Trade Mark Registration, Absolute Grounds for Refusal - Re STITCH, Stitch v TikTok
This was an appeal against the decision of Ms June Ralph in which she upheld an opposition by Tik Tok Information Technologies UK Ltd. ("TikTok") to an application by Stitch Editing Ltd. ("Stitch") to register STITCH as a trade mark for various services in class 41 (see Re STITCH, Tik Tok Information Technologies UK Ltd. v Stitch Editing Ltd. BL O/716/22 24 Aug 2022). The appeal came on before Sir Anthony Mann on 29 March 2023 who handed down judgment on 17 May 2023. By para [47] of his judgment, Sir Anthony allowed the appeal. He remitted the case to Ms Ralph for a fresh decision in the light of his findings (see Stitch Editing Ltd v TikTok Information Technologies UK Ltd [2023] EWHC 1167 (Ch) (17 May 2023)).
The Application
Stitch applied to register STITCH as a trade mark for the following services in class 41:
"Editing of music, television programs, films, commercials, internet videos, and video programs; music, film and video production; providing advice and information for music, video and film concept and script development; multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; post-production editing services in the field of music, videos and film; production of visual effects for videos, commercials, DVDs, pre-recorded optical discs featuring music, television programs, films, commercials, internet videos, and video programs; television production for internet web sites; video editing; videography services."
"Editing of music, television programs, films, commercials, internet videos, and video programs; music, film and video production; providing advice and information for music, video and film concept and script development; multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; post-production editing services in the field of music, videos and film; production of visual effects for videos, commercials, DVDs, pre-recorded optical discs featuring music, television programs, films, commercials, internet videos, and video programs; television production for internet web sites; video editing; videography services."
Particulars of the application can be found here.
The Opposition
TikTok opposed the application under s.3 (1) (b), (c) and (d) of the Trade Marks Act 1994:
"3.— Absolute grounds for refusal of registration
(1) The following shall not be registered—
…
(b) trade marks which are devoid of any distinctive character.
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade"
In reply, Stitch relied on the proviso in s.3 (1):
"Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
Hearing Officer's Decision
The hearing officer found against Stitch on all grounds.
"In fact, to assess whether a national trade mark is devoid of distinctive character or is descriptive of the goods or services in respect of which its registration is sought, it is necessary to take into account the perception of the relevant parties, that is to say in trade and or amongst average consumers of the said goods or services, reasonably well-informed and reasonably observant and circumspect, in the territory in respect of which registration is applied for (see Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 29; Case C-363/99 Koninklijke KPNNederland [2004] ECR I-1619, paragraph 77; and Case C-218/01 Henkel [2004] ECR I-1725, paragraph 50)."
After considering the evidence she found that "stitch" was a way of joining things together, that it had an extended meaning in the creative industries and concluded that the word was descriptive for the purposes of s.3 (1) (2) (c) of the Act.
In respect of s.3 (1) (b) the hearing officer referred to Case C-265/09, OHIM v BORCO-Marken-Import Matthieson GmbH & Co KG and held at para [36] of her decision:
"Trade marks which are excluded from registration because they describe a particular characteristic of the services also lack the distinctive character required to avoid objection under section 3(1)(b) as they do not serve to identify the services applied for as originating from a particular undertaking, and cannot distinguish that product from those of other undertakings. Therefore I find that [the] applied for mark is also objectionable under section 3 (1) (b)."
"Trade marks which are excluded from registration because they describe a particular characteristic of the services also lack the distinctive character required to avoid objection under section 3(1)(b) as they do not serve to identify the services applied for as originating from a particular undertaking, and cannot distinguish that product from those of other undertakings. Therefore I find that [the] applied for mark is also objectionable under section 3 (1) (b)."
