Trade mark decision

BL Number

O/186/98

Decision date

21 September 1998

Hearing officer

Mr A James

Mark

FORM ONLY (TOASTER)

Classes

11

Applicant

Dualit Limited

Opponent

Rowlett Catering Appliances Ltd

Opposition

Sections 1(1), 3(1)(b), 3(2)(a), 3(2)(c) & 41(2)

Result

Section 3(1)(a): - Opposition successful.

Section 3(1)(b): - Opposition successful.

Section 3(2)(a): - Opposition failed.

Section 3(2)(c): - Opposition successful.

Section 41(2): - Opposition successful.

Points Of Interest

• 1. This decision was reported in [1999] RPC 549.

Summary

The applicants applied to register a series of two marks which consisted of the shape of a toaster. The applicants filed evidence of use in support of the application and claimed to have traded in toasters in the shape applied for from 1948 onwards with turnover in the ten years from 1984 to 1994 of some £27m. The toasters had initially only been supplied to catering establishments because of their output capacity and cost but they were now sold also to the general public. They were considerably more expensive than ordinary toasters.

In further evidence filed in the proceedings, the applicants indicated that there had been a number of design changes since the original model was produced in 1948. The shapes of the current models as applied for had been in use from 1986 and December 1994 respectively. The mark in suit was applied for on 14 June 1995. The applicants also filed survey evidence which they claimed showed that a high percentage of the public recognised their DUALIT toasters.

The Hearing Officer first of all considered the ground of opposition under Section 3(2)(a). This section reads:

"A sign shall not be registered as a trade mark if it consists exclusively of the shape which results from the nature of the goods themselves."

As toasters can come in many shapes and sizes the Hearing Officer decided in this case that the toasters had certain styling features which prevent the shapes from being defined as exclusively of the shape which results from the nature of toasters. Opposition failed on this ground.

Under Section 3(1)(b) and (c) the Hearing Officer considered whether the mark was devoid of distinctive character or consisted of a sign which may serve in trade to designate kind, quality, quantity, intended purpose etc. As the mark at issue is a “shape” mark the Hearing Officer did not believe that it would be recognised immediately as an indication of origin and that, prima facie, the shapes were excluded from registration by Sections 3(1)(b) & (c) of the Act.

The applicants had of course filed evidence in support of the application. The Hearing Officer noted that the current shapes had been in use from 1986 and 1994 but in all cases of use the toaster prominently bears the DUALIT trade mark. Evidence from trade sources was not conclusive as to how the general public would view the mark and the public survey evidence was flawed. Recognition of a toaster shape is not the same as recognition of that shape as a mark if there are no similar toasters on the market at the relevant date. The opponents thus succeeded on this ground of their opposition.

The Hearing Officer next considered Section 3(2)(c) which states that a sign shall not be registered if it consists exclusively of “the shape which gives substantial value to the goods”.

The evidence indicated that as toasters are one of the kitchen appliances which are always on display, looks are very important. In this case the applicants toasters are described as of “classic design” and other evidence refers to aesthetic appeal. With some hesitation the Hearing Officer concluded that in this case the shapes applied for gives substantial value to the goods. Opposition succeeded on this ground.

Under Section 3(1)(a) the Hearing Officer considered whether the shapes applied for were capable of distinguishing the goods of one undertaking from those of others. In this case the Hearing Officer considered that the shapes applied for readily characterise a particular style of toaster and he therefore doubted that they were capable of acquiring a trade mark character with more use. Opposition succeeded on this ground.

The mark applied for was a series of two shapes (one described as an angle ended toaster (AER) and the other as a rounded ended toaster (RET). It had been disputed by the applicants that the question as to whether the mark constituted a series was open to opposition. The Hearing Officer held that it was.

Where the shape of the goods really is a mark then the Hearing Officer decided in this case that there were material differences between the AER and RET toasters and thus they did not constitute an acceptable series.

The Hearing Officer observed that if his decision was found to be wrong and the mark was allowed to proceed then the provisions of Rule 21(3) of the Trade Mark Rules 1994 should apply and one of the two shapes must be deleted. It was not open to the applicants to proceed for two separate applications.