UK: Court Upholds Opposition To Alpha Numeric Trade Mark

Alpha-numeric telephone numbers were re-introduced in the UK in the early 1990's. Each number on a telephone keypad is allocated three letters, for example, number 2 on the keypad corresponds to the letters A, B, C. It is therefore possible that some combinations of telephone numbers can spell out words. Several companies realised that they could make their telephone numbers more memorable by using the widely available prefix of 0800 (which meant it was a free telephone call) followed by certain words.

This case concerned the alpha numeric number 0800 FLOWERS, which corresponds to the telephone number 0800 356 9377.

A US company, 1-800 Flowers Inc, had applied to register "800-FLOWERS" as a service mark in February 1993 for use in relation to the transfer of orders for flowers, the use of 800 and FLOWERS when used separately, being disclaimed. The applicant had been using the mark "800-FLOWERS" and the telephone number 1-800 356 9377 in the US for some time and had decided to expand its business to the UK and Ireland. It was well known that a telephone number beginning with 1-800 was the freephone number in the US and that the UK used 0800.

However, in late 1993 the opponent, Phonenames Ltd, obtained the use of the telephone number 0800 356 9377. It opposed the application for the "800 FLOWERS" service mark. The Court of Appeal (in 800 Flowers Trade Mark Application - unreported, 17 May 2001) upheld the opposition on the grounds that:

1. The mark was not inherently distinctive. It was common knowledge in the UK that freephone numbers began with 0800 and the mark "800-FLOWERS" had clearly been adopted because of its telephonic significance. Although the number 800 had been used instead of 0800, the UK public would still understand that it was meant to indicate a freephone number. The mark was no more than an encoded telephone number and so did not have the inherent capacity to distinguish under section 10 of the 1938 Act.
2. The mark was likely to cause confusion. Importantly, the applicant had never been able to obtain the telephone number 0800 356 9377. If a customer phoned 0800 FLOWERS, it would in fact be phoning the opponent and this would clearly cause confusion contrary to the provisions of s 11 of the 1938 Act.
3. On the facts of the case, the applicants had been unable to establish even minimal use of the mark in the UK as required under ss 17 and 68 of the 1938 Act. Moreover the applicant's intention to use the mark in the UK in the future was plainly conditional on its acquiring the corresponding telephone number in the United Kingdom, which it had been unable to do.