Lost In The I-Crowd?

In the wake of the digital revolution, the smallest letter of our alphabet has become a powerful branding tool.

The letter ‘i’, as a prefix on names for goods and services, instantly denotes futuristic digital specification and convenience.

It is little surprise, then, that the i-prefix is common among the latest generation of brands aimed at 15- to 35-year-olds, and many companies register trade marks consisting of i-words beginning with that tiny letter.

The most recognisable part of such trade marks is, obviously, the i-prefix itself. But can the trade mark owners stop other businesses using the i-prefix at the front of their own trade names?

That depends partly on whether two rival businesses are promoting similar goods or services in the same marketplace. But it is doubtful that any one business could successfully claim ownership and control of the prefix.

Most people have heard of Apple’s ‘iPod’, which unsurprisingly is registered as a UK trade mark, but fewer may have heard about ‘iPad’ which is a strikingly similar registered trade mark used by Barratt Homes in relation to modern city flats.

Despite being almost identical, with only one letter different, they are both successfully registered and protected under UK trade mark law.

The probable reason for these accepted registrations is the very different goods and services to which they relate, meaning that there is unlikely to be confusion within the market place.

However, although Apple and Barratt Homes promote different products in different markets, Barratt Homes may not be free to use the name ‘iPod’ in relation to modern flats.

If it did so, it could face infringement action, because Barratt would arguably be taking unfair advantage of Apple’s ‘iPod’’s reputation in the UK.

There’s a wide range of i-prefix trade mark registrations and applications in the UK – for example, ‘iAxe’ for USB guitars, i-Car for toy cars and i-Doc for eye medication.

It appears from the number of ‘i-brands’ in use that no one company or organisation is able to claim exclusivity for use of this potent prefix.

It is likely that other new i-prefix marks will continue to registered in this country, giving proprietors the exclusive right to use such word marks in relation to the goods or services they have registered.

Even if one particular brand tried to monopolise use of the i-prefix, its efforts could paradoxically actually weaken its brand protection rather than enhance it.

Having a globally successful brand can erode some of the protection afforded under UK trade mark law.

A previously registered trade mark is vulnerable to being challenged as ‘invalid’ if, for example, it becomes so successful that it becomes the household name for a type of product, and thus not a distinctive mark.

‘Hoover’ is seen by many as a classic example of this. Many people use the word loosely as a verb to describe the action of vacuum cleaning, and generically as a noun to denote different types of vacuum cleaners.

Hoover still maintains its trade mark registration. It still gives the company rights under UK law especially in relation to other non-vacuum related goods. Accordingly, registered trade marks, however widely used in the language, cannot be simply ignored and rarely lose all their protective power.

One argument not tested in practice is that a trade mark could lose its distinctiveness through gaining customary usage in current language and then fall out of customary use years later, thereby acquiring distinctiveness for the mark again.

In certain circumstances a registered trade mark can be invalidated if someone else extensively used the name before the registration application and so has earlier rights in the name. A trade mark can also be revoked for non use after a period of 5 years. 

Of course, any ‘invalidity’ challenge is likely to be strongly resisted, and may lead to lengthy and expensive litigation. Bizarrely, if you are successfully sued for trade mark infringement and pay damages to the owner of a trade mark which is subsequently invalidated by someone else you have no right to your damages back because the trade mark was deemed to be valid at the time of the infringement action.

All UK trade mark law is founded on the distinctiveness of one mark from another which indicates the source of the goods or services. Therefore there is a tension between creating a hugely successful brand and struggling to maintain a wide monopoly in circumstances where a trade mark name has become so widely used that it has lost its ability to distinguish a particular manufacturer’s product.

It is important to remember that trade mark law is still relatively young and the boundaries are constantly changing so that established brands and newcomers to the market have plenty of room for legal argument about the use and validity of registered trade marks.

Published 01/11/2007. The author of this article is Matthew Gingell