March 2003
Uniqlo can hang their clothes out to 'DRY'
UNIQLO is Japan's leading retailer of casual clothing offering well designed, casual basics at prices that everyone can afford. Uniqlo arrived in the U.K in Autumn 2001 and now has several stores in the North West, Midlands and South East. The retail chain only sells its own brand clothes in its stores. DRY is a trade mark applied by Uniqlo to a range of clothes, mainly t-shirts, sold in its stores. DRY clothes are made of absorbent clothing which keep the wearer's skin feeling dry.
Uniqlo applied to register the word "DRY" as a trade mark in the UK in class 25 for clothing. The Trade Marks Registry objected to Uniqlo's application under section 3(1)(b) and (c) of the Trade Marks Act 1994 on the basis that the word DRY is devoid of any distinctive character and a sign which other traders may legitimately wish to use in relation to "dry" clothes.
Briffa acting for Uniqlo requested a hearing at the Trade Marks Registry in order to get the objections reviewed.
Does DRY describe the clothes?
Briffa argued that the objection under section 3(1)(c) (i.e. that the mark was descriptive of clothing) should be waived because DRY is an unusual word to be used for clothes which are marketed and sold via normal high-street retail outlets. After all, no one goes into a store asking for "dry t-shirts". There is no need for high street retailers to use words 'dry' or 'wet' to describe clothes that they are selling. Clothes are obviously sold dry but are not often referred to as such unless they have first been wet! Therefore it was unclear what descriptive message was being given to the average consumer by the mark.
The European cases of EasiBank, Baby-Dry and Doublemint were all quoted in support of Briffa's arguments. The gist of all of these cases is that unless a trade mark comprises a word or words which in common speech are used to describe the goods, the mark should be registrable. Accordingly, Briffa argued that there is no need to preclude from registration a trade mark which would serve a useful purpose here, even if the degree of protection may be limited.
The Trade Marks Examiner agreed that in this context, section 3(1)(c) objection should be waived. He conceded that the word DRY on its own cannot be said to relate to any characteristic of the goods.
Is DRY distinctive?
The section 3(1)(b) objection (i.e. that the mark is devoid of distinctiveness) was more difficult to overcome. However, Briffa successfully argued that the mark was in fact distinctive in the particular context in which it was used. Although it is an ordinary single dictionary word, on balance it is more likely to be seen as a trade mark by the average consumer.
After further consideration the Examiner agreed with Briffa's argument for section 3(1)(b) and allowed the trade mark application to proceed subject to amendment in class 25 specification, excluding specialist sports clothing.