Turning to s.3 (1) (d) the hearing officer referred to Case T-322/03 Telefon & Buch Verlagsgesellschaft GmbH v OHIM and found at para [38]:
As to the proviso, Ms Ralph said:
"[55] In my consideration of the applicant's evidence, I return to the criteria set out in Windsurfing. Firstly I note that the applicant has used the mark since 2010 which favours the applicant in terms of long standing use. However it has not produced any turnover figures or any figures for advertising expenditure. The applicant states it has a website and social media accounts but does not present any figures around web traffic or numbers of users/followers of its accounts. At the hearing the applicant pointed to the list of awards it had won for its work as evidence of its market share. Whilst I do not doubt the credibility of the award bodies nor deny that industry awards are given for excellence in the particular endeavour, it is not apparent to me from the evidence how widespread the nominee field is, or what the criteria is for nominees so I cannot judge this activity as being indicative of a market share.
[56] In terms of geographical spread, mentioned as one of the Windsurfing factors, the applicant states its base is in London and it has some business interests in California, USA. It has not stated where its clients, i.e. the commissioning companies, are based. At the hearing the applicant pointed to the number of times, 416 million, just one of the YouTube videos had been viewed. I accept that this number of views is extremely high but believe it is a very tenuous link to suggest that these views equate to a geographically widespread use of the contested mark or even indicative of the number of viewers actually exposed to the mark, for example if they did not read the credits.
[57]. I note the applicant's jobs list at exhibit LZK11 and that in its witness statement it claims that the brand owners were its clients. At the hearing the opponent rebuffed this claim, saying that the applicant's clients were not the brand owners themselves but were in fact the production companies commissioning the work. I do not find anything turns on this particular issue. Customers for the kind of specialist services provided by the applicant are likely to come from the creative industry rather than brand owners themselves. I note that many of the commissioning companies are repeat customers which goes some way to establishing that a proportion of the relevant class of persons who, because of the mark, identify the services as originating from a particular undertaking. However this appears to be the high point of the applicant's evidence.
[58] Taking all these factors into account and regarding the evidence as a whole, I find it is insufficiently solid, according to the Windsurfing criteria. Therefore I find that the applicant has not sufficiently demonstrated that the mark STITCH has acquired distinctive character."
"[55] In my consideration of the applicant's evidence, I return to the criteria set out in Windsurfing. Firstly I note that the applicant has used the mark since 2010 which favours the applicant in terms of long standing use. However it has not produced any turnover figures or any figures for advertising expenditure. The applicant states it has a website and social media accounts but does not present any figures around web traffic or numbers of users/followers of its accounts. At the hearing the applicant pointed to the list of awards it had won for its work as evidence of its market share. Whilst I do not doubt the credibility of the award bodies nor deny that industry awards are given for excellence in the particular endeavour, it is not apparent to me from the evidence how widespread the nominee field is, or what the criteria is for nominees so I cannot judge this activity as being indicative of a market share.
[56] In terms of geographical spread, mentioned as one of the Windsurfing factors, the applicant states its base is in London and it has some business interests in California, USA. It has not stated where its clients, i.e. the commissioning companies, are based. At the hearing the applicant pointed to the number of times, 416 million, just one of the YouTube videos had been viewed. I accept that this number of views is extremely high but believe it is a very tenuous link to suggest that these views equate to a geographically widespread use of the contested mark or even indicative of the number of viewers actually exposed to the mark, for example if they did not read the credits.
[57]. I note the applicant's jobs list at exhibit LZK11 and that in its witness statement it claims that the brand owners were its clients. At the hearing the opponent rebuffed this claim, saying that the applicant's clients were not the brand owners themselves but were in fact the production companies commissioning the work. I do not find anything turns on this particular issue. Customers for the kind of specialist services provided by the applicant are likely to come from the creative industry rather than brand owners themselves. I note that many of the commissioning companies are repeat customers which goes some way to establishing that a proportion of the relevant class of persons who, because of the mark, identify the services as originating from a particular undertaking. However this appears to be the high point of the applicant's evidence.
