined elements onto the register. 

Despite the initial easy ride given to SHOULD’VE and SHOULDVE by the IPO, it may well be that the journey onward to registration is somewhat rockier.  Having now been published for opposition purposes, the application has attracted six notices of threatened opposition filed by third parties, so its future is uncertain.  

If you would like advice on series applications in the UK, the distinctiveness or otherwise of your trade mark and possible ways to achieve registration for it, please contact Camilla Sexton or any member of our Trade Mark team