Decision Nº O/105/22 from Intellectual Property Office - (Trade market), 8 February 2022
| Judge | Ms C Boucher |
| Administrative Decision Number | O/105/22 |
| Registration Number | UK00003427514 |
| Date | 08 February 2022 |
O/105/22
TRADE MARKS ACT 1994
IN THE MATTER OF TRADE MARK APPLICATION NO. 3427514
BY THE OFFICIAL UK CHARTS COMPANY LIMITED
TO REGISTER:
OFFICIAL CHARTS
AS A TRADE MARK IN CLASS 35
AND
IN THE MATTER OF THE OPPOSITION THERETO
UNDER NO. 420559 BY
GLOBAL MEDIA GROUP SERVICES LIMITED
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BACKGROUND AND PLEADINGS
1. The Official UK Charts Company Limited (“OCC”) (“the applicant”) applied to register
OFFICIAL CHARTS as a trade mark in the United Kingdom on 10 September 2019.
On examination, the mark was found to be inherently non-distinctive, but it was
accepted that the applicant had shown that, by the date of application, the mark had
acquired a distinctive character as a result of the use made of it. The mark was
published on 20 March 2020. During the course of the proceedings the specification
was amended and now reads as follows:
Class 35
Systemisation of information relating to sales of music, videos, films, recordings
and streams into databases; compilation, management, provision and marketing
of databases and information relating to sales of music, videos, films, recordings
and streams; sales research and market research for music, video, film, music,
recordings and streams; compilation, analysis and presentation of information
about sales of music, videos, films recordings and streams; provision of space
on web sites for advertising goods and services; compilation of directories
relating to music, videos, films, recordings and streams, on the Internet; retailing
services connected with the sale of music, videos, films, recordings, streams,
magnetic data carriers, recording media, sound recordings, compact disks,
records, tapes, disks, minidiscs, CD-ROMs, DVDs, laser discs, audio-visual
recordings, electronic publications, music provided from sites on the Internet,
printed matter, books, booklets, magazines, newspapers and periodicals,
stationery, writing instruments, publications, promotional literature, flyers,
posters, tickets, postcards, souvenir programmes, photographs, photograph
albums, stickers, sticker albums, T-shirts, sweatshirts, jackets, caps, clothing,
footwear, headgear, board games, toys, and playthings.
2. The applicant is controlled by two trade bodies, BPI (British Recorded Music
Industry) Limited (“BPI”) and the Entertainment Retailers Association (“ERA”).
3. On 19 June 2020, the application was opposed by Global Radio Services Limited,
which, on 1 April 2021, changed its name to Global Media Group Services Limited
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(“the opponent”). The opposition is based on sections 3(1)(b) and (c) and 3(3)(b) of
the Trade Marks Act 1994 (“the Act”) and concerns all the applied-for services.
4. Under section 3(1)(c) of the Act, the opponent claims that the application comprises
a trade mark which consists exclusively of a sign or indication which may serve, in
trade, to describe (or at least have the capacity to describe) the kind, quality, intended
purpose, value and/or other characteristics of the services of the application. It asserts
that the average consumer would understand the contested mark to mean
“the lists produced each week of songs or records with the highest sales,
those lists being produced by people in some kind of position of authority or
official capacity and/or with an official sanction or seal of approval.”
5. Under section 3(1)(b) of the Act, the opponent claims that the mark is devoid of any
distinctive character in respect of the services of the application. Further or
alternatively to the arguments advanced under section 3(1)(c), it claims that “the word
‘official’ is used by a wide range of service providers … as a form of advertising puffery”
and therefore is not understood to indicate trade origin, and that there are several
providers of “official charts” and so the mark cannot serve, in trade, to distinguish the
services of the applicant from those of other undertakings.
6. Under section 3(3)(b) of the Act, the opponent claims that the application is of such
a nature as to deceive the public as to the nature or quality of the services for the
following reasons:
“(a) The trade mark of the Application contains the word ‘charts’. Therefore,
the average consumer would expect the services covered by the Application
to relate to charts. To the extent the services of the Application relate to
charts the Application is descriptive for the reasons set out above; and to
the extent that the services of the Application do not relate to charts, the
Application is deceptive.
(b) Further and/or alternatively, the trade mark of the Application contains
the word ‘official’. This is capable of deceiving the average consumer into
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