Most trade marks comprise or include words or names, often ordinary words commonly to be found in a dictionary (e.g. FINISH, VANISH, I CAN'T BELIEVE IT'S NOT BUTTER) or ordinary names commonly to be found in a directory (e.g. FORD, GORDON'S, HERBERT SMITH). While, historically, trade mark legislation has generally prevented traders from hijacking for their own exclusive use words and names, which competitors might quite reasonably wish to use in relation to their products (e.g. words which fairly describe their products), where an ordinary word or combination of words has acquired a secondary meaning (e.g. BRITISH GAS for maintenance of gas installations), then registration has been permitted.
There is therefore a tension between, on the one hand, preserving the English language for all and, on the other hand, permitting the registration (and therefore monopolisation) of ordinary words which have become distinctive marks. The obvious way of resolving this potential conflict is to ensure that registration of an English word, which has acquired secondary meaning, cannot thereby monopolise the primary meaning. Does the 1994 Act achieve this result?
The relevant Sections of the 1994 Act are:
Section 1(1) which defines a trade mark as 'any sign ...... which is capable of distinguishing goods ...... of one undertaking from those of other undertakings'.
Section 3(1) which excludes from registration, inter alia, 'trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose ...... of goods or ...... other characteristics of goods ......'. Note, however, that the word "exclusively" contemplates registration of partially descriptive signs or indications.
Section 9(1) which provides that 'the proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent'.
Section 10 setting out the acts of infringement, which for the purposes of this article need only be identified as the unauthorised use in the course of trade of (a) a sign identical to the registered proprietor's mark in relation to identical goods (10(1)); and (b) a sign confusingly similar to the registered proprietor's mark in relation to the same or similar goods (10(2)).
Section 11(2) cuts down the ambit of the registered proprietor's monopoly in the following manner:
'A registered trade mark is not infringed by:
- (a)the use by a person of his own name or address;
- (b)the use of indications concerning the kind, quality, quantity, intended purpose ...... of goods ...... or other characteristics of goods ......;
- (c)the use of the trade mark where it is necessary to indicate the intended purpose of a product ...... (in particular, as accessories or spare parts).
- provided the use is in accordance with honest practices in industrial or commercial matters'.
In summary, therefore, one might be forgiven for concluding that words, which are commonly used to describe goods, are either excluded from registration altogether by sections 1 and 3 or are kept out of the monopoly and are available for honest use by other traders by virtue of section 11.
Sadly, that may not be the case. As is so often the case with trade mark law, what ought to be a very simple proposition is in danger of becoming a quagmire, albeit at present solely on the back of obiter dicta. How come?
This involves a study of two cases hinted at in the title to this article, namely the Treat (1996 RPC 281) and European (1996 FSR 431 and 1998 FSR 283) cases, in both of which the scope of Section 11 (2)(b) was an issue, but in both of which the point did not fall to be decided, because there was held to be no infringement for other reasons.
In Treat the Plaintiff's registered mark was TREAT and the Defendant's label featured, inter alia, the name 'Robertson's' and the brand (according to the Plaintiff) or description (according to the judge) TOFFEE TREAT.
The Plaintiff complained that the Defendant's use of TREAT infringed the Plaintiff's trade mark rights. As indicated above, the judge held that there was no infringement, before he got to considering section 11 (2)(b). Nonetheless he went on to address the issue as to whether the Defendant's use of TREAT was an honest descriptive use and, although his comments are obiter; he has been 'followed' by two of the judges in the European case, again in obiter dicta.
In construing section 11, Mr Justice Jacob regarded it as a dominant factor that under the 1994 Act and the European Directive upon which the 1994 Act is based the sole function of a trade mark is to guarantee the trade mark as an indication of origin. The judge observed:
"No other purpose is mentioned. I think this sole purpose permeates the whole Directive and hence our 1994 Act. If there is doubt as to the meaning of any particular provision, regard should be had to this purpose. I propose so to do in construing section 11(2)."
