O2 pushes the envelope

The IPKat has learnt of an intriguing decision from Professor Ruth Annand, sitting as the Lord Chancellor’s Appointed Person. O2 applied to register a range of mobile phone icons, such as a picture of an envelope, a football and a phone with an arrow pointing at it (used, it seems, to denote downloads) for a variety of goods and services, including telecommunication apparatus and services.

The Hearing Officer refused the applications as being descriptive under s.3(1)(c). In a nutshell, Professor Annand said that this was the wrong approach. Instead of looking at whether the mark in question consisted exclusively of signs or indications that designated the characteristics of the goods or services, or if instead they contained other elements which would have rendered them not wholly descriptive, the Hearing Officer looked at the icons to see whether they had any additional elements (such as colour) which would confer distinctive character upon them.

However, Professor Annand held that the Hearing Officer was correct for most of the icons in terms of result. The marks were barred from registration – but under s.3(1)(b) NOT s.3(1)(c) since consumers would not seen them as distinguishing origin.

This type of case makes the IPKat rather uncomfortable. There clearly is a public interest in keeping signs which are sort of allusive to one of the functions of the goods or services free, but is not directly descriptive of those goods or services free, but the system isn’t quite equipped for tackling these kinds of concerns. It seems risky to leave the availability of such signs to other traders to consumer perception, but this is exactly what shifting the issue to s.3(1)(c) does.