- The hearing officer refused to register STITCH in Class 41 following an opposition by TikTok, finding that the mark was objectionable under Section 3
- While the court agreed with the finding that ‘stitch’ was apt to describe the joining of media, it questioned how this had been applied to each of the services at issue
- The court allowed the appeal as a result of the hearing officer’s flawed reasoning and decisions on Section 3
In an unusual and rather rare instance, an appeal against an opposition based on Section 3 of the Trademarks Act 1994 was recently ruled on by the High Court (Stitch Editing Ltd v TikTok Information Technologies UK Ltd ( EWHC 1167 (Ch)). The applicant, Stitch Editing Ltd, brought the appeal following the hearing officer’s refusal to register the trademark STITCH following an opposition by TikTok Information Technologies Ltd.
Stitch applied for the STITCH mark in October 2020 for services in Class 41, including “editing of music, television programmes, films, commercials, internet videos and video programmes; multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films.” TikTok’s opposition was based on Sections 3(1)(b), 3(1)(c) and 3(1)(d) of the act, claiming that the mark was devoid of distinctive character, was descriptive and involved customary language in the trade. Stitch defended the opposition and claimed acquired distinctiveness as a result of the use made.
At first instance, the hearing officer considered that, “at its most basic level… STITCH is a way of joining things together.” In relation to the use of the term ‘stitch’ for technology, the hearing officer determined that “STITCH therefore appears to be the apt word to use in this descriptive sense of joining images”, before going on to state that “this usage describing the stitching together of images, film and music also appears to be prevalent in the informal comments and postings made in [user forums].” Accordingly, the hearing officer concluded that STITCH was descriptive of the kind and intended purpose of the applied-for services and, therefore, the mark was objectionable under Section 3 of the act.
The appeal was heard by Justice Sir Anthony Mann and concerned the hearing officer’s perceived misapplication of principle and legal requirements in order to reach her findings. Counsel for Stitch submitted that the hearing officer had made three errors:
- All the services within the specification were treated in the same way, with no attempt made to consider each separately.
- There was no detailed consideration of whether STITCH was actually descriptive of the intended purpose of the applied-for services.
- There was a real and unaddressed question of whether a word which was descriptive of a technique within a service could be described as being a service or descriptive of the service, or whether a word which was associated with a service could go further and be descriptive of it.
Mann J considered at the outset that there were problems with the ultimate determination of the hearing officer. Although he agreed with the finding that the word ‘stitch’ was apt to describe the joining of media in all sorts of context, he questioned how this had been applied to each of the services in the specification. What had not been expressly laid out was that the meaning attributed to STITCH would mean that the average consumer would take it to describe the activities in each of the listed services in the specification. As the hearing officer had not carried out this exercise, Mann J considered the decision in relation to Section 3(1)(c) to be flawed and, as a result, the determination for it, as well as the determinations under Sections 3(1)(b) and3(1)(d), needed to be revisited.
The appeal was allowed as a result of the hearing officer’s flawed reasoning and decisions on Section 3. In respect of the evidence for acquired distinctiveness, Mann J held that the hearing officer did not approach the examination of the evidence in the right light. Accordingly, Stitch’s application was remitted to a hearing officer for a fresh determination.
The appeal decision underpins the interaction between examination and opposition and the need for an examiner/hearing officer to consider separately each single term of a specification and/or consider evidence of acquired distinctiveness. Even if a mark is accepted for registration, although somewhat unusual, an application may still be challenged on the basis of Section 3 of the act — namely, that the mark fails to satisfy certain requirements of a trademark. Interestingly, Mann J noted that “a judgment is not impeachable just because it does not expressly articulate each and every little step towards a conclusion.” However, that does not obviate the need for a full consideration of facts for judgment to be found sound.