Registrar finds LUXURY CHANNEL mark unregistrable

The registrar of trademarks has refused The Luxury Channel Limited's application to register the mark LUXURY CHANNEL in series form for:

• “Advertising and sales promotion and marketing by means of television, cable, satellite, catalogues, mail, computers, the Internet and/or global computer networks; provision of information to customers, television viewers and/or Internet users and/or users of the Internet and/or of global computer networks of advice and assistance in the selection of goods and services” in Class 35.
• “Broadcasting services via television, satellite, radio, wireless and/or a global computer network, or by digital distribution technologies including Internet protocol television (IPTV) and podcasting; digital transmission services; broadcasting of a television channel; communication services relating to electronic shopping and auctions; provision of a television shopping channel; provision of a television channel” in Class 36.
• "Entertainment services relating to television, or a global computer network; production, development, composition, presentation, syndication, distribution, networking and provision of entertainment including television programmes via television, satellite, radio, wireless and/or a global computer network, or by digital distribution technologies including Internet protocol television (IPTV) and podcasting” in Class 4.

The refusal was based on the fact that the mark consisted exclusively of a sign which designates the characteristics of the services applied for and was devoid of any distinctive character.

The marks at issue are shown below.

The dominant features of the mark are the words "the Luxury Channel". The word “luxury” means "something expensive which is pleasant to have but is not necessary", while a “channel” is "a band of frequencies used in radio and television transmission; a medium of communication or the passage of information”. When the mark is used for the marketing and advertising services applied for in Class 35, the message conveyed is that the services promote luxury goods and services over different communication channels; in relation to the broadcasting and transmission services applied for in Class 38, the message is that the subject matter of the broadcast concerns luxury goods and services; and with respect to the entertainment services applied for in Class 41, the mark denotes that the services are programmes broadcast on television or other media about luxury goods and services.

The registrar rejected the applicant’s argument that the overall representations of the marks (ie, the presentation of the words in the mark in three rows, the two horizontal lines, the different backgrounds and the word “luxury” in gold colour in Mark A) were of paramount importance, with the different elements of the marks giving the overall impression. The horizontal lines in the marks were not considered unusual, but only decorative in nature and, as the relevant consumers pay no attention to the details of each element in the marks, including the differing backgrounds, these elements have little effect on the overall impression of the subject marks. The gold colour in Mark A was not considered to be remarkable or unusual.

The separate disclaimer of the words “the luxury” and “channel” entered by the applicant at the time of the hearing did not help as the phrase “the Luxury channelTHE LUXURY CHANNEL” as a whole transmits a message about the characteristics of the services applied for – the separate disclaimer did not alter the primary signification of the term.

In considering the distinctiveness of the marks, the registrar applied the principles laid out in British Sugar Plc v James Robertson and Sons Ltd ([1996] RPC 281)) and Nestle SA’s Trademark Application (Have a Break) ([2004] FSR 2). It held that the overall impression of the marks had little impact and that the idea communicated by the marks as a whole was merely a description of the subject matter of the advertising, broadcasting or entertainment services provided. Therefore, without being informed of their trademark significance, the marks will be regarded by the relevant consumers as indicators of trade source.