When descriptive words gain trade mark power

The UK Intellectual Property Office's (UKIPO) decision involving BYD Company Limited’s (BYD) attempt to register the mark 'BYD DOLPHIN MINI' is a reminder that, what begins as a simple descriptive term can, through long and consistent use, develop into a powerful indicator of origin.

Background

BYD applied to register the trade mark 'BYD DOLPHIN MINI' in class 12 for vehicles and related goods.  

Bayerische Motoren Werke Aktiengesellschaft (BMW) opposed the application under sections 5(1), 5(2) and 5(3) of the Trade Marks Act 1994 on the basis of its long-standing rights in the trade mark 'MINI' and their reputation.

The dispute centred on whether the inclusion of 'MINI' in the application would give rise to confusion or unfair advantage given BMW’s long-established brand.

The decision

BMW's acquired distinctiveness through use

BMW argued that its extensive use of the 'MINI' brand in the UK (since 1959) meant the word had acquired distinctiveness in the automotive sector. Evidence submitted included figures for significant promotion volumes, strong sales and sustained marketing investment,

The UKIPO found that the word 'mini' is inherently descriptive in relation to vehicles, as it naturally denotes small size. However, due to BMW's extensive use of the mark it enjoys enhanced distinctiveness for cars in the UK.

Why adding more words did not solve the problem – direct confusion v indirect confusion

BYD argued that its mark should be considered as a whole. It pointed out that 'BYD' (the manufacturer name) and 'DOLPHIN' (the model's name) would dominate the overall impression, leaving 'MINI' as a secondary, descriptive element.

While the UKIPO accepted that consumers would perceive all three elements, it found that 'MINI' retained an independent role within the mark. The UKIPO did not find direct confusion between the marks. However, indirect confusion was found because of the strong badge of origin the 'MINI' brand enjoyed stating that consumers would perceive it as indicating a connection with BMW's 'MINI'. Importantly, this did not suggest that consumers would believe a BYD vehicle was literally a 'MINI'. Rather, the concern was that consumers might assume some form of economic link - such as a collaboration, licensing deal or sub-brand.

The reputation claim

The hearing officer accepted that the 'MINI' brand had a substantial reputation in the UK automobile sector. It was found that consumers encountering the 'BYD DOLPHIN MINI' brand for cars would be likely to make a mental link with BMW's 'MINI' brand. However, this reputation was not given unlimited reach and was insufficient to support the claim across all categories of vehicles, particularly specialist commercial vehicles.   

This aspect of the decision reinforces the principle that a claimant must show not merely that its mark is famous, but also that the reputation relied upon is relevant to the specific goods at issue and that consumers would make the necessary link in the marketplace.

The outcome

The opposition succeeded but only in part and the application was refused for cars and closely related goods to those protected under the MINI brand. Therefore, BYD's application was allowed to proceed in relation to motor coaches, trucks, lorries, motor buses and forklift trucks.

Key takeaways:

• Descriptive words can become protectable assets.
• The stronger a mark's reputation, the more likely it is that consumers will assume a connection when they encounter it elsewhere.
• How a word is perceived depends heavily on the goods in question and the expectations of the relevant public.
• Additional elements to marks (in this case 'BYD' and 'DOLPHIN') can be insufficient to eliminate possibility of indirect confusion.