Pet ID Microchips Limited

How to protect a brand name that lacks distinctiveness

We’ve worked with Pet ID Microchips Limited for over a decade. Pet ID has provided market-leading microchips and insurance for pets since 1999. Over the years, we’ve secured a number of trade mark registrations for Pet ID as its logo has evolved and business expanded. Eventually, we determined that it was better to try and protect the words ‘PET ID’ in their own right, despite their non-distinctive nature.

Case Study

Case Type

Word mark application

Action

Acquired distinctiveness evidence

Outcome

Registration secured

Alison Cole

By Alison Cole

Senior Trade Mark Attorney

Issue:

Pet ID had used a variety of logos in respect of microchips and pet insurance services since it began trading. Every logo has included the words PET ID and, verbally, this is how the client is referred to. Due to the non-distinctive nature of the words in respect of the goods and services provided, protection for the words alone had previously been likely to attract objection from the UK Intellectual Property Office (UKIPO). However, protecting words in block capitals is the broadest protection that can be obtained as it covers use in upper and lower case, most colours and standard fonts. Not only would this mean that Pet ID wouldn’t need to re-file each time it tweaked its logo, it’s also a stronger right for stopping infringements.

There were additional complications with the chain of title, as the business had been transferred a between owners many times and the paper trail was unclear. This meant that some of the earlier logo registrations may have been difficult to enforce or rely on. Furthermore, there was concern that fake microchips could be dangerous or fatal to household pets, which meant that the client would find it hard to take action if a different logo was used by infringers. The rise in the significance of any online use of the mark also made it more vital to protect the words that form part of Pet ID’s domain name and social media handles. Challenges for infringing use that are brought directly to the likes of Instagram, Facebook and eBay tend to be resolved more readily in a trade mark proprietor’s favour if they have a word mark registration. Relying on a logo mark could allow for a dispute as to the extent of the rights.

Action:

We advised the client that, due to the words’ widespread and long history of use, it might be possible to show the UKIPO that they had achieved distinctiveness.

Pet ID was able to provide a significant amount of evidence, as well as supporting information from members of the trade/veterinary field such as the British Veterinary Nursing Association, Vetpol and 5m Publishing. Significantly, 3.2 million microchips bearing the trade mark PET ID have been manufactured since 1999 and ICAR (the International Committee for Animal Recording) has granted Pet ID a code to uniquely identify “PET ID” microchips. This means that the words cannot be used by anyone else worldwide, granting the applicant a monopoly for the goods in question.

We were able to show that Pet ID is responsible for to 15% of live microchip registrations in the UK and that it provides insurance cover to over 500,000 policy holders under the brand.

Outcome:

Initially, the UKIPO Examiner accepted the evidence in respect of the insurance services, but not the microchips. We requested that this decision be reconsidered, highlighting the most poignant parts of the evidence. After we requested a Hearing to take the matter to a senior level, the Examiner reconsidered and granted the application.

Pet ID now has a valid and enforceable trade mark registration for the words PET ID in respect of its core activities. This means that it can more easily and confidently challenge any unauthorised use of the term, protecting the brand for many years to come.

“I have trusted Alison Cole to look after my brand for many years and alert me to anything that requires action. She understands the importance of my brand and provides practical guidance and solutions for protecting it, explaining things clearly and making sure I understand if there are any limitations. It’s a pleasure dealing with Alison and UDL.” — Managing Director, Pet ID Microchips Limited

Need help protecting your name or logo?

Get in touch with Alison at ajc@udl.co.uk.

020 3904 3365

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