MTV trademark fails registrability test
Viacom International Inc attempted to register the mark MTV in respect of a wide variety of services in Classes 38 and 41. Objections were raised against the registration of the mark in Class 38 (“cable and satellite transmission services") and in Class 41:
Entertainment services other than the production of radio and television programmes in the form of comedy shows, game shows, sports events, TV news shows, reality shows, talk shows, drama, stunt shows and live action shows; production of films and live entertainment features; services relating to live entertainment performances and shows; production of dance shows and video award shows; live musical concerts and music shows; organizing talent contests and music and television award events.
The objections were made on the grounds that the mark was devoid of distinctive character and consisted exclusively of signs which designate the characteristics of services provided. However, the mark was accepted for registration for services including broadcasting of entertainment shows and telecommunications services in Class 38, and entertainment services other than the production of radio and television programmes in Class 41.
The registrar considered that “MTV” was a common abbreviation for music television, and also denoted music videos. Relevant consumers, on seeing the subject mark being applied to such services, would immediately understand that the entertainment services or performances related to music television or music videos.
The registrar’s attention was drawn to the fact that Viacom offers a wide range of programmes including shows, news, films and online games to the public through its website. These programmes are mainly reality shows or dramas which would include music videos only incidentally, if at all. It was therefore argued that the objected-to services were related only to transmission of signals, the subject mark could not be said to be describing their characteristics. Rather, it could at most be said to be allusive or suggestive as to the content of the signals transmitted, but not descriptive of the transmission services per se.
The registrar did not agree and held that the contents of the programmes played a key role in a viewer’s decision of whether to watch a particular show. As the significance of the subject mark would be picked up immediately by the relevant consumer, without any mental endeavour, the message regarding the characteristics of the objected-to services was not merely allusive or suggestive. Further, the subject mark was equally applicable to the services provided by other undertakings. It would not enable the relevant consumers to distinguish Viacom's services from those provided by other undertakings.
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