Word Mark Used As Logo
Derails Orient Express

It is widely accepted that a registration for a word mark protects use in all visual forms. The outcome of a recent UK-IPO appeal, however, is a salient reminder that the position may not be so simple (GW Padley Vegetables Ltd. v Societe Nationale des Chemins de Fer Francais SNCF, ORIENT EXPRESS, O-299-08). The Appointed Person’s reasoning shows the importance of assessing the most important form of protection based on the actual manner of use. 

All Aboard

The words ORIENT EXPRESS evoke an aura of opulence and mystery; more prosaically, they represent the subject matter of SNCF’s UK trade mark registration 1193215, secured to protect the name of the French company’s luxury train travel service in respect of a wide range of food and drink.

Oriental Express Frozen Foods Ltd. (which later changed its name to GW Padley Vegetables Ltd.) applied to revoke the word mark registration on the ground of 5 years’ non-use in the UK.

SNCF filed evidence of use, but the IPO held that it did not extend to certain goods, including edible oils and whisky. It declared the registration partially revoked.

On appeal before the Appointed Person, SNCF contested the revocation in respect of edible oils and whisky. 

First Stop, Paris

On appeal, SNCF argued inter alia that the hearing officer had wrongly found that use of “Orient Express Gift Boutique” was not trade mark use, and that in any event the use of ORIENT EXPRESS within a logo featuring other words and a design should have been regarded as use of the pure word mark sufficient to sustain the registration.

This last argument had two prongs: first, that the logo only differed in aspects not altering the distinctive character of the registered word mark, and should therefore be regarded as the same mark for the purposes of the proceedings; and second, that use of the word mark within a logo containing other word and visual elements should in any event be regarded as use of the word mark, since it contained it.

On the first point, the Appointed Person noted that although SNCF claimed to have used ORIENT EXPRESS in respect of olive oil and whisky sold on the ORIENT EXPRESS trains, it did not file any evidence that the goods were branded or otherwise sold by reference to the word mark, ORIENT EXPRESS.

A witness statement by SNCF’s retail manager stated that the goods were sold on-board in “Orient Express gift boutiques” and through “a mobile boutique in the form of a trolley.” There was, however, no evidence as to whether the boutiques included signage branding them “Orient Express Gift Boutique,” or whether this was simply how they were referred to internally by the company. A photograph of customers at a boutique showed no such signage, and in the absence of evidence the Appointed Person thought it likely that the “mobile boutique” in the form of a trolley did not carry signage, either, since it would be obvious what it was.

An image of a bottle of olive oil filed in evidence showed an illegible label, and elsewhere in evidence was described as “Tenuta Pianelli Olive Oil.”

Given the inherent ambiguity of SNCF’s reference to “Orient Express gift boutiques” and the absence of any evidence resolving it in SNFC’s favour, the Appointed Person found no proof that the word mark had been put to genuine use in respect of the goods.

Next Stop, Venice

In respect of whisky, however, there was evidence that the ORIENT EXPRESS logo had appeared on the cases. Whether this use could sustain a registration for the pure word mark gave the Appointed Person greater pause.

In the Appointed Person’s view, the hearing officer had correctly approached the test for whether the mark in use differed in elements not altering the distinctive character of the registered mark, such that it could sustain the registration under S. 46 (2) TMA 1994. He considered that the words “Venice Simplon” in the logo did alter the distinctiveness of the pure word mark ORIENT EXPRESS because, given their topmost position in the roundel, they would be seen or enunciated first. Despite the fact that “Venice Simplon” appeared in slightly smaller type, the Appointed Person agreed. 

The Appointed Person noted that the stylised words ORIENT-EXPRESS (including a hyphen) appeared in the centre of the roundel, with the smaller words VENICE SIMPLON above, and with stylised elements appearing at the top and bottom of the roundel. Although the stylised words ORIENT-EXPRESS appeared at the centre and were the most prominent element, nonetheless the smaller words “Venice Simplon” above were clearly intended to qualify ORIENT-EXPRESS and would be read with them.

Although Venice would be readily recognised as a place name, there was no evidence that Simplon, the lesser-known name of a Swiss mountain pass and region, would be perceived as such by the average UK consumer. Consequently, the words “Venice Simplon” were sufficient to alter the distinctiveness of the pure word mark ORIENT EXPRESS on its own. 

On whether the mark in use was essentially use of the pure word mark despite the surrounding matter, SNCF argued that the ECJ’s reasoning in Societe des Produits Nestle SA v Mars UK Ltd. (C-353/03) was relevant. In particular, SNCF asserted that if an inherently non-distinctive trade mark could acquire distinctiveness through use as part of another mark, then it also made sense for use of a registered mark as part of another mark to be permitted to sustain the registration.

The Appointed Person saw the logic of this submission and noted that if HAVE A BREAK…HAVE A KIT KAT could be shown on evidence to establish recognition of HAVE A BREAK on its own as a trade mark, then it should at least in theory be possible for the words ORIENT EXPRESS to be perceived as being used independently within the VENICE SIMPLON ORIENT-EXPRESS Logo.

This was, however, a “difficult area,” and SNCF had filed no evidence suggesting that the words ORIENT-EXPRESS were perceived this way. In the absence of any such evidence, the Appointed Person held that the hearing officer had made no error.

Comment

This decision highlights the critical importance of protecting marks in the form in which they are used, or in a form differing only slightly from it.

It is clear from the outcome of this appeal that a figurative version of a pure word mark will not necessarily be regarded as the same mark. Consequently, where a mark is used only in a heavily stylised or figurative form, careful consideration should be given to whether the other elements in the mark are enough to cause the average consumer to perceive the logo differently from the words on their own. If that is the case, and the mark is never used as a pure word mark on its own, registration in the figurative form may be best. 

Where a logo mark includes an important word element, however, it is rare for that word never to appear as a pure word mark in advertising or promotional matter. Word mark protection confers the broadest rights against third parties, and consequently has long been preferred to figurative mark protection where costs are an issue and a choice has to be made. Where the pure word mark is also used on its own, this approach remains sensible. Where the pure word is not used on its own, however, it can create risk.

The decision in ORIENT EXPRESS also stresses the importance of evidence when running an argument based on consumer perception. In this case, SNCF were asking the tribunal to accept that clearly legible and relatively prominent verbal matter within its logo mark would effectively be disregarded by the public, to the extent that the mark in question would be seen only as ORIENT EXPRESS. It filed no evidence in support of this, though, and neither the hearing officer nor the Appointed Person was prepared to infer an outcome that, on its face, appeared improbable.

This lesson will be valuable to those who find themselves defending a word mark registration based purely on use of the mark in a figurative form. The situation arises more often than one might think, since trade mark registration is too often regarded as a one-off requirement despite the fact that brands constantly evolve. The importance of reviewing brand protection to ensure that it matches current business use and needs cannot be overstated.

Getting the right protection, on time, and changing where needed, remains the best route to cost-effective brand protection.