Tesco has lost a legal battle to register the word ‘Clubcard’ as a trademark.
The Intellectual Property Office ruled Tesco failed to prove Clubcard was exclusively associated with the supermarket. Tesco argued Clubcard could no longer be considered a generic term because consumers now recognised it as only referring to its loyalty scheme.
However, IPO hearing officer Linda Smith said other traders continued to use variants of Clubcard to describe their own schemes.
“I must bear in mind that granting Tesco a monopoly in the words ‘club card’ would prevent others from using such a common term to describe their own loyalty schemes,” she said.
Smith also said Tesco’s case was weakened by the fact its marketing tended to talk about Tesco Clubcard rather than Clubcard.
“In essence the hearing officer held that despite the fact Tesco had used the trademark Clubcard since 1995 in relation to a customer loyalty scheme, the term Clubcard was not exclusively associated with them,” said Lee Curtis, a partner at Harrison Goddard Foote.
The decision will limit Tesco’s ability to prevent others from using the term Clubcard, but Tesco still has strong legal options to stop others from launching copycat loyalty schemes.
“It would seem unlikely there will be a free for all in the use of Clubcard among retailers as a result,” Curtis added. “Tesco has had trademark registrations of marks such as Tesco Clubcard and a representation of the card itself since 1995. They can still rely on their common law trademark rights to the term. Further, this decision may be appealed or Tesco may simply file a new trademark application for the term and submit more and better evidence of the use of the term.”
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