When is a word a descriptive term and when is it a valid trade mark? Whose opinion should be taken into account in deciding? A recent trade mark infringement case has considered these questions and the answers are surprising.

Premier Luggage ("Premier") imports and wholesales luggage etc under the trade mark PREMIER which features on bag logos, swing tags etc. Premier Co (UK) Limited ("PCL") also sold luggage branded "PREMIER". Premier became aware of their activities at the 1997 International Trade Fair in Birmingham and successfully sued for trade mark infringement.

This decision could be important to brand owners because PREMIER should have been declared invalid if the Judge had applied the stringent test laid down in the influential British Sugar case. However, he decided to follow two recent cases from the ECJ (Windsurfing and Lloyd Schuhfabrik) and so the trade mark survived.

The Arguments

PCL argued that "PREMIER" is an ordinary English word, devoid of distinctive character, and that Premier only used it in a descriptive sense and not to identify the origin of its products. Although the Judge did not accept this, he questioned the "entitlement of one trader to use an ordinary word ... and adopt it as his exclusive brand name to the exclusion of all other traders" and commented that generally the law is reluctant to allow ordinary words to be used in this way.

PCL also argued that the PREMIER mark was invalidly registered because PREMIER is an ordinary word, meaning "leading" or "principal" and is incapable of acting as a badge of origin. The Judge rejected this, stating that PREMIER is not incapable of distinguishing goods - it is not, for instance, like trying to use "SOAP" as a trade mark for soap. It therefore survived this attack.

PCL next claimed PREMIER is not distinctive and merely indicates the quality of goods. The Judge referred to British Sugar and said PCL were right unless Premier could show that PREMIER had acquired distinctiveness as a trade mark through use.

In relation to this last point, PCL urged the Judge to stick with British Sugar, claiming that "a substantial majority of persons" would not recognise "PREMIER" as a trade mark. Premier, however, argued that the Judge had to follow the ECJ and consider whether the relevant class of persons would know PREMIER was a trade mark.

The Judge agreed that this was the right test and so the next step was to identify what the "relevant class" was. PCL argued that it was everyone who came into contact with luggage goods, namely wholesalers, retailers and the public. Premier argued that they had no direct dealings with the public and so only wholesalers and retailers were relevant.

The Judge agreed with PCL that the relevant class included ultimate customers. This was a problem for Premier because, although it had established distinctiveness and a reputation for PREMIER within the trade, it did not advertise to the public. Nevertheless, its turnover figures showed that it had sold "vast quantities" of luggage to the public across the UK since 1985. The Judge thought there could be no doubt that the average consumer would appreciate that the PREMIER mark displayed on Premier luggage (often in several places) is not used in a descriptive sense but is a distinctive branding of the range of luggage. The public will often purchase the same brand in order to make up a matching set or to replace damaged luggage. The Judge found that Premier therefore had a reputation for reliability and good value among the public. He also held, based on the evidence, that Premier had established that the PREMIER mark and brand were distinctive and had a reputation throughout the UK in the luggage retail and wholesale trade.

The Judge therefore concluded that the PREMIER trade mark was valid and added that it had been infringed by PCL?s salesmen using the "PREMIER" name and also by use of the name "PREMIER" on luggage swing tags (which also constituted passing off).

Conclusion

The Premier Luggage decision looks like good news for brand owners with marks which are, on the face of it, ordinary descriptive or laudatory terms.

As the Judge remarked, if he had applied the stringent test laid down in British Sugar, the PREMIER mark would have been found invalid. However, adopting the ECJ's more recent test, the PREMIER mark was found to be properly registered.

This is, however, unlikely to be the last word on the matter and brand owners should continue to exercise caution before seeking to enforce weak trade marks. An infringement action is almost certain to put in issue the validity of the mark and other judges, at first instance or on appeal, may not adopt the friendly approach towards same brand owner.

First published in Brand Strategy in December 2000.