Instagram, LLC v Meta 404 Limited
[2023] EWHC 436 (Ch)
Stitch Editing Limited v TikTok Information Technologies UK Limited
17 May 2023
[2023] EWHC 1167 (Ch)
High Court
A company wanted to trademark the word "STITCH." A judge said the first judge didn't look closely enough at whether the word was descriptive of the company's services, so they're going to try again.
Key Facts
- •Stitch Editing Ltd applied to register the word mark "STITCH" for various services in class 41 (editing of music, television programs, etc.).
- •TikTok opposed the registration under Trade Marks Act 1994 section 3(1)(b), (c), and (d), arguing the mark lacked distinctive character and was descriptive.
- •Stitch argued that the mark had acquired distinctive character through use.
- •The Hearing Officer refused registration on all grounds.
- •Stitch appealed the decision.
Legal Principles
On appeal, the court should not interfere with the trial judge's conclusions on primary facts unless plainly wrong. The appeal court must ask whether the decision of the judge was wrong by reason of some identifiable flaw.
Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch); Volpi v Volpi [2022] EWCA Civ 464; Re Sprintroom Ltd [2019] EWCA Civ 932
A sign is excluded from registration under section 3(1)(c) if at least one of its possible meanings designates a characteristic of the goods or services.
Starbucks (HK) Ltd v British Sky Broadcasting plc [2012] EWHC 3074; Technopol v OHIM [2011] ETMR 34; Matratsen Concord AG v Hukla Germany SA Case C-421/04
To assess distinctiveness, consider the perception of the relevant public (reasonably well-informed and observant consumers).
Matratsen Concord AG v Hukla Germany SA Case C-421/04
Descriptive uses of the mark that are practically significant are considered, but unlikely uses are not.
Hearing Officer's Decision
Characteristics under section 3(1)(c) can include characteristics that services may optionally possess.
NMSI’s Application (FLYING SCOTSMAN) [2012] RPC 7; Technopol case [2011] ETMR 34; Deepmind Technologies Ltd v EUIPO T.97/18
A mark excluded under section 3(1)(c) also lacks distinctive character under section 3(1)(b).
OHIM v BORCO-Marken-Import Matthieson GmbH & Co KG (C-265/09 P)
For a section 3(1)(d) objection, the mark must be customary in the language or established practices of the trade.
Telefon & Buch Verlagsgesellschaft GmbH v OHIM Case T-322/03
In determining acquired distinctive character, consider overall assessment of evidence showing the mark identifies the product as originating from a particular undertaking.
Windsurfing Chiemsee Produktions v Huber [1999] ETMR 585
Outcomes
Appeal allowed.
The Hearing Officer's reasoning and decisions on section 3 were unsatisfactory because she didn't adequately consider each service individually and jumped to conclusions without sufficient justification. The decision on acquired distinctiveness was also flawed due to an improper approach to the evidence.
Matter remitted to a Hearing Officer for a fresh determination.
A fresh hearing is needed to properly consider each service under sections 3(1)(b), (c), and (d) and to re-evaluate the acquired distinctive character based on a proper assessment of the evidence.