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05 Mar 2019
BY Gerard du Toit

Valentine’s Day: not a great deal of romance

Valentine’s Day has come and gone, but from a trade mark point of view, it’s been anything but romantic. As the following stories indicate, the world of trade marks has done little to set hearts aflutter.

Marry Me? You’ll have to come up with something a lot more original than that!

First, there was the report that the EU’s General Court had turned down an EU application for a trade mark comprising the words Marry Me, together with a heart device (logo) – the application was in classes 9, 38 and 45, and it covered, inter alia, application software for social networking services, online chat rooms, online greeting cards, and matching services through social networking. A lonely hearts or dating service in old-speak!

The General Court took the view that the mark should not be registered because it is descriptive and non-distinctive. For starters, it felt that the words Marry Me will be understood as a dating service. Moreover, it said that any logo comprising something as obvious and banal as a heart would be equally descriptive of the service. The fact that the applicant already had national registrations for its trade mark in Germany was not enough because, when it comes to EU-wide trade mark registrations, all EU languages need to be considered, and that, of course, includes English. If you’re now thinking “But what about Brexit?”, remember that English will remain relevant in the EU because of its status in Ireland, Malta and Cyprus, as well as its de facto second-language status in many European countries such as the Netherlands and the Scandinavian countries.

The case highlights the important fact that trade mark law is all about distinctiveness – it’s only distinctive trade marks that can be protected. The reason for this is simple: a registration confers exclusive rights, certainly in respect of the actual goods or services covered by the registration, generally also in respect of closely-related goods or services, and sometimes even in respect of unrelated goods and services. A trade mark registration is therefore a monopoly right. The law must, for obvious reasons, ensure that monopoly rights are only granted in circumstances where they are warranted.
If companies could get exclusivity in descriptive, suggestive or other non-distinctive words, that would make life very difficult for other businesses wanting to compete.

Exactly the same considerations apply to devices or logos – if the device or logo is one that companies operating in that product area could quite reasonably want to use, then no one company should have exclusivity in it. The situation may, however, be different if the company seeking registration can establish that, as a result of its own widespread use, the word or device has in fact become distinctive of that company.

In this case, the trade mark is perhaps a little less descriptive than some terms like “Let’s Meet” or “Wanna Date”, but it’s still one of those phrases that’s a little too obvious (even if it does suggest a service where things move unbelievably quickly). If you’re in business you need to take your brand name and logo seriously, as seriously as you take your product itself. Don’t let it be an after-thought and avoid anything that’s banal or obvious.

Faking it

The second trade mark story that came out around Valentine’s Day involves sex toys – this was reported in a publication that doesn’t generally deal with such racy matters, The Trademark Lawyer. We’re told that sex toys are a very popular gift on Valentine’s Day. According to a survey, some two-thirds of adults in the USA would “consider” buying their loved one a sex toy for Valentine’s Day (whatever happened to flowers and chocolate you might think). The survey suggests that this is a product area where online shopping is very popular – nearly 80% of those surveyed said that they would prefer to buy goods like these without having to interact with a human in a shop (no surprise there). Most said that Amazon would be their first port of call, but if you’re more of an eBay or Reddit-person, worry not, you can get your sex toys there too. Men are more likely to buy sex toys than women.

The trade mark angle to this story is that there’s a great deal of faking it going on. Some 20% of people surveyed said that they believed that they had bought fake sex toys online. Of those, some 33% said that they had been disappointed with the quality of the apparent fakes. Fortunately, no detail is provided as to the nature of the disappointment! Roughly half of the respondents said that if they ever discovered that they had bought a counterfeit sex toy, they would seek a refund from the seller, whereas roughly 1/3 would approach the manufacturer of the genuine product. Most disturbingly perhaps, nearly 75% of those surveyed said they would willingly buy fakes if there were significant cost savings.

This story highlights the fact that a great deal of counterfeiting activity now takes place online. Online is certainly where it’s all happening in the developed world, although markets and shops still play a big role when it comes to counterfeits in the developing world. The story also highlights the fact that brand owners have work to do when it comes to educating consumers about trade marks, the quality control function they perform, and the myriad of issues surrounding counterfeit goods including, in the case of sex toys, possible health dangers.

As I said at the outset, not a great deal of romance!

Reviewed by Gaelyn Scott, head of ENSafrica's IP department.