The Intellectual Property Office in Newport has approved the registration of the word CARIAD by a candle maker in addition to the words HIRAETH and WELSH CAKE.
The registration of CARIAD, HIRAETH and WELSH CAKE mean that others, who already use them or wanted to use them in the future, can be stopped from doing so and may face paying compensation for trade mark infringement.
With many candle makers producing candles featuring ‘caried’ or ‘hiraeth’, the impact could be significant to the industry, and raises the question “should the IPO have allowed the registration”? Amgen Law’s Jonty Gordon commented on this issue to BBC News (https://www.bbc.co.uk/news/uk-wales-61973267) and to BBC Radio Cymru and BBC Radio Wales.
The Trade Mark Act 1994 sets out various absolute grounds for the refusal of a trade mark application. These are: marks that are devoid of distinctive character, marks that indicate quality, purpose, value or characteristics (amongst others) of the goods or services or, marks that consist exclusively of words which have become customary in the current language.
The question is, should CARIAD and HIRAETH failed at the first hurdle, as they is devoid of distinctive character? It is worth noting, that this is in the context of candles, and the assessment of character is relative to the appropriate class i.e. a mark may be distinctive for use on pharmaceuticals, but not for clothing.
To Jonty Gordon, it is highly surprising that the IPO permitted these registrations. He said, “IPO have a duty to treat English and Welsh equally, and they often do so. However, they have often said that they would not register the word LOVE for similar goods and so it is a shock that they would allow the registration of CARIAD. It is particulalry difficult for Intellectual Property practitioners when the IPO’s approach is inconsistent especially when there are myriad instances of English translations of the original Welsh being registered but the original Welsh words have been rejected.”
The IPO have repeatedly refused to register variations on LOVE on this precise ground that it is devoid of distinctive character. One such application from Amgen Law was rejected and the IPO said “the mark would be viewed as purely a marketing statement in that the applicant’s goods and services are provided with love, or that it sends love to the recipient”. The IPO went on to say that, “the word LOVE would not be accepted in English… and so it is not accepted in Welsh”. This statement seems at odds with the present scenario.
Jonty Gordon went on to say, “I see the registration of CARIAD as an issue for the IPO and I think it is a similar case with HIRAETH (the Welsh for “longing for home”), as it is a commonly used word, and when applied to souvenirs such as candles, conveys longing for the place they were bought”.
It is a different story for WELSH CAKE as that is clearly distinctive when considered in the context of candles and similar souvenirs.
In conclusion, Jonty Gordon said, “I think the IPO could improve the consitency of its approach to the Welsh language and issue guidance on the use of Welsh words.”
In the present case, it is now possible for the owner of the trade marks for CARIAD, HIRAETH and WELSH CAKES to stop others from using those marks on identical or similar goods and seek damages from any found to have used them without permission.
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Importantly, Amgen Law has provided this Insights article for information only and nothing in it should be constituted as legal advice. However, if you would like to discuss any of these issues further about a legal matter that is affecting you, please get in touch with us directly.