AA Insurance Ltd v AMI Insurance Ltd
(CIV 2010-485-2427, 2nd November 2011)
AMI applied to register a large number of marks for insurance services all beginning with MY, including MY INSURANCE, MY CAR INSURANCE and MY HOUSE INSURANCE. Several insurance firms collectively opposed the applications, but the Assistant Commissioner dismissed the opposition. Those other firms (collectively as appellants) successfully appealed that decision on the basis of sections 18(1)(b)-(d) of the Trade Marks Act 2002, which specify the absolute grounds for the types of marks that must not be registered.
The Judge noted that numerous other MY marks had proceeded to registration, although not for insurance, and had yet to have their registrability tested. Regarding AMI’s MY marks, the judge noted that they would be unregistrable under section 18 if: they cannot distinguish AMI’s products from those of other insurers; are not distinctive in themselves; are purely descriptive of those products; or are marks that are, in their entirety, already used in the language or practices of the insurance trade.
The respondent’s consider the MY marks to be distinctive since the use of MY by a trader is unusual and awkward. However, the Judge considered that something more than this is required to denote the origin of a product. Firstly, AMI’s competitors are likely, in the ordinary course of their business and without any improper motive, to want to use my-oriented phrases in connection with their own products. Secondly, the use of a possessive adjective to qualify a purely descriptive noun is insufficiently distinctive. The Judge was not convinced that a reasonably circumspect customer could always distinguish between allowable uses of my-oriented phrases by the appellants and AMI’s branding. In particular, the appellants have a legitimate interest in using those phrases in the voice of the consumer, which would be prevented if registration were allowed.
The Judge also considered that none of the cited third party registrations of MY marks were equivalent to those of AMI on account of not being purely descriptive of the products in question. Hence, not all MY marks will be unacceptable and the merits of each case needs to be assessed. In this regard, while expressing reservations, the Judge remitted two of the marks, MY freeB and MY MULTI QUOTE, for rehearing by the Assistant Commissioner.