ATOC - Trade Mark Applications

[SickyNicky]

ATOC (aka Train Information Services Limited) has applied to register the following words as a trade marks:-

• National Rail Enquiries (UK00003009657)
• 16 – 25 Railcard (UK00003009729)
• Family & Friends Railcard (UK00003009731)
• Senior Railcard (UK00003009732)
• Disabled Persons Railcard (UK00003009734)
• Two Together Railcard (UK00003009735)
• Train Tracker (UK00003009736)

This will likely have an effect across the industry, on third party systems, on hobby systems and even on this forum. Maybe ATOC may be able to serve take down notices where these "trade marks" (words) are used without consent. Perhaps one of our legally trained members may be able to expand on what impact granting these would have?

These have not yet been published in the Trade Mark Journal. When they are I shall post again to let you know. At that point there is a 30 day period to lodge objections.

Again, maybe someone more knowledgeable than I could suggest suitable reasons for objecting. Ones that come to mind are:

• they are pretty generic words in everyday use
• the words were used before privatisation and therefore don't belong to ATOC but to the taxpayer?

 

[Tim R-T-C]

Unlikely to have any effect on ticket vendors. All sales sites sell brand name goods, it is how they work. Amazon for example can sell an Apple iPod and we can talk about it.

Just a legal thing probably to avoid any of the TOCs (or TfL) or rival public transport providers bringing out their own variant.

 

[dcsprior]

Train Tracker seems like a bit of a stretch; it's surely a generic term?

 

[Oliver]

Train Tracker seems like a bit of a stretch; it's surely a generic term?

train tracker may be a generic term, Train Tracker may not be, if it's the name of something. There's no problem with using a trade marked name in its correct context, e.g "I bought a Senior Railcard". Trade Marking prevents misuse of the trade marked words.

 

[dcsprior]

train tracker may be a generic term, Train Tracker may not be, if it's the name of something. There's no problem with using a trade marked name in its correct context, e.g "I bought a Senior Railcard". Trade Marking prevents misuse of the trade marked words.

But it would stop someone developing a website or Android/iOS app called Train Tracker, which seems wrong if it is current usage is not limited to ATOC's product: when I search the apps section of Google Play for 'Train Tracker' there at NRE one is down in 5th position in the results.

 

[SickyNicky]

But it would stop someone developing a website or Android/iOS app called Train Tracker

Or a feature called "Train Tracker" on an existing web site.

 

[DaveNewcastle]

It is not possible to predict the impact of these registrations, because Registration of a Trade Mark only gives the registered owner certain rights in restricting the use of the term; it does not create any automatic prohibition on the use. Nor does it automatically undermine anyone else's use of those words unless there is an evidential attempt to take advantage of, or to undermine the reputation of, the owner of the name. And we do not know what the applicant's intentions are.

If they chose to do so, they could restrict the use of the registered names. I think that restriction is likely to create confusion in public discussion of the products and services, and is likely to undermine successful promotion in the market place.

If they chose to do so, they could require the use of the name in print to be accompanied by an acknowledgement. I think that this would be clumsy and equally likely to inhibit popular acceptance of the products and services in the market place.

Or, if they chose to do so, they could allow the names to be used freely as at present, but only if and when a serious breach of commercial protocol was encountered (including counterfeit and re-selling), then there would be the additional protection in law over the provisions already available. Similarly, if there was any serious reputational damage in the media (including an internet forum), then the rights of control over use of the registered mark could be invoked, and again, those would probably be in addition to other protection available in law, though we can imagine circumstances in which it might be more effective to pursue a violation of Trade Mark use than, say, corporate defamation (where evidence of an unbroken chain of causes of 'serious harm' must be shown).

I can understand that proponents of unmoderated comment might be concerned at this move, though I consider that it is appropriate commercial advice to propose registration of the the names of the specific products (which come with particular contracts, conditions and benefits) and which are distinct from any other more general use of those same words. 'Train tracker' is the only proposed name which I would guess might fail registration if challenged, and I doubt that the challenge would be assured of success, because it is not, in my opinion, a term that is found in widespread public use.

