March 10, 2021
Leading cookware brand Tefal have been refused trade mark registration of their “Famous Red Spot” in the United Kingdom. The mark consisted of “a plain red dot affixed centrally to the bottom of a cooking receptacle (such as a pan, saucepan)”, as shown below.
The Examiner, Mr Jefferiss, had refused the mark and then retired. A second hearing officer, Mr Smith, therefore provided the requested full statement of reasons for the decision. That statement includes the appellant’s submissions at length.
Mr Smith noted his grave concern that the “Famous Red Spot” had always been an indicator of heat, and was neither an arbitrary or random red spot. In his view it was hard to avoid the conclusion that the evidence had been carefully curated to draw attention away from the technical function of the red spot but he did not pursue the point as the application would be refused on other grounds.
The mark was refused for lacking both inherent and acquired distinctiveness.
On inherent distinctives, Mr Smith noted that it is an essential function of a trade mark that it guarantees the trade origin of the goods offered under the mark to the consumer.
Mr Smith said that whilst he might not have used Mr Jefferiss’ term “banal” to describe the mark, he agreed that the mark was devoid of any inherent distinctive character. It was an undeniable feature of the appearance of an everyday product. Tefal’s red spot did not have inherent distinctive character and consumers would not recognise it as a trade mark.
Tefal could have overcome this objection by demonstrating that the red spot had acquired distinctiveness through the use that has been made of it. This must be use as a trade mark, to educate the public that it guarantees the origin of the product, and is not just as a decorative and/or technical feature of the product, i.e. that consumers do in fact recognise it as a trade mark. Tefal’s evidence failed to prove this.
Responses to Tefal’s consumer survey showed mere association of the mark with Tefal, and recognition of the red spot as a technical feature, rather than a trade mark.
This ultimately undermined Tefal’s case, and led to the conclusion that the red spot could not be considered to fulfil the essential function of a trade mark.
Despite recognition of Tefal as a leading cookware brand with significant exposure (including exposure of the red spot), mere exposure, no matter how substantial, does not prove use as a trade mark.
In order to prevent the granting of “undue monopolies”, demonstrable use of the sign as a trade mark is essential for brand owners seeking to register or rely on sub-brands as guarantees of origin to consumers.
Tefal sought to prove that the red spot had acquired distinctiveness by conducting a consumer survey. Survey evidence can be a useful tool, but is notoriously difficult to get right and was ultimately Tefal’s downfall in this decision.
The results of Tefal’s survey showed that a significant proportion (32.5%) of consumers initially associated the red spot with Tefal. But mere association is not enough to gain trade mark registration.
Furthermore, Tefal omitted to mention in their witness statements that 58% of responders had answered “No” (or had no answer recorded) to the survey question: “In your opinion, would a product showing this [red spot] come from any particular company?”.
The issues raised by Tefal’s survey evidence didn’t stop there.
Tefal’s claim for use of the red spot as a trade mark was further undermined by the fact that the sign could not be divorced from its technical function in the eyes of consumers. 65 out of 400 survey responders considered the mark to be a ‘heat spot’, and Tefal itself referred to the ‘heat spot’ in their own website and advertising.
It was suggested that Tefal could have separated the mark from its technical function and relied on it as a brand identifier (e.g. ‘the pan with the red spot’). Doing so could have educated consumers to see the red spot as a Tefal trade mark, not just a technical feature of the product.
Three notes of caution should be taken from Tefal’s use of survey evidence here:
- It is up to the applicant to decide what evidence to submit, and it is the responsibility of their legal advisor to guide as to what evidence best supports their case. In this instance, the Examiner declined to comment on Tefal’s proposed survey questions. However, it is generally good practice to have a discussion with the Examiner if you intend to rely on a survey, due to the time and cost implications.
- If exhibiting full survey results, expect the Examiner to review these. Tefal omitted to mention survey responses which did not help their case in their witness statements. This omission was noticed by the Examiner, who reviewed the exhibited survey results for the answer which Tefal had sought to detract attention from.
- Leading or speculative questions will be considered weak evidence, so should be avoided. Tefal’s survey questions were criticised as leading and inviting the respondents to speculate as to the brand associated with the red spot sign.
This decision confirmed that sub-brands can function as trade marks, but emphasised that a successful application will depend upon the use that has been made of the sub-brand/mark. The proprietor must show that they ‘trust’ the sub-brand to convey its origin message, and this should be apparent in their marketing.
The sub-brand must be used as a trade mark, more than a mere feature of the product itself. This does not necessarily require the sub-brand to be used independently of the main brand, but evidence of consumer ability to rely on the sub-brand alone as an indicator of trade origin would certainly be persuasive evidence for the purposes of trade mark registration. Use of the mark with minor variations can also be taken into account.
Tefal’s advertising did not show any such use of the red spot as a trade mark. On the contrary, the red spot was referred to in advertising as a ‘heat spot’. It therefore could not have acquired distinctiveness to consumers as a trade mark due to the overriding significance of its technical function.
The Tefal red spot is, to many, associated with the Tefal brand. Yet the conclusion from Tefal’s evidence was that consumers merely associated the red spot with the brand, and were not able to divorce the mark from its technical function to see it as a trade mark.
The balance at play here is between enabling businesses to protect marks which operate to identify their products, against granting “undue monopolies” in a mark which restricts competitors’ ability to use functional features of a product.
Brand owners who intend to rely on sub-brands as trade marks should make this apparent in their marketing. Steps should be taken to distance marks from any technical function which could detract from their trade mark significance in the eyes of consumers.
This case highlights the importance of considering product marketing alongside IP strategy, to ensure that all marks which are intended to be used as brand indicators are deployed effectively. Such signs must be used as trade marks in order to educate consumers that the sign is a trade mark of the brand, and not just a technical or decorative feature.
Finally, the Tefal decision shows that survey evidence continues to present pitfalls and provides further examples of what (not) to do. A decision to rely on survey evidence should be taken under the guidance of legal advisors, in order to guard against the possibility of the applicant’s own evidence undermining their claim.