[58] Taking all these factors into account and regarding the evidence as a whole, I find it is insufficiently solid, according to the Windsurfing criteria. Therefore I find that the applicant has not sufficiently demonstrated that the mark STITCH has acquired distinctive character."
Appellate Courts' Approach to Appeals
Before considering the appeal, Sir Anthony referred to para [23] of Mr Justice Richards's judgment in Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch) (3 March 2023) which I discussed in Trade Marks - Instagram LLC v Meta 404 Ltd on 13 March 2023:
"i) An appeal court should not interfere with the trial judge's conclusions on primary facts unless it is satisfied that he was plainly wrong.
ii) The adverb "plainly" does not refer to the degree of confidence felt by the appeal court that it would not have reached the same conclusion as the trial judge. It does not matter, with whatever degree of certainty, that the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one that no reasonable judge could have reached.
iii) An appeal court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration. The mere fact that a judge does not mention a specific piece of evidence does not mean that he overlooked it.
iv) The validity of the findings of fact made by a trial judge is not aptly tested by considering whether the judgment presents a balanced account of the evidence. The trial judge must of course consider all the material evidence (although it need not all be discussed in his judgment). The weight which he gives to it is however pre-eminently a matter for him.
v) An appeal court can therefore set aside a judgment on the basis that the judge failed to give the evidence a balanced consideration only if the judge's conclusion was rationally insupportable.
vi) Reasons for judgment will always be capable of having been better expressed. An appeal court should not subject a judgment to narrow textual analysis. Nor should it be picked over or construed as though it was a piece of legislation or a contract."
"i) An appeal court should not interfere with the trial judge's conclusions on primary facts unless it is satisfied that he was plainly wrong.
ii) The adverb "plainly" does not refer to the degree of confidence felt by the appeal court that it would not have reached the same conclusion as the trial judge. It does not matter, with whatever degree of certainty, that the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one that no reasonable judge could have reached.
iii) An appeal court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration. The mere fact that a judge does not mention a specific piece of evidence does not mean that he overlooked it.
iv) The validity of the findings of fact made by a trial judge is not aptly tested by considering whether the judgment presents a balanced account of the evidence. The trial judge must of course consider all the material evidence (although it need not all be discussed in his judgment). The weight which he gives to it is however pre-eminently a matter for him.
v) An appeal court can therefore set aside a judgment on the basis that the judge failed to give the evidence a balanced consideration only if the judge's conclusion was rationally insupportable.
vi) Reasons for judgment will always be capable of having been better expressed. An appeal court should not subject a judgment to narrow textual analysis. Nor should it be picked over or construed as though it was a piece of legislation or a contract."
He also referred to para [76] of the Court of Appeal's judgment in Re Sprintroom Ltd, Prescott v Potamianos and another [2019] 2 BCLC 617, [2019] BCC 1031, [2019] EWCA Civ 932:
"So, on a challenge to an evaluative decision of a first instance judge, the appeal court does not carry out a balancing task afresh but must ask whether the decision of the judge was wrong by reason of some identifiable flaw in the judge's treatment of the question to be decided, "such as a gap in logic, a lack of consistency, or a failure to take account of some material factor, which undermines the cogency of the conclusion".
"So, on a challenge to an evaluative decision of a first instance judge, the appeal court does not carry out a balancing task afresh but must ask whether the decision of the judge was wrong by reason of some identifiable flaw in the judge's treatment of the question to be decided, "such as a gap in logic, a lack of consistency, or a failure to take account of some material factor, which undermines the cogency of the conclusion".
Lastly, he reminded himself of para [26] of Mr Justice Richards's judgment on the decisions of specialist tribunals:
"Finally, it is relevant to observe that this is an appeal from a tribunal with particular expertise. As Lady Hale observed in AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49 at paragraph 30, the court should approach the appeal on the basis that it is probable that an expert tribunal, charged with applying the law in their specialist field, has probably got it right."
