Safe passage for uni baggage (O/164/17)
Uni Baggage Ltd applied to register UNI BAGGAGE and UNIBAGGAGE for “Courier services for the delivery of goods” in class 39. It was opposed by Sendmybag (NI) Ltd under sections 3(1)(b), (c) & (d) and section 3(6) of the Trade Marks Act 1994.
The parties had previously been involved in litigation involving a counterclaim that the Opponent’s use of UNI BAGGAGE on its website amounted to passing off. The Opponent had argued that its use was descriptive and highlighted that UNI BAGGAGE was not a registered trade mark. The matter was resolved in mediation and the Applicant applied to register UNI BAGGAGE.
Distinctiveness/Descriptiveness: The Hearing Officer readily found that the mark was descriptive of the items couriered to and from university (students’ luggage), despite arguments from the Applicant that “uni” has other meanings, there were other “uni” brands, and that descriptive use by customers of “uni baggage” on Twitter was because of character limitations necessitating the use of abbreviations.
Acquired Distinctiveness: The Applicant relied on the proviso to Section 3, namely that the sign had acquired a distinctive character resulting from the use made of it since 2010. The evidence filed by the (unrepresented) Applicant included data obtained from online sources, website hits, and press coverage. There were “uncertainties” about the number of customers and there was no information about the Applicant’s turnover or copies of invoices.
Although the Applicant could have “marshalled” the evidence better, the Hearing Officer was persuaded that the evidence was sufficient to show that there was a business identified by the mark with a reasonably sized presence in the courier services market targeted at students. There appeared to be no use of UNI BAGGAGE before the Applicant was founded in 2009. Accordingly, the descriptive term UNI BAGGAGE had acquired a secondary meaning so was registrable.
The Opponent claimed that the application was:
- only made after mediation during which the descriptiveness of the term was raised.
- an attempt to stifle descriptive use of “uni baggage” and “university baggage” by other couriers.
In dismissing both claims, the Hearing Officer found that the Applicant sought to register the mark to protect its legitimate interest in a sign that it was using as a trade mark and that the descriptive term “uni baggage” had acquired through use a secondary meaning as an indicator of origin. Registration would not entitle the Applicant to prevent legitimate descriptive use and so would not stifle competition. The opposition failed and an award of costs was granted to the Applicant.
Although it seems that the UKIPO is sympathetic towards an unrepresented Applicant, we are reminded that the proviso to Section 3 is not as onerous as proving goodwill for the purposes of a passing off action. It need only be shown that the mark is no longer purely descriptive rather than that the acquired secondary meaning has displaced the original descriptive meaning. Therefore, the lack of precise evidence is not fatal.
At Appleyard Lees, we have experienced attorneys who can answer all of your trade mark queries. For more information, please contact Joanne Goodchild.
Return to Articles