Throughout the Christmas and holiday season it is typical for most people to cook and eat more than usual. With that regard, probably it will be of interest to you the news for the red dot problems of Tefal’s pans in the UK.
In 2018 Tefal applied for the following figurative trademark in the UK for class 21 – frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks:
The UKIPO issued a refusal against this application based on absolute grounds section 3(1)(b) TMA – lack of distinctive character. According to the Office it was not clear whether consumers would perceive this red dot as a trademark sign of itself or just as a decorative or functional element.
Tefal submitted evidence for acquired distinctiveness through use in the UK. The UKIPO dismissed the evidence as insufficient.
Although there were significant sales and advertisement related to this type of pans, the evidence didn’t show in any way that the red dot was functioning as a stand alone sign of trade origin. On the contrary, some of the advertisement related this dot to its heating indication function.
More interestingly in the provided consumers survey, some of the respondents identified the red dot as a ‘heat spot’ or ‘when the pan is hot’.
Based on this the Office confirmed its position that the applied for sign is not distinctive and it is functional, that is to say it cannot serve as a source of trade origin.
This case is valuable as a case law because it shows quite clearly how difficult is to register some figurative trademarks sometimes. In such scenarios one possible solution can be an early implemented strategy by the trademark owner to indicate in every advertisement and other communication that the relevant sign is a mark. In that way, hopefully, consumers will start to perceive it as such in the long run.