One of the questions that often comes before the Court is how distinctive a mark has to be in order to be registered as a trade mark. In the recent case of David West (trading as Eastenders) v. Fuller Smith & Turner pIc, the UK High Court laid down guidelines as to how this should be approached. It also reviewed the circumstances in which registrations should be limited either geographically or because a mark had not been used in respect of all of the goods for which it was registered.

To achieve registration under the UK Trade Marks Act, a trade mark cannot:

  • be devoid of any distinctive character;
  • consist exclusively of indications which designate the kind or quality or geographical source of the goods; or
  • consist exclusively of indications which have become customary in the current language or in the practices of the trade.

The purpose of these criteria has commonly been understood to prevent individuals monopolising commonly-used descriptive words, which other traders may legitimately want to use to describe their goods.

There have been decisions by the English Courts that a mark such as AD2000 for beers and alcoholic beverages was not registrable because it clearly referred to the year 2000. EUROLAMB for slaughtered lambs and carcasses was rejected by the Court because it indicated the geographical source of the lamb, and was therefore not sufficiently distinctive of one trader's goods. In addition, the mark TREAT for dessert sauces was revoked by the Court because it was a common laudatory word that other businesses might want to use to describe their products.

The European Court of Justice has not taken such a strict view on distinctiveness. It is the difference between these two approaches that the Deputy Judge was interested with, in David West t/a Eastenders v. Fuller Smith & Turner pIc concerning an application to revoke the registration "E.S.B" for beer.

The Claimant, David West, operated an off-licence business from outside Calais in France. He marketed a pilsner beer known as "ESP" which stands for "Eastenders Strong Pils". The Defendant - Fuller Smith and 'Turner pIc - was a traditional English brewery based in Chiswick who had registered the mark "E.S.B." as of 1988 "E.S.B." had been used on bitter by Fullers since the mid-1970s and had won many awards.

Fullers had successfully opposed the Claimant's applications to register various marks containing "E.S.B." for lager, on the ground that the mark applied for was confusingly similar to Fullers "E.S.B." trade mark. The Claimant had, as a consequence, applied to revoke the registration for "E.S.B.".

The allegation by David West was that "E.S.B." consisted exclusively of indications that designated the kind or quality of beer and become customary in the current language of the trade. He claimed "E.S.B." was a synonym for Extra Special Bitter and that this was recognised in the trade in the UK as a style of beer. He also argued that this had been emphasised by the fact that the Claimant had almost always used the mark in conjunction with "Extra Special Bitter".

In deciding the issue of distinctiveness, the Deputy Judge considered the recent decisions of the European Court in Procter & Gamble v M (Baby-Dry) (September 2001) and Wm Wrigley Co v OHIM "DOUBLEMINT" [2001] R 623. Following the Baby-Dry and DOUBLEMINT decisions, the Judge decided that:

  • The criteria in the UK Trade Marks Act were not designed to exclude from registration those marks which merely possess an indirect descriptive connotation;
  • If some mental activity is necessary in order to identify a reference to the quality or a characteristic of the goods, this will assist in its registrability;
  • If there is uncertainty as to the precise nature of the reference to the quality or character of the goods, this will also assist;
  • He also made it clear that marks, which can only refer directly to the quality or character of the goods, BITTER for beer as an example, must be refused registration.

In applying these guidelines, the Deputy Judge rejected the Claimant's suggestion that "E.S.B." or Extra Special Bitter designated a recognisable style of beer. He held that it was inherently distinctive and not recognised as a generic term.

The Claimant had also tried to limit the ambit of the trade mark registration by claiming that because Fuller's were well known in the South of England, the registration should be limited to that geographical area. This was dismissed by the Deputy Judge on the basis that the Court had no power to make such a limitation. He also held that because of the national awards "E.S.B" had received from such bodies as the Campaign For Real Ale, it was a mark that had achieved national renown.

The Claimant's final attack was to seek to partially revoke the registration for all beers other than bitter. The main basis for this attack was that the mark had not been used in respect of beers other than bitter during the five years preceding the action.

In deciding whether to limit the registration in this way, the Deputy Judge reviewed the recent case law on this subject. The Judge held that commercially bitter and lager are quite different and that the class of articles represented by "beer" has a number of significant sub-sets of which "bitter" is only one. Since the Defendant had only used the mark in relation to bitter, the Judge ruled that non-use of the mark in relation to lager was established and the mark revoked save for bitter.

First published in Brand Strategy in March 2002.