Securing trade mark registration for a brand name can be a complex process, especially when the mark in question may be considered by the Intellectual Property Office (IPO) to be too generic to register. This article explains how WBW Solicitors addressed these challenges to secure the registration of the trade mark “Devon Blue” for Ticklemore Cheese Limited.
The Challenge: Overcoming Refusal
Our client Ticklemore Cheese was established in the 1970s by Robin Congdon, the pioneer of British cheese. WBW Solicitors has a long-established reputation in acting for food and drink businesses and the firm was pleased to represent Ben and Laura Harris when they took over Ticklemore Cheese in 2023. The business later approached us with the desire to trade mark the name Devon Blue, which it had been using as a brand name for its unique blue cheese since 1988.
The IPO initially rejected the application on the grounds that “Devon Blue” was too generic, suggesting it merely described a characteristic of the goods, rather than serving as a distinctive identifier of the brand.
Under the Trade Marks Act 1994, a trade mark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The IPO’s position was that “Devon Blue” could be interpreted as indicating cheese products that are blue-veined and associated with Devon, thus lacking the distinctiveness required for trade mark registration.
Crafting a Persuasive Argument
In order to overcome the IPO’s initial refusal, we set out to gather and present sufficient evidence to demonstrate that “Devon Blue” had acquired distinctiveness through use. The aim was to show that the name had become uniquely associated with our client’s products in the minds of the relevant public.
Evidence Collection
- Market Presence and Recognition: We compiled detailed evidence of the extensive use of “Devon Blue” in the marketplace. This included sales figures, advertising expenditure, and geographical spread of the product distribution, illustrating the brand’s reach and impact.
- Media Coverage and Awards: We presented instances of media coverage and industry awards that recognised Devon Blue as a distinctive brand. Mentions by Jamie Oliver, articles in reputable publications and numerous awards from the British Cheese Awards underscored the brand’s unique identity and reputation.
- Online Presence: Digital evidence demonstrated how “Devon Blue” had gained recognition and a strong online presence. This further supported the argument that the name was not generic in the eyes of the consuming public.
Submission to the IPO
Having prepared a comprehensive bundle of evidence, we prepared a submission and witness statement. Our argument was twofold: firstly, that “Devon Blue” had acquired distinctiveness through extensive use and recognition; secondly, that the name, when viewed in the context of our client’s branding, transcended its descriptive elements to function as a trade mark.
The evidence showed a clear and undeniable link between the name Devon Blue and the specific products offered by Ticklemore Cheese, thereby meeting the criteria for acquired distinctiveness.
The Outcome: Trade Mark Registration Secured
After review, the examiner at the IPO accepted our arguments and evidence, ultimately granting the trade mark registration for Devon Blue. This decision marked a significant victory not only for our client but also for the principle that even seemingly generic terms can achieve trade mark protection through dedicated and strategic use.
Client Satisfaction and Future Implications
Our client was very satisfied with the outcome, as securing the trade mark meant they could now enjoy exclusive rights to use the name Devon Blue for their product.
Ben Harris of Ticklemore Cheese said “we were delighted to be able to trade mark the name Devon Blue, which we originally thought would not be possible. Laura Clarke and everyone at WBW were a pleasure to deal with”.
Conclusion
This case highlights the complexities involved in trade mark registration and the critical role played by evidence of acquired distinctiveness.
If you have a trade mark that you believe is too generic to be registered, or if you have faced an initial rejection from the IPO, please reach out to our Head of Corporate Services, Laura Clarke at lauraclarke@wbw.co.uk.
