Court upholds 'Sequin Art' trade mark, says it is not descriptive

Kitfix Swallow Group (KSG) has been selling the kits since 1990 and has held a Community Trade Mark for the 'Sequin Art' since 2005. In January 2007, it sued toy wholesaler Great Gizmos for importing and selling similar kits under the same name, claiming trade mark infringement and passing off.

Great Gizmos applied to the Office of Harmonisation in the Internal Market (OHIM) for a declaration of invalidity of the trade mark. It argued that the mark was descriptive. But in November 2007, Mr Justice Mann refused an application by Great Gizmos to put the High Court proceedings on hold pending the outcome of the OHIM proceedings. The High Court proceedings have now been resolved.

Great Gizmos argued that the words 'Sequin Art' describe the kits and that the trade mark should therefore be declared invalid.

His Honour Judge Mackie QC, sitting as a judge of the High Court, summarised its argument. "[The words] immediately inform the average consumer that the goods in issue are used to create art of artwork using sequins," he wrote. "There is no lexical invention or any unusual syntactical structure to the term 'Sequin Art'."

A Community Trade Mark Regulation of 1994 provides that marks which are devoid of any distinctive character and/or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographical origin or time of production or of rendering the service, or other characteristics of the goods or services shall not be registered. It also says that if such a mark has been registered, it can later be declared invalid.

But the Regulation adds that such a mark may not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to goods or services for which it is registered.

KSG said the name merely alludes to a characteristic of the goods. It said that a descriptive term would be "components for sequin pictures". The word "art" is too vague, it argued. "Rather, it alludes to what the finished product might wish to be considered," it said. "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."

KSG said that the mark is not only inherently distinctive but that this distinctiveness had been enhanced by use.

There was no evidence of actual consumer confusion between the competing products. Trade witnesses were called for each side but Judge Mackie attached little weight to their evidence.

"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," he wrote. "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'."

Judge Mackie ruled that there was trade mark infringement and passing off. He also dismissed Great Gizmos' claim for a declaration of invalidity.

"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, (unlike [a witness's] example of chicken curry) because while it indicates the nature of the product it does not describe it," he wrote. "Further use over the years has made it distinctive."

The judgment was issued last month and made publicly available today. Damages will be assessed in a separate ruling.