Bird & Bird Defends ESB Trademark

30 January 2002

Fuller Smith & Turner hold on to distinctive brand

International law firm Bird & Bird, has just won a landmark court ruling for Fuller Smith in defence of its major brand name, the 'ESB' trade mark.

The case came to court after David West, who operates the 'Eastenders' warehouse, an off-license business outside Calais, applied to revoke the Fullers 'ESB' trade mark on the basis it meant Extra Special Bitter, and was therefore a generic term for bitter. These claims were rejected by Deputy Judge Mr Christopher Floyd QC on the basis that 'ESB' is a distinctive mark for bitter associated with Fuller Smith & Turner PLC.

The ruling, which was handed down in court on Friday, is a first for the UK Courts. It is the first time the UK High Court has considered the ground breaking European Court ruling on the level of distinctiveness required to register trade marks in Procter & Gamble v OHIM (Baby-Dry) (September 2001).

Peter Brownlow, the Bird & Bird partner acting for Fullers said:

"Fullers are extremely pleased that the Judge confirmed their view that 'ESB' is a distinctive brand which has acquired a degree of national renown. The case will be of considerable interest to Trade Mark practitioners in the UK as it sets out a series of principles giving guidance on how the assessment of the degree of distinctiveness required for a trade mark to be registered should be approached in future. The case also reviews how this will be a departure from recent approaches adopted by UK Courts".

The Deputy Judge however, limited the goods covered by the 'ESB' registration to 'bitter' on the basis that lager and bitter were commercially quite different types of beer and that beer drinkers in the main either drink lager or bitter, not both. 'ESB' had only been used in relation to bitter. The Court granted Fullers leave to appeal on this issue as well as granting David West leave to appeal his decision on distinctiveness.

Roger Wyand QC and George Hayman of Counsel and Bird & Bird represented Fuller Smith & Turner plc.

For further details on the case, please contact Peter Brownlow on +44 (0) 20 7415 6000. A full copy on the judgement will be available on

For any more information on Bird & Bird please contact Larry Cattle, Director of Marketing, on +44 (0) 20 7415 6156.