This raises two unanswered questions: what is doubtful about the meaning of section 11(2)? Why should guaranteeing the function of a trade mark as an indication of origin be the determining factor in construing limitations on the monopoly? At all events this approach led the learned judge to conclude that if a mark is used as a trade mark for the Defendant's goods, it cannot be a description. He then had to address the situation where the sign only formed part of the Defendant's mark:
"I am, of course, concerned with the word TREAT alone. I cannot see even a hint that anyone regarded this alone as a trade mark. Mr Young says no matter, once it is incorporated into a phrase, which has trade mark significance, i.e. TOFFEE TREAT, that is enough. If I accept that the whole phrase is indeed a trade mark, I think Mr Young must be right. Section 11(2) does not cover the case where a word, outside the context of the use, is descriptive if, in context, it is part of trade mark use for the defendant's goods."
In so saying one does not know whether he had in mind a descriptive word, which is descriptive both in and outside the context of the trade mark use, e.g. the adjective BRITISH as part of the trade mark BRITISH PETROLEUM. It is to be observed that section 11 (2)(b) talks of 'indications', not 'signs' and still less 'marks', so it is not immediately obvious (at any rate to the author) why a mark may not embrace within it an indication as to the product's characteristics. Indeed, such indications are common in the real world of the marketplace (q.v. a plastic lemon-shaped container for lemon juice).
In the European case the Plaintiff was the proprietor of THE EUROPEAN newspaper and the registered proprietor of the masthead of the newspaper as a trade mark in class 16 for newspapers. The Defendant had launched a new newspaper under the title EUROPEAN VOICE.
The Plaintiff's complaint, simply put, was that the use of the word "European" as part of the Defendant's newspaper title took the essential feature (the word "European") of the Plaintiff's registered mark (the masthead device) and constituted trade mark infringement. A complication for the Plaintiff was that it had to concede that the word "European" was a common descriptive word and, on its own, unregistrable. This left the Plaintiff in the somewhat unattractive position of appearing to claim a monopoly in an unregistrable word.
Both at first instance and in the Court of Appeal the Plaintiff failed on the basis that it had not satisfied the requirements of section 10(2), the Plaintiff's mark and the Defendant's sign not being similar or sufficiently confusingly similar. But what would have been the result if the Plaintiff's argument on section 10(2) had succeeded? As a fall-back position the Defendant had sought the protection of section 11(2) (b) on the basis that, as was accepted all round and at all stages, the word "European" in the Defendant's title accurately described the character and content of the Defendant's newspaper.
At first instance, Mr Justice Rattee did not seek to decide the point, but in referring to the Treat decision he deferred to Mr Justice Jacob's experience in the field and commented that he had difficulty in believing that a deceptively similar mark could constitute an honest practice within the proviso to section 11. Clearly, had he had to decide the point, he would have found in favour of the Plaintiff.
In the Court of Appeal Lord Justice Millett had this to say: "Section 11(2)
This (his finding of non-infringement) makes it unnecessary to consider the availability of a defence under section 11(2) (b). As at present advised, I think that there is much force in the contention that, while paragraphs (a) and (c) are directed to the use of the matters referred to as indications of the trade origin of the goods or services, paragraph (b) is different. The paragraph would make no sense if 'other characteristics of the goods or services' included their trade origin.
I am inclined to think that the purpose of section 11(2) (b) is to permit the fair use of the plaintiff's registered trade mark to indicate the characteristics of the defendant's goods or services, for example, in an advertisement, but not (whether alone or in conjunction with other words) to perform the dual function of indicating both the characteristics and the trade origin of the defendant's goods. I do not believe that it can have been intended, as the defendant submitted, to allow the use of confusingly similar indications of the trade origin of the goods or services provided that other features, such as the get-up or section of the public for whom the goods or services were designed, made actual confusion unlikely. This has never been a defence to an action for infringement, and to allow it would fundamentally subvert the policy which has hitherto underlain trade mark protection."
This passage again presupposes that the meaning of section 11(2) is unclear, but no indication is given as to where the doubt lies. What could be clearer? Paragraph (a) deals with names, which may well be trade marks, and addresses, which are unlikely to be trade marks; paragraph (b) deals with indications, which may or may not be trade marks or parts of