http://ipkitten.blogspot.com/2022/08/iconic-welsh-word-trade-marks.html
Recently, this Kat reported on Beyoncé’s decision to remove a sample from her song, after Kelis took to social media to complain, even though the rights had been cleared and there was no copyright infringement. As I explained in the Guardian: “It doesn’t matter that Beyoncé didn’t actually infringe Kelis’s rights. The point is that people think she did…[Kelis] doesn’t have any legal standing but by being vocal on social media, she creates emotional and moral capital.”
In a somewhat comparable situation, a trade mark holder has surrendered some of their registered marks, even though they were accepted by the UK Intellectual Property Office (IPO), after receiving public backlash against the registrations.
Fizzy Foam is a company based in Wales that makes handmade scented candles. In November 2021 and March 2022, Fizzy foam registered a number of word marks in Class 4, specifically “Candles; Perfumed candles; Soy candles; Scented candles; Fragranced candles; Candles (Perfumed -); Candles in tins.” Their registrations included the following iconic Welsh words – the meaning of which has kindly been explained to me by a short survey among my Welsh speaking friends:
Cwtch – to cuddle up to / a lovely cuddle, or the space under the stairs.
Cariad – darling or love.
Hiraeth – missing something or somewhere. But more than that – a longing for home / is a special feeling of longing for home particularly in Wales – a mixture of sadness and pleasure.
Aur Cymru – Gold from Wales.
They also registered ‘Welsh Cake’ which is a [delicious] traditional Welsh sweet bread.
They applied for ‘Handmade Welsh Candle‘ which was refused – surely on grounds of being descriptive [under section 3(1)(c) Trade Mark Act 1994, which excludes from registration signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.]
Shortly afterwards the company received backlash online and a petition was launched against the registrations, stating “the Welsh Language is NOT an advertising feature, or a gimmick. It is a living, historic, entity, that is beyond the scope of the Intellectual Property Office. No business or individual should have the right to claim ownership of these words, or any words and phrases that are unique to the Welsh language (or refer to any aspect of Welsh ness, such as ‘welsh cake’). They don’t belong to any one person. They belong to us all, to our nation, to our culture, to our heritage.” 6,542 people have signed the petition.
| Image: Riana Harvey |
In terms of the legal validity of the marks, according to UK IPO guidance “trade marks may consist of words in languages other than English. Where marks contain Welsh or Gaelic words they will be treated in the same way as trade marks consisting of the equivalent English words for the purposes of section 3(1).”
Section 3(1) of the UK Trade Mark Act 1994 provides the absolute grounds for refusal of registration, which includes at (d) “trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bonafide and established practices of the trade.”
Whilst words such as love/ cariad might be controversial registrations, they are – and can be – valid marks. A quick search on the UK IPO trade mark register for the word ‘love’ – as a comparator to ‘cariad’ for example – under Class 4 reveals 211 marks, 171 of which are live. In fact, Cariad, has been and is currently registered as a trade mark with the UK IPO. A search revealed 791 marks, 593 of which are live.
That said, the objection is based on the fact that the words are iconic Welsh words, rather than due to their descriptive nature, or that the words are commonly used and therefore need to be available for other candle making companies.
Another way to consider the use of the words then, might be that they suggest Wales or Welsh origin. A comparative rule set out in the UK IPO guidance is that “words and devices that strongly suggest Scotland or Scottish origin such as Thistle, Tartan, Highland, for goods for which Scotland has a reputation, such as knitwear, salmon, spring water, beef, biscuits an objection under section 3(3)(b) may be appropriate.” Section 3(3)(b) provides that a trade mark shall not be registered if it is of such a nature as to deceive the public. However, Fizzy Foam is a Welsh company and therefore this rule would not apply here because the product is of Welsh origin.
Therefore, it appears that whilst the trade marks were valid according to UK trade mark law and the UK IPO guidance, rightsholders have once again made IP management decisions based on public perception and yielded to social media/online backlash. In all this, it is interesting to note that they decided to keep their word marks for ‘The Candle of Wales’ and ‘Aur Cymru.’
Do readers agree with their decision? Should these words be unprotectable as trade marks? What does this mean for the hundreds of other registrations that include these, or similar, words?
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