 

[TEW]

Lots of these are very generic but ATOC has been using them for a prolonged period now so they may not have any issues using them. An otherwise generic mark can gain distictivness through use.

 

[LexyBoy]

Train Tracker seems like a bit of a stretch; it's surely a generic term?

It does, as does "National Rail Enquiries" by my reckoning. I suppose the latter is acceptable because "National Rail" is the name of an organisation, though it is a very generic name which is widely used to refer to the rail network rather than the company.

Trade marks are not registrable if they:

* describe your goods or services or any characteristics of them

 

[bangor-toad]

I'd always recommend that a business considers protecting the various names of products & services it offers through Trade Marks. It's not expensive and it gives the owner some additional degrees of protection as laid out by DaveNewcastle

There's also one additional reason to take out the registration: it stops someone else trying to do so. Even if such an application is without merit and can be defeated it can just cause huge headaches and cost far too much to manage. It's almost certainly cheaper to just pay the registration fees and then not worry about draconian enforcement of the rights than get into a legal challenge situation.

As for ATOC getting the TradeMarks they have, personally it seems like a sensible and straightforward way to continue with business as usual for the whole industry without any upstart coming in and issuing stupid challenges.

Cheers,
Mr Toad

 

[DarloRich]

Perhaps DaveNewcastle can clarify but i thought a mere word could not be registered as a trademark but rather the stylised format of the presentation of the word CAN be registered

 

[TEW]

Quoting from s1(1) of the Trade Marks Act 1994: 'A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.'

Words on their own are fine.
--- old post above --- --- new post below ---

It does, as does "National Rail Enquiries" by my reckoning. I suppose the latter is acceptable because "National Rail" is the name of an organisation, though it is a very generic name which is widely used to refer to the rail network rather than the company.

Generally it is true that generic names are not valid trade marks, as per s3(1)(c) of the Trade Marks Act 1994:
You may not register trade marks 'which are devoid of any distinctive character'.
However a trade mark may acquire distinctive character as a result of the use made of it. (s3 TMA 1994)

So 'National Rail Enquiries' is a fairly generic term, it is not particularly distinctive. It just describes a place where you could find information regarding train travel. However the way ATOC have used it in this country means it has probably acquired distinctive character, people recognise it as the definitive source of rail information in this country.

 

[dosxuk]

I suspect one of the reasons for doing this will be to stop the numerous non-official mobile apps using the official names and logos. It's relatively simple to get apps chucked out of the major appstores if you can prove they are infringing one of your trademarks.

 

[DaveNewcastle]

Perhaps DaveNewcastle can clarify but i thought a mere word could not be registered as a trademark but rather the stylised format of the presentation of the word CAN be registered

A Trademark may be registered as a single word (e.g. the person name 'Hoover' or the abstract noun 'Sunlight' and the railway brand 'Virgin'). The mark may be the name alone or in a particular representation, then crucial factor being that it is distincive. As the UK's Intellectual Property Office explains: "It can be for example words, logos or a combination of both.".

It is worth bearing in mind that a trademark can be said to exist even if it is not registered, or during a period before it is registered; this is particularly true of those brands which enjoy a wide acceptance in the market place. A recognised mark which is registered after a competitor had begun to trade on the reputation of the recognised mark can still be enforced as a breach, (as well as the Common Law offence of 'passing off' which would apply with or without a registered mark).

 

[EM2]

A Trademark may be registered as a single word (e.g. the person name 'Hoover' or the abstract noun 'Sunlight' and the railway brand 'Virgin'). The mark may be the name alone or in a particular representation, then crucial factor being that it is distincive. As the UK's Intellectual Property Office explains: "It can be for example words, logos or a combination of both.".

As an illustration, I used to work in the department that produced advertisements in Yellow Pages directories. This was in the days before mobile phones became widespread, so many small businesses would advertise that they had an answering machine for out-of-hours enquiries.
The term 'answerphone' had become a generic term for these devices, with some variations in spelling, such as 'answerfone', 'ansaphone' and 'ansafone', and it was this last variation which was a Trade Mark. The representative that signed up the customer's order had to verify that if they wished to use 'ansafone' in their advertisment, that the device actually was an Ansafone model produced by the company that held the Trade Mark (which was BT, iirc).