Stitch Editing Limited v TikTok Information Technologies UK Limited

On an appeal from a trade mark opposition decision, descriptiveness must be assessed separately for each service in the specification, unless comparable services can properly be considered together. The court must ask whether the relevant consumer would understand the mark as describing the service as a whole or a relevant part of it. A mark describing a technique used in providing a service is not automatically descriptive of that service. The decision-maker must explain the necessary connection between the mark and each service, including any reliance on characteristics which services may optionally possess. Acquired distinctive character requires an overall assessment of the evidence. The evidence must be considered for the purpose for which it is relied upon, rather than treated as a rigid checklist of factors.

Stitch Editing Limited appealed against a decision of the Hearing Officer dated 24 August 2022, which upheld TikTok Information Technologies UK Limited’s opposition to registration of the word mark STITCH for a range of editing, production and related services in class 41.

The opposition relied on Trade Marks Act 1994, section 3(1)(b), (c) and (d). Stitch also relied on the proviso concerning acquired distinctive character. The central issues were whether the Hearing Officer had properly assessed descriptiveness and customary use for each specified service, and whether she had properly evaluated the evidence of acquired distinctive character.

1. Appeal allowed. The Hearing Officer’s decision under section 3(1)(c) was flawed because it moved from the finding that STITCH could describe the joining of media to the conclusion that it was descriptive of all the specified services. The decision did not explain whether the mark described each service as a whole or a relevant part of it, or whether the average consumer would make that connection.
2. Services must generally be considered separately. They may be considered collectively only where they are sufficiently comparable to be assessed in essentially the same way and for essentially the same reasons. The same principle applies under section 3(1)(c), notwithstanding that the cited authority concerned section 5(2)(b).
3. The analysis may require consideration of whether a service may optionally possess the relevant characteristic or technique. However, the decision-maker must first establish, by reference to the evidence and the perception of the relevant public, how that characteristic relates to each service. It was not enough simply to identify use of STITCH in media editing.
4. The conclusions under section 3(1)(b) and (d) were also unsatisfactory because they depended on the defective global analysis under section 3(1)(c) and failed to explain the position service by service.
5. The assessment of acquired distinctive character was flawed. Although the Hearing Officer was entitled to make an overall assessment, she did not adequately consider evidence such as client emails, press references, stationery, branding and awards for the purpose for which it was relied upon, namely showing a link between the mark and the applicant’s services. The applicant retained the burden of proof.
6. The court declined to make the substantive decision itself. The issues under section 3(1)(b), (c) and (d), together with acquired distinctive character, were remitted to a Hearing Officer for a fresh hearing and determination.

• High Court (Chancery Division): appeal from the Hearing Officer’s determination dated 24 August 2022. Appeal allowed and the matter remitted for a fresh hearing and determination.