Thursday, December 11, 2008

'Sequin Art' not descriptive of sequin art?

An interesting decision has come out of the High Court.

Kitfix Swallow Group (KSG) had been selling craft kits that allowed purchasers to create pictures with sequins since 1990. In 2005 KSG registered a Community Trade Mark for 'Sequin Art' and then in 2007 KSG sued toy wholesaler 'Great Gizmos' for trade mark infringement and passing off as they were importing and selling similar kits under the same name. In response Great Gizmos applied to the OHIM for a declaration of invalidity of the trade mark on the grounds that it was descriptive. However in November 2007 an application by Great Gizmos to put the court proceedings on hold pending the outcome of the OHIM's decision was refused.

In the High Court Judge Mackie QC summarised the defendants arguement as: "[The words] immediately inform the average consumer that the goods in issue are used to create art of artwork using sequins...there is no lexical invention or any unusual syntactical structure to the term 'Sequin Art'."

KSG said that the name merely eludes to the characteristics of the goods, stating: "[The Name] alludes to what the finished product might wish to be considered...the goods themselves are not pictures. The goods merely comprise some sequins and instructions, i.e. nothing more than a collection of plastic bags that contain components that might form a picture in due course if suitable skill and endeavour is expended by someone."

The Community Trade Mark Regulations 1994 effectively allows for descriptive marks that have acquired a distinctive character in relation to the goods or services for which it is registered. Thus KSG also argued that not only was the mark not descriptive it had also gained further distinctiveness through it's use.

Judge Mackie stated: "My own first impression albeit superficial (perhaps like that of a purchaser) was that these products of the same name and nature were part of the same range...although confusion might not happen very often I consider that there is certainly a likelihood that it would given the background, the similarities between the products, the nature of the market and the fact that both kits are called 'Sequin Art'."

In the end Judge Mackie found in KSG's favour ruling that there was both trade mark infringement and passing off, on top of this he dismissed Great Gizmos application for invalidity. He stated:

"I also conclude from the evidence that the mark 'Sequin Art' is distinctive either inherently or because of its use over the years…'Sequin Art' is allusive not descriptive, because while it indicates the nature of the product it does not describe it...further use over the years has made it distinctive."

Damages are to be assessed.

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