In a decision which has raised a few eyebrows in the IP world, the Intellectual Property Office ("IPO") has recently accepted Specsavers' UK trade mark application for the word "should've” in relation to a range of goods and services.
Specsavers filed its application on 18 July 2016. It then went through a fairly standard one month examination by the IPO, incurring some minor specification amendments along the way, before being accepted on 12 August 2016. But how can this be? How can one party claim a monopoly over the word "should've"?
The purpose of a trade mark is of course to identify trade origin. Therefore, whatever mark a party seeks to register must be capable of identifying that entity's goods or services to consumers. As a consequence it is not, on the face of it, possible to trade mark a sign which is devoid of distinctive character. Typically, verbs such as "should've" would fall into the category of marks lacking distinctive character.
The exception to the above is that a mark which would otherwise be deemed to lack distinctive character can acquire distinctiveness if it is used enough in relation to specific goods or services. Specsavers uses the well-known slogan “Should’ve gone to Specsavers” and it is likely that it is this use that persuaded the examiner that "should've" possessed the necessary distinctive character to act as an indicator of trade origin for the business.
To say that the use that Specsavers has made of the word "should've" is sufficient to have built up distinctive character in the word does seem like something of a stretch. "Should've" is only ever used by Specsavers as part of a slogan which also includes the company's name. Surely then, the bit of the slogan that consumers identify as relating to the company is the company name?
Furthermore, Specsavers' application covers a fairly broad range of goods and services, including "envelopes" and "greetings cards". How many greeting cards has Specsavers sold and how much would consumers associate the word "should've" with Specsavers if it was applied to such goods?
If Specsavers' trade mark is granted, it will obtain a monopoly right to use the word "should've" in relation to all of the goods and services covered by the application. This could prove problematic for competitors, as well as third parties involved in the sale of goods such as greeting cards.
What happens next?
The acceptance of this application isn't the end of the story. The application now enters an "opposition period" during which third parties have an opportunity to object to the application and submit arguments as to why the trade mark registration should not be granted. It is interesting to note that, at the time of writing, the application is facing six threatened oppositions. It is likely that at least one of these will progress into a full opposition if Specsavers does not withdraw the application in the meantime.
It seems unlikely that this application will ever actually register but, if it does then it could signal the start of a new practice amongst brand owners that regularly use common words as part of their branding and we could see a wave of new applications being filed as the market tests the bounds of what is accepted.
An important point to note, however, is that a trade mark registration is only useful if it can withstand challenge by a party against which it is enforced. Defendants will be likely to challenge the validity of the mark if it registers and Specsavers try to enforce it. Could it withstand such a challenge? No doubt all will become clear in time.