"Finally, it is relevant to observe that this is an appeal from a tribunal with particular expertise. As Lady Hale observed in AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49 at paragraph 30, the court should approach the appeal on the basis that it is probable that an expert tribunal, charged with applying the law in their specialist field, has probably got it right."
The Appeal
Sir Anthony summarized Stitch's criticism of Ms Ralph's decision at para [13] of his judgment:
"First, she treated all the services within the specification in the same way and made no attempt to consider each separately, as she was obliged to do. Second, she failed to consider in any detail the question of whether the word used, even in its apt sense, was actually descriptive of the intended purpose of the applied for services. Thus, for example, "Stitch" was said not to describe any particular kind of "film and video production service", as opposed to describing a potential technique which might be used at some stage in the course of providing that service (if editing was involved). This point was said to apply to all the services described in the specification. Since she made no finding as to what each of the services actually involved (and none of them seem to describe a purely image/video/music stitching service) she did not address the question of how the word was descriptive of the services or part of them. Third, there was a real and unaddressed question of whether a word which was descriptive of a technique within a service could be described as being a service or descriptive of the service or whether a word which was associated with a service could go further and be descriptive of it."
"First, she treated all the services within the specification in the same way and made no attempt to consider each separately, as she was obliged to do. Second, she failed to consider in any detail the question of whether the word used, even in its apt sense, was actually descriptive of the intended purpose of the applied for services. Thus, for example, "Stitch" was said not to describe any particular kind of "film and video production service", as opposed to describing a potential technique which might be used at some stage in the course of providing that service (if editing was involved). This point was said to apply to all the services described in the specification. Since she made no finding as to what each of the services actually involved (and none of them seem to describe a purely image/video/music stitching service) she did not address the question of how the word was descriptive of the services or part of them. Third, there was a real and unaddressed question of whether a word which was descriptive of a technique within a service could be described as being a service or descriptive of the service or whether a word which was associated with a service could go further and be descriptive of it."
Sir Anthony accepted those criticisms. He continued in the same paragraph:
"The Hearing Officer's key paragraph 34 jumped from considering that the word 'Stitch' could be used to describe a process within a service.......................... to a conclusion that it was descriptive of the service itself in the mind of the average consumer. That was an unjustifiable jump, at least in the absence of some intervening reasoning, which was absent."
Because the hearing officer did not explain her reasoning, he considered her decision to be flawed. He added that her conclusions in respect of s.3 (1) (b) and s.3 (1) (d) suffered from the same flaw as in s,3 (1) (c).
Turning to the evidence of acquired distinctiveness as required by the provis0, Sir Anthony came to the conclusion that Ms Ralph's decision on that issue was also flawed because she did not consider all the evidence in the correct manner. In paragraphs [41] to [53] of her decision she listed the nature of the evidence relied on but did not say much about its relevance or significance. In particular, she did not refer to its purpose or context. When she turned to the impact of the evidence in paras [55] to [58] she did not deal with all of the issues. She dealt only with some such as geographical spread which was not relevant to the case.
As the hearing officer's findings on s.3 (1) and acquired distinctiveness had been unsatisfactory those issues had to be considered further. Sir Anthony declined Stitch's invitation to substitute his own decision for the hearing officer's because the issues arising under s.3 (1) (b), (c) and (d) required consideration on a service-by-service basis and the right way to approach the acquired distinctiveness point was by way of a further hearing,
Comment
Oppositions to the registration of trade marks that consist entirely of objections under the absolute grounds of refusal are relatively rare. Apparently unregistrable marks are usually identified by examiners before publication. The main takeaways from this case are the need for examiners to consider descriptiveness in relation to all goods and services in a specification and not just one of them and also to consider properly evidence of acquired distinctiveness.
Anyone wishing to discuss this case note may call me on +44 (0020 7404 5252 during office hours or send me a message through my contact form.
Anyone wishing to discuss this case note may call me on +44 (0020 7404 5252 during office hours or send me a message through my contact form.
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