Tefal's red dot cannot be branded ... in the UK

 I read on IpKat and on IP Planet that the UK Trademark Office has rejected TEFAL's red dot mark. It has reminded me of the battles we had, in Spain, to prevent unfair competition against TEFAL pans ... Proving that the design of TEFAL pans could not be imitated, because it was special and characteristic.

TEFAL applied in 2018 in the United Kingdom for the figurative mark of the red dot, located in the center of the bottom of a frying pan. For Class 21: pans, saucepans, casseroles. It has been rejected by the UK Intellectual Property Office UKIPO on 23 November 2020.

The red dot had no distinctive character

The British Trademark Office UKIPO rejected the registration, because it considered that the mark with the red dot had no distinctive character: the consumer did not attribute the character of a trademark to that red dot.

TEFAL claimed that it was distinctive. He submitted a survey and documents, to prove that the red dot had acquired distinctive character: that is, it was already known as distinctive / characteristic of TEFAL products.

THE UKIPO HAS NOT GIVEN THE RIGHT TO TEFAL

The Office understands that the red dot is not an independent feature of the pan where it is located. The consumer will not normally consider such a feature as a brand in itself. It would be unlikely that it would fulfill the essential function of brands, distinguish the product, indicating its business origin: the consumer would perceive them as decorative and / or functional.

Acquired red dot distinctiveness?

According to the Office, the fact that a sign, which is a shape, can be associated with a company does not mean that it is distinctive. The shape should be shown to function as a mark. It must have been used, as a trademark, to inform the consumer that this sign / shape guarantees the business origin of the product.

It should be demonstrated that the symbol holder has entrusted this symbol with the function of conveying a message to consumers about the business origin of the product, and that he did so in his advertising.

Was the red dot used as a mark? To guarantee the business origin?

Sales, promotion and advertising of pans with the red dot were important in the UK. But simply exposing the red dot to the public was not enough. The ‘famous red spot’, as the red dot was presented in advertising, was not a reference to the TEFAL frying pan, but to the heat. Therefore, the red dot was not used, as a mark and guarantee of business origin.

The consumer can take the red dot as a "technical function" of the pan. It wouldn't be distinctive either

The survey provided by TEFAL also did not help to demonstrate the distinctive character of the red dot.

UKIPO admits that 32% of respondents recognized the red dot as characteristic. But some of them identified it with "heat" or "hot". Therefore, they refer to the technical function of the red dot.

A trademark that is indicative of the technical function of the product is not distinctive either. Therefore it cannot be recognized as a brand.

Consequently, UKIPO has refused to register the TEFAL Red Dot Mark.The Intellectual Property Office of the European Union (EUIPO) and the European Patent Office (EPO), have released, in this month of February 2021, the results of a study on Intellectual Property Rights and business performance in the EU.

This study analyzes the performance of small, medium-sized companies (SMEs) and large companies in the European Union with regard to their ownership and use of patents, trademarks and designs that we will identify as IPRs (Intellectual Property Rights).

The objective of this study is to compare the economic performance of companies that hold intellectual property rights (IPRs), with the performance of those that do not have such rights and are skeptical of their usefulness, showing that companies that do invest in innovation and in IPRs they have a better performance.

To carry this out, a large representative sample of more than 127,000 European companies has been monitored in order to compare the economic performance of companies that own intellectual property rights with those that do not.

Furthermore, this study reveals that in the case of SMEs only 9% of them are holders of intellectual property rights.

The study shows, without a doubt, that the investment of companies in intellectual property translates into a direct impact on their profitability and sustainability, especially in the case of SMEs.

The data from the IPR portfolio of each company was compared with the information contained in the ORBIS commercial database. This database provides financial and other information on millions of European companies.

There are several ways to measure the economic performance of a company and in this study, to eliminate the effect of company size on statistical results, “revenue per employee” was chosen as the main indicator of company performance.

Table E1 below shows the mean values ​​of the variables selected by ownership of the IPRs.

Table E1

As this Table shows, companies that own intellectual property rights (IPRs) tend to be larger than companies that do not, as measured by the number of employees (13.5 versus 5.1 employees on average).

Companies that own intellectual property rights have an average of 20% more revenue per employee than companies that do not.

This Table also indicates that companies that own intellectual property rights pay on average 19% higher salaries than companies that do not.

The results, which are summarized in Table E3, which shows the main results of the econometric analysis and which we have below, confirm the positive association between IPR ownership and economic performance, with 55% higher income per employee for owners. of IPRs than for non-owners. This can be considered as one of the central results of this study.

The study shows that this relationship is particularly pronounced for SMEs, since those with IPRs have 68% higher income per employee than those without any IPR. Therefore, while the majority of SMEs in Europe do not have IPRs, those that do have significantly higher income per employee. For large companies, revenue per employee is 18% higher for IPR owners than for non-owners. In this case, the analysis shows that almost six out of ten large European companies have IPRs.

Table E3

The positive association between IPR ownership and economic performance is particularly strong for SMEs. At the same time, less than 9% of the SMEs in the sample own one of the three IPR rights included in the study. The reasons for the low acceptance are explored in the EUIPO survey of European SMEs which indicated that the reasons for this are mainly based on the lack of knowledge about IPRs, the perception that registration procedures are complex and expensive, and the high cost of enforcing those rights. Taking this into account, and the importance of SMEs in the European economy, the EPO and the EUIPO are taking steps to address these concerns in order to allow European SMEs to make the most of their innovation and intellectual property, in the context of the EPO Strategic Plan 2023 and EUIPO Strategic Plan 2025.

The Report confirms a previous one from 2019 in which it was found that there was a relationship between high-growth companies and their activity in IPRs and shows that, even within the current situation, it is feasible to achieve growth, if efforts are made in innovation and if the IPRs are duly protected, for which we put our firm at your disposal AB ASESORES to advise them on this matter so that they can create greater possibilities for sustained growth and economic progress in the years to come.