Commonly, publishers of specialist and enthusiast-led magazines use descriptive titles so that the consumer knows exactly what they’re purchasing. Key Publishing’s titles include Modern Railways, Classic Bus, Buses, Bus & Coach Preservation and Classic Military Vehicle.
Since the purpose of a trade mark is to distinguish the goods or services of one business from those of another operating in the same commercial space, applications to register descriptive marks will generally be refused.
This poses a particular dilemma for magazine publishers — they have a choice between selecting a distinctive title which doesn’t describe the content (such as Kerrang or Heat), or a title which directly describes the subject-matter (in this case, like Classic Bus). The obvious drawback of using a distinctive and/or non-descriptive title is that a publisher must work harder and incur increased promotional costs to educate customers about the subject-matter of its magazines.
Key Publishing therefore faced a real challenge if it wanted to push ahead with securing trade mark registrations for its descriptive magazine titles.
Magazine titles which are directly descriptive of the contents are prima facie unregistrable as trade marks. However, as with every rule, there are exceptions. It’s possible to secure trade mark registrations for descriptive magazine titles, providing it can be demonstrated that the title has become well-known through use and enjoys goodwill and a reputation.
We worked closely with Key Publishing to secure trade mark registrations for its descriptive titles by collating evidence of their use. This included an outline of the history of the titles (illustrated by copies of back issues wherever possible), together with sales information and an indication of advertising undertaken.
This evidence was submitted to the UKIPO’s (UK Intellectual Property Office) Trade Mark Examiners to demonstrate that although at first sight the titles appear to be descriptive, they have in fact become distinctive through use, and are now strongly affiliated with our client in the specialist market in which it operates. In other words, the titles were capable of performing as trade marks to distinguish the goods of our client from the goods of other businesses operating in the same commercial space — and as such, could be registered.
Key Publishing now has a number of trade mark registrations for its descriptive magazine titles which, at first sight, seemed unregistrable. It’s now well-positioned to prevent any unauthorised use of its titles by other publishers, helping to maintain its carefully cultivated brand identity.