Expanding the family – Numatic International successfully registers JOHN and LEWIS as trade marks.

On 10 January 2014 Numatic International Ltd ('Numatic'), manufacturer of the iconic 'Henry' vacuum cleaner, was granted the trade marks "JOHN" and "LEWIS" by the UK Intellectual Property Office ('IPO').

Founded in Chard, Numatic has continued to expand its empire over the decades and now employs over 700 people at its South-West site, with subsidiary companies across the globe. Its long standing success was recently recognised when Chris Duncan, the Managing Director of Numatic, received an MBE for services to international business and the EEF/Aldermore Bank Manufacturing Champion award for the South West. Mr Duncan commented that these prestigious awards acted to 'acknowledge the efforts of the whole of Numatic International here in Chard'.

The company has also reaffirmed its commitment to British manufacturing - intending to move production from China back to Britain. This was commended by the Secretary of State for Business, Vince Cable, when he visited Numatic's headquarters last December.

Since the original domestic "Henry" vacuum cleaner was born in 1981, many more named products (Hetty, Harry, James, Charles and George) have been added to Numatic's homecare range and the recent approval of "JOHN" and "LEWIS" as trade marks gives consumers a tantalising hint of the products to expect to join the Numatic family.

Under section 1(1) of the Trade Marks Act 1994 ('TMA'), a "trade mark" is defined as 'any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings'.

For a trade mark to be acceptable it must be "distinctive" (s3(1)(b) TMA) and capable of graphic representation. To be distinctive the trade mark must:

be different from other marks used to describe similar goods or services;

not simply describe the type of good or service; and

be recognised as identifying the good or service.

 As "John" and "Lewis" are commonly used, generic forenames, it is easy to suppose that such names would not be capable of registration as a trade mark. However, the list of names currently held by Numatic demonstrates it certainly is possible and the short time period between the examination and the speed with which this application was granted suggests this was a straightforward case.  

The reason for Numatic's success is that the requirement for 'distinctiveness' relates to the associated marketplace. Chapter 3 of the Manual of trade marks practice sets out that a forename will normally be accepted as 'distinctive', unless the goods or services commonly feature names. In the cleaning product market, forenames are capable of registration as a trade mark as they are not associated with and do not describe the particular goods or services; until Numatic introduced their named products that is.

Numatic clearly demonstrates the power of effective branding and trade marking, as names such as "Henry" and "Hetty" are now iconic and synonymous with the vacuum cleaner market. Due to this, it is now unlikely that a competitor of Numatic would be able to register a forename as a trade mark for a product in this sector.

Numatic has been able to further protect its brand identity in the courts. In 2010, Numatic was successful in a passing off claim, against a competitor based on product appearance. The High Court found that by marketing a product with a similar tub-type construction and domed black lid, the competitor was likely to deceive and confuse customers, looking to purchase a genuine "Henry" vacuum cleaner. As a result of this case, it is clear that Numatic also has protectable rights in a combination of features of its products and has been able to use these successfully to prevent lookalike products entering the market and damaging Numatic's brand.

This examples help to highlight why businesses should carefully consider their trade mark registration strategy. The more distinctive the trade mark is, the stronger the protection afforded and the greater the likelihood of recognition by consumers. It should be recognised that registered trade marks are potentially only one weapon in a broader arsenal of intellectual property rights.

The carefully crafted portfolio of rights enjoyed by Numatic has certainly helped it to succeed in the 'battle of the brands' in its market sector.

This article contains summaries of complex issues and should not be relied upon in relation to specific matters.  We recommend that you take legal advice on particular matters and we will be happy to assist.  If you would like further information on the topics discussed above, please contact David Thompson, an Associate in our Technology, Media & Communications team, via telephone at 01392 687 656 or via email david.thompson@michelmores.com.