A Not-So British Lidl

Lidl’s attempts to register 3 three trade marks have been refused in O/273/15, O/274/15, O/275/15 . The Examiner raised a section 3(1)(b) objection (non-distinctiveness) against all three marks on the basis that the marks would be seen as promotional statements, namely that the Applicant is a British company. The objection was maintained at a Hearing, with the Applicant also choosing not to provide further evidence. As such, the marks were all refused and Lidl has filed a request for a full statement of reasons – generally a precursor to an appeal. Interestingly, only section 3(1)(b) objections were raised for these three marks, although the marks were clearly different from each other. In addition, in refusing the marks, the Hearing Officer stated that when the same ground for refusal is given for a group of goods and services, case law has suggested that a competent authority may use only general reasoning for all the goods and services concerned. Nonetheless, this practice seems to be debated still and we are interested to see what will happen in the future. Finally, despite the IPO having a practice that a stylised representation of the UK National Flag would be considered acceptable prime facia, it was not applied in this case because the Hearing Officer stated that the stylised representation itself must form a part of an overall distinctive mark. Interestingly, this suggests that had the Applicant attempted to register just the Union Jack within a heart, they may have had a higher chance of proceeding with a Registry objection. These three cases are not ground-breaking, but they do serve to remind us of some fundamental principles about a mark’s distinctive character - a concept that often comes up in trade mark discussions, but is still murky sometimes nonetheless.

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