SAKURA SAKURA! – who is the average consumer?

Decision of the Appointed Person (Professor Ruth Annand) 20th March 2019 See: Decision The issue raised in this appeal was the distinctiveness of a mark consisting of a repetition of a word descriptive of the products claimed in the application. The mark was SAKURA SAKURA! and the products teas and other drinks and foods in class 30. The word “sakura” means one of several species of flowering cherry trees as well as being the Japanese word for cherry blossom. Although the word derives from Japanese, it is listed in several English dictionaries. In the first instance proceedings, the Opponent, TWG Tea, brought evidence that “sakura” was used descriptively by a number of UK based third-party tea suppliers to mean tea containing or flavoured with cherry blossom and that this had been the position in 2013 when the application in question had been filed. TWG Tea argued that the word “sakura” was therefore descriptive, generic and non-distinctive for cherry blossom teas and the mere repetition of the word, whether or not followed by an exclamation mark, was no better. In support of its case, TWG Tea cited the decision of the EU Board of Appeals refusing, ex parte, an EU application for the mark TIKKA TIKKA in respect of foods. The Applicant, Mariage Freres, argued that the teas and other goods in its application are general consumer products, that the word “sakura”, while it might appear in English dictionaries, would not be understood by the “average consumer” (who is only “reasonably” knowledgeable), that “sakura” is therefore distinctive to the average consumer, and even if it were not, the repetition and the “!” were sufficient to give the mark as a whole a distinctive character. Following a hearing, the tribunal at first instance accepted that “sakura” was descriptive of teas and other infusions but considered that what it termed the “tautology” SAKURA SAKURA! added a “spark” of distinctive character to the mark as a whole. It therefore refused the opposition. In doing so, the Hearing Officer said he was not bound by the decision of the EUIPO in TIKKA TIKKA and sought to distinguish the facts of that case with the finding that the word “tikka” was more likely to be understood by British consumers than the word “sakura”. TWG appealed to the Appointed Person on several grounds including that while the Hearing Officer had been right to find “sakura” descriptive, he had failed properly to construe the notion of descriptiveness and non-distinctiveness, and that his grounds for distinguishing the facts of TIKKA TIKKA were unsound. The Appointed Person (Professor Ruth Annand), while recognizing that an appeal will not generally succeed unless it can be shown that the first instance tribunal made a material error of principle, accepted TWG Tea’s position in relation to teas and infusions, and to that extent, she allowed the appeal. Professor Annand agreed with TWG that, having accepted that “sakura” was descriptive, the Hearing Officer could not properly have found that the mere repetition of this descriptive word gave rise to a distinctive whole, whether or not that included the exclamation mark. As she said at [46] of her decision: I believe therefore that in view of his findings on the evidence, the Hearing Officer should have held that since SAKURA SAKURA! would be perceived by the average consumer in relation to tea and tea infusions as emphasising the word “sakura” in a non-origin specific manner (i.e., only providing information as to their nature and not as an indication of origin) the mark [SAKURA SAKRUA!] was objectionable for those products under Section 3(1)(b) absent proof of acquired distinctiveness through use. Professor Annand’s finding is consistent with the case law as to the concept of the “average consumer”. The average consumer is not, as the Applicant argued, a single notional person but, rather, encompasses a range of such consumers. That range embodies a corresponding range of experiences, tastes and perceptions including, in this case, consumers familiar with specialist teas and who are therefore likely to know and understand the term “sakura”. As Professor Annand pointed out, the so called “single meaning rule” for the average consumer had been rejected by the Court of Appeal in Interflora Inc v. Marks and Spencer plc [2014] Civ 1403, paragraphs 116 – 130. She therefore rejected the Respondent’s contention that the Hearing Officer had been wrong to find the word Sakura descriptive and non-distinctive for teas. (Ian Bartlett of Beck Greener appeared for TWG Tea in the proceedings at first instance and on appeal).