The retail giant is now calling on UKIPO to reverse its 2013 rejection.
Mark Armitage, consultant and trade mark attorney at Withers & Rogers, explains that “the original decision to reject the registration was not unexpected. Although the retailer could prove a close association with the use of the word ‘Clubcard’, it is a generic term used by other companies as a description of a loyalty card service. In addition, Tesco always used the word CLUBCARD in close association with the word TESCO and it was felt that in this context the word CLUBCARD would not be seen as a trademark.”
“For these reasons, the UKIPO felt that allowing Tesco to register ‘Clubcard’ would have given the retailer an unfair monopoly.
“As the UKIPO gave clear reasons and a comprehensive and correct statement of the law they were applying, it is doubtful that this appeal will be successful for Tesco. It would not be right for one company, no matter how large, to be given monopoly rights over a generic word used for describing a service based on association alone, simply because it happened to be making heavy use of the term.”
For the decision to be overruled, Tesco will have to prove that an error in law was made or that the facts were significantly misinterpreted. This will not be an easy task given that about two in ten cases are overturned.
If the appeal is denied, then Tesco will not be able to take the case further, although it can attempt to register the name again at a later point.
This follows a previous failed attempt by Tesco to trade mark its blue dashes in August. The registration was rejected on the basis that the dashes alone, without the word Tesco, would be too simple and customers would not be able to associate them with the brand when seeing them alone.
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