In the decision of David West trading as Eastenders v Fuller, Smith & Turner plc dated 31 January 2003, the English Court of Appeal considered and applied the European Court of Justice (ECJ) ruling on “distinctive character” in the BABY-DRY case (Procter & Gamble Co v. OHIM (BABY-DRY), 20 September 2001).
The Court of Appeal acknowledged that the BABY-DRY decision marks a considerable change in trade mark law since the Trade Marks Act 1938. As Lady Justice Arden remarked in her judgment,
“To a much greater degree, this case illustrates the break with our domestic past brought about by the 1994 Act… If King Canute had been a trade mark agent, the waters of Community Law, which Lord Denning depicted as rushing up our native shores, would surely have overwhelmed him by now”.
The decision also adds to a debate as to the extent to which a trade mark registration may be restricted to particular goods/services on the basis of non-use in light of the decision in Thomson Holidays Limited v Norwegian Cruise Line Limited  EWCA Civ 1828.
The claimant, Mr West, is the owner of a number of off-licence supermarkets in and around Calais. He sought revocation of the UK registered trade mark, E.S.B.. The E.S.B. mark belongs to the defendant brewer, Fuller Smith & Turner Plc (Fullers). It is registered in respect of “Beers included in Class 32” as of April 1988.
The appeal hearing concerned a challenge by the claimant against the decision of the judge on the main revocation issue and there was also a cross-appeal by the defendant against the decision to limit the specification covered by the registration of the mark.
Mr West submitted three grounds of appeal on the findings relating to distinctiveness:
i) The judge erred in his approach to the question whether a mark was ‘devoid of distinctive character’;
ii) The judge erred in his approach to the question whether or not a mark consisted ‘exclusively of signs or indications which may serve, in trade to designate kind, quality, quantity, etc.’; and
iii) The judge erred in his approach to the question whether the mark consisted ‘exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
The claimant submitted that at the date of registration, although the mark was distinctive ‘in vacuo’, by that date, the use of the mark by Fullers in conjunction with the words “Extra Special Bitter” had rendered it incapable of distinguishing the products of Fullers from those of any other brewery. Counsel for Mr West relied on evidence obtained in cross-examination of the defendant’s survey witnesses, where he put forward the contrast between the impact of the marks “E.S.B.” and “Cortina”. The Court of Appeal did not find this helpful, stating (in Paragraph 19) that:
“Marks can vary widely in the impact they make upon the interested public. Some may be very much stronger than others, without the less strong being open to the objection of being devoid of any distinctive character”.
The Court found that as the judge held that as the mark had become distinctive through use, it followed that it could not have been devoid of any distinctive character and that the judge’s finding at first instance could not be challenged.
The Court followed the ECJ’s guidance in BABY-DRY that the existence of the defences to an allegation of infringement is material to the scope of the prohibition on registration contained in section 3(1)(c) Trade marks Act 1994 (the “TMA 1994”).
Reference was also made to the decision of the European Court of First Instance in Case T-193/99 Wm Wrigley Jr Company v OHIM  ETMR 623 (DOUBLEMINT), which was approved by the Advocate General in his opinion in BABY-DRY. In that case, the mark DOUBLEMINT for chewing gum was held to have gone beyond the merely descriptive and was registrable as a Community trade mark.
From the BABY-DRY and DOUBLEMINT authorities, the Deputy Judge had discerned four principles which were approved by the Court of Appeal:
“(i) Sections 3(1)(b)(c) and (d) are not designed to exclude from registration marks which merely possess an indirect descriptive connotation: the words “devoid of any” in subsection (b) and “exclusively” in (c) and (d) are to be given effect to;
(ii) the fact that some mental activity is necessary in order to discern a reference to the quality of a characteristic of the goods may assist in its registrability;
(iii) uncertainty as to the precise nature of the reference to the quality or character of the goods will also assist;
(iv) marks which can only refer directly to the quality or character of the goods: (BITTER for beer would be an example) must be refused registration. This is because such a mark does not “differ from the usual way of designating the goods or their characteristics” and because it may “serve in normal usage from a consumer’s point of view to designate either directly or by reference to one of their essential characteristics” the relevant goods”.
Mr. Justice Pumphrey summarised: “The basic message is that section 3(1)(c) does not present a high hurdle for the applicant to surmount”. Accordingly, the Court upheld the lower court’s decision that the mark was not one which fell under section 3(1)(c).
The Court emphasised that this new approach marked a significant departure from the old UK law under the Trade Marks Act 1938.
Further, in interpreting the ECJ’s answer to a reference from the English Court of Appeal in the Philips Three-Headed Razor case (Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Limited), the Court found that there is no requirement that a trade mark be both ‘capable of distinguishing’ and ‘not devoid of any distinctive character’. In other words, the definition of trade mark in s.1(1) TMA 1994 (or Article 2 of the Directive) adds no additional requirement for registrability than is contained in Articles 3(1)(b), (c) and (d).
The Court upheld the judge’s finding that the letters E.S.B. were not a sign or indication customary in the current language or established practices of the trade and refused to re-examine the facts upon which the decision was formed.
On the proviso of acquired distinctiveness, the Court found that as a mark can acquire distinctiveness through its use, so it can lose distinctiveness. It found though, that the judge had decided on the facts that use in this case enhanced the distinctiveness of the mark and upheld that finding.
On the cross-appeal, the question was what was the correct test when assessing how far the E.S.B. mark’s specification should be limited where use had only been made of some goods within the specification.
The Court followed Thomson Holidays Limited v Norwegian Cruise Line Limited  EWCA Civ 1828. Lord Justice Aldous in that case had held that the task for the courts is to inform itself of the circumstances of the particular trade and identify the way the notional average consumer would describe such use. Such a description would be the correct way to refer to the goods.
As the Thomson Holidays judgment was made after the hearing in the present case, both parties accepted the invitation of the Court to make further written submissions in light of the judgment.
Despite argument that the notional average consumer would refer to E.S.B. as a “beer”, the Court dismissed the cross-appeal by the defendant. The Court held that there was no difference in substance between the test applied at the lower court (that “bitter” was a separate commercial category) and that set out by Justice Aldous in the Thomson Holidays case.
The Court of Appeal decision illustrates the changes in UK trade mark law brought about by the European Trade mark Directive. The four principles set out by the lower court and approved here by the Court of Appeal, based on the BABY-DRY and DOUBLEMINT decisions, should assist practitioners in assessing the “distinctive character” of trade marks.
First published in the March 2003 edition of Trade mark World.