26/06/2025
A recent decision in the UK illustrates the difficulties of claiming exclusive rights in descriptive words.
In a decision dated 4 June 2025 the Hearing Officer, Ms H Harrison, granted a declaration of invalidity against UK Registration No 3673827 DEAD FLAT[1].
Farrow & Ball Holdings Limited (“Farrow & Ball”) applied to register the words DEAD FLAT in Class 2 on 27 July 2021. The mark was registered on 19 November 2021 for “paints; interior and exterior paints; varnishes”.
On 4 November 2022, the Sherwin-Williams Company (“Sherwin-Williams”) filed an application for a declaration of invalidity of the mark for all of the protected goods, under Sections 3 (1) (b), (c) and (d) of the Trade Marks Act 1994.
Sherwin- Williams submitted that the mark DEAD FLAT is devoid of any distinctive character (Section 3 (1) (b) ), that it consists exclusively of an expression that conveys obvious and direct information about the characteristics of the goods (Section 3 (1) (c) ) and that it consists of a generic term that had been used descriptively for years prior to the filing date of the registration ((Section 3 (1) (d) ).
Sherwin-Williams stated that their primary case was under S 3 (1) (c), arguing that the mark consisted solely of descriptive words that convey obvious and direct information about a characteristic of the goods. They filed supporting evidence as well as submissions. The Hearing Officer accepted Farrow & Ball’s claim that a good deal of Sherwin-Williams’ evidence appeared to be from the US (e.g., because of the use of US spellings of words such as “colour”, “mould”, and “lustre”) or was of unclear geographic origin. However, she found that there was also relevant and persuasive evidence from the UK showing clearly descriptive use of the words “dead flat” in relation to products (such as paint) with a finish which is completely lacking in sheen, or very matt.
Farrow & Ball also filed evidence, mostly related to the use they had made of the mark. Rather damagingly to their own case, some of their evidence also included examples where “dead flat” or “flat” appeared to be used as a description of a finish, such as in these explanations of the “dead salmon” paint colour: “Although it sounds a bit morbid, ‘dead’ refers to the dead flat, low shine finish and Salmon is the colour” and “the name refers to the flat or ‘dead’ finish of an aged pink”.
The Hearing Officer stated that the general interest underlying S 3(1)(c) is to ensure that descriptive signs which relate to characteristics of the goods or services concerned are not monopolised by a single trader but remain free for use by all traders offering such goods or services. Registration should be refused/invalidated if at least one of the possible meanings describes a characteristic of the goods or services, even if there are other possible meanings. Upholding the application for invalidity under S 3(1)(c), she commented: “In my view, “DEAD FLAT” is a grammatically correct phrase which will be readily understood as the adjective “flat” qualified by the adverb “dead”. In the context of paints and varnishes, based on the ordinary dictionary meanings of the words, the combination “DEAD FLAT” appears to describe a finish which is completely lacking in sheen, or very matt.”
As the Hearing Officer had found the mark to be descriptive for the goods in question, she also held that the prima facie case under S 3(1)(b) succeeded for the same reasons. The descriptive words could not serve to distinguish Farrow & Ball’s goods from those of other traders.
The Hearing Officer also found that the evidence established that “dead flat” was commonly used to designate paint or varnish with a no-shine finish, so the application for invalidity also succeeded under S 3(1)(d).
It is possible to overcome objections under Sections 3 (1) (b), (c), and (d) if it can be shown that a mark has acquired distinctiveness. Farrow & Ball submitted evidence of quite substantial use over a significant period of time. However, the Hearing Officer found that the relevant public would be likely to construe “dead flat” as a description of the finish, rather than an indication of commercial origin, and commented that the evidence filed did not establish that consumers would perceive “dead flat” as a trade mark.
The fact that Farrow & Ball generally used the words in capital letters as “DEAD FLAT” did not help them, with the Hearing Officer commenting: “For the record, the use of capital letters is, in my judgement, insufficient to indicate to the relevant public that the words “Dead Flat”, or indeed “DEAD FLAT”, are anything other than descriptive, particularly in circumstances where other, equally descriptive terms, are also used with or in capital letters.”
The Hearing Officer held that Farrow & Ball had not established that the mark had acquired distinctive character and found the mark to be invalid for the full specification. The registration was deemed never to have been made and costs were awarded to Sherwin- Williams.
This case demonstrates the difficulty of establishing monopoly rights over signs that are purely descriptive and are commonly used by others in the same area of activity. It also shows that even if a mark of this kind has been accepted for registration, it may still face challenges later on. If you are considering a mark and are unsure about whether or not it is one that you will be able to protect, it is worth obtaining advice from a trade mark attorney before applying to register your mark or launching your product.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
