SNAP SHOT: descriptiveness, cited mark and evidence

SNAP SHOT is a normal English phrase for a photograph. For photo-editing software, the examiner will say it designates the kind or purpose of the goods and is non-distinctive under s.3(1)(b) and (c). The counter-argument is that SNAP SHOT is allusive rather than directly descriptive of software; it does not describe editing functions. But the phrase is commonly used in photography, so the argument is weak. The proviso to s.3(1) allows acquired distinctiveness to overcome (b), (c) and (d). Evidence: £80,000 UK sales in 2024, 12,000 downloads since 2021 and press coverage. That is modest for a descriptive phrase; the relevant public is UK consumers and businesses buying photo software. To succeed, Snapwell needs evidence that a substantial proportion recognised SNAP SHOT as its mark by 10 December 2024: advertising spend, market share, survey evidence, user declarations, social media and unsolicited press. Without more, the evidence is unlikely to overcome the objection. A composite logo may be registrable, but it does not cure the word element.

The earlier UK 2045678 is an identical mark for 'computer software', which overlaps the application's goods. Under s.5(2)(b), identity of mark and goods makes likelihood of confusion likely; the examiner will maintain the citation. The fact that Snap Media's website is stale and its company active does not prove non-use. If Snap Media has not used the mark for a continuous five-year period, Snapwell can apply to revoke the earlier registration for non-use. That is a separate UK IPO action; Snapwell should file it now and ask the examiner to suspend the application pending the outcome. Alternatively, seek consent or a coexistence agreement from Snap Media. In any later opposition, Snapwell can request proof of use for the five years ending 10 December 2024; if Snap Media cannot show genuine use for computer software, the opposition fails. But examination cannot be won by argument alone while the citation stands.

Response by 2 May 2025: (1) file a concise response disputing descriptiveness, but do not overclaim; (2) file evidence of acquired distinctiveness with a witness statement from the MD and examples of use, downloads, sales, press and advertising; (3) simultaneously file a revocation application against UK 2045678 for non-use and request suspension of the application; (4) write to Snap Media seeking consent or coexistence, with a narrow specification and no challenge; (5) if the absolute objection is maintained, consider a divisional application for a distinctive logo, or appeal after refusal. Do not ignore the deadline. If evidence is weak, the commercial fallback is to rebrand to a distinctive composite and abandon the word mark.