A recent report by the UK Intellectual Property Office [IPO] draws attention to trade mark cluttering. Trade mark cluttering occurs “where firms hold trade marks that are overly broad or unused raising search costs for later applicants.”
Distinctiveness is the key principle underlying trade mark law and policy. Trade marks help customers distinguish particular wares and services as well as identify their source. Simultaneously, trade mark owners are encouraged to invest their efforts in maintaining a reputation through product quality. Trade mark cluttering works against this notion of distinctiveness as trademark registers become full of marks that are unused. As a result, it becomes more costly for owners to search through existing marks and successfully register a distinctive mark.
The IPO report characterizes trade mark cluttering as a systemic problem since “existing levels of cluttering lead later applicants to adopt application strategies that further contribute to the problem.” Firms submit numerous simultaneous applications for a mark to ensure that it will be registered despite the fact that only one or few of these marks will actually be used by the trade mark owner. To achieve this blanket registration, firms involve a number of different strategies. For example, firms may apply for marks which they do not necessarily have any intent to use either to prevent others from using the mark or any similar mark or as insurance in case they later decide to use any of the marks.
The result of these blanket registration strategies is the unavailability of distinctive names for future applicants. Applicants are then forced to employ the same strategies in order to identify a unique mark that can be registered. The report also highlights the fact that marks that are at least somewhat descriptive in nature create more problems when trademark cluttering occurs. An applicant who wishes to use a similarly descriptive mark may find that all potential options have already be registered through the previously mentioned strategies.
As is emphasized by the report, it is essential to weigh the cost of trade mark cluttering against the cost of directly addressing the problem and cleansing the register. While application fees are intended to discourage the filing of multiple clustered applications, a number of other methods of combating trademark cluttering are outlined. This includes renewal requirements, cancellation of cluttered marks and opposition by trade mark offices. Perhaps more effective is a use requirement that would allow subsequent applicants to challenge a mark that is not being used. Additionally, clustered marks could be licensed or transferred to future applicants.
While the costs of implementing any of these solutions should be weighed against the existing costs to applicants dealing with cluttering, it is also important to weigh all costs against the essential principals of trade mark policy. Trade mark cluttering results in the existence of a plethora of marks that do not distinguish source or identify any particular wares or services. Instead, these marks work against the requisite distinctiveness of trade mark law by impeding applicants in their search for a unique and registrable mark. While cost considerations are important, trade mark policy would benefit from an approach that is always mindful of the underlying principles of trade mark law.
Nora Sleeth is a JD candidate at Osgoode Hall Law School.