The decision highlights that the use of a mark in a brand owner’s corporate name, website and/or social media handle, may constitute use of a mark for the purposes of trade mark registration.
It should nevertheless also be emphasised that question of whether the use requirement has been satisfied remains a highly fact specific inquiry, and that while precedent cases may provide guiding principles, they do not necessarily provide definitive answers to every trade mark application.
For further information and to discuss what this development might mean for you, please get in touch with your usual Baker McKenzie contact.
In this Trade Mark application, Floor Xpert Pte Ltd (“Applicant”) sought to register the Application Mark, “”, as a series of trade marks in Class 37 for the services below (“Application Services”):
Floor polishing; installing wood flooring; floor maintenance services; fitting of floor coverings; maintenance and repair of flooring; advisory services relating to flooring; constructing decks; tiling services; application of floor coating materials; installation services; repair, maintenance and installation consultancy services.
The Applicant’s initial application was met with little success, and was met with objections by the Examiner under Sections 7(1)(b) and (c) of the Act for being descriptive and non-distinctive in relation to the Application Services.
In response, the Applicant had filed evidence that the mark had acquired distinctiveness through use. However, the objections were maintained on the basis that the evidence of use filed by the Applicant did not show use of the Application Mark, and instead only showed use of the following:
- The Applicant’s full corporate name “FLOOR XPERT PTE. LTD.”;
- The Applicant’s stylised “Floor Xpert” mark “ ”;
- The Applicant’s domain name “http://www.floorxpert.com”; and
- The social media handle @FloorXpert
The Applicant subsequently requested for an ex parte hearing under rule 24(2)(b) of the Trade Mark Rules 2008 to overcome the Examiner’s objections.
Use of the Application Mark
At the ex parte hearing, the Registrar held that the evidence of use filed by the Applicant should not be disregarded on the premise that it did not show use of the Application Mark as filed.
In respect of the full corporate name, the domain name and the social media handle, the Registrar found that these constituted use of the Application Mark as holding otherwise would not gel with commercial reality and the perspectives of the relevant public, which in this case included homeowners, businesses, contractors and interior designers.
Specifically, the Registrar found that the full corporate name can serve as an identifier and badge of origin for goods or services in question. Given that the only difference between the full corporate name and the Application Mark is the element “Pte. Ltd.”, which is wholly descriptive and functional, consumers would focus on the words that appear in front of “Pte. Ltd.”, and the use of “Floor Xpert Pte. Ltd.” would send the message that the Applicant is a company known as “Floor Xpert”. Therefore, the public would likely treat the Application Mark as a badge of origin.
The Registrar emphasised that the mere fact that a company has been incorporated under a specific name means that such a sign would automatically count in the assessment for acquired distinctiveness through use. The analysis depends on the nature and extent of the use. For example, where the entity does not engage in business, there would not be any use of the company name as a trade mark. In this case, the Applicant was actively using its full company name as a trade mark in connection with its corporate Facebook page, and it followed that the evidence relating to its full company name was relevant in the distinctiveness assessment.
Likewise, the website and social media handle contained the same key elements “Floor Xpert”, albeit that the words may have been combined (as “FloorXpert” since domain names and handles do not permit blank spaces). As the whole point of clicking or typing a domain name is to seek out the person or entity that is operating the website, it buttresses the point that the goods or services provided originate from a business known as “Floor Xpert”. Accordingly, the Registrar found that the website and social media handle went beyond mere internet presence, and indicated trade origin and constituted use of the Application Mark.
With respect to the stylised mark, “”, the Registrar found that it was not necessary to decide if the use of the stylised mark constituted use of the Application Mark since, on the facts of this case, the plain word mark "Floor Xpert" appeared alongside any use of the stylised mark.
Use in relation to the Application Services
After examining the evidence by the Applicant, the Registrar found that the Applicant’s services which included consultation and advice, sale of flooring, installation, clean-up, and after sales service fell within the direct scope of, or at least closely related to, one or more of the items in the specification of the Application Services.
Insofar as there were some instances where the Application Mark related to design services and design consultancy services, arising from its partnership with an interior design firm, the Registrar acknowledged that these business activities nevertheless would be closely connected to “advisory services relating to flooring” and “repair, maintenance and installation consultancy services”, which both fell squarely within the scope of the Application Services.
For these reasons, the Registrar held that the use of the Application Mark constituted use to acquire distinctiveness to support trade mark registration under section 7(2) of the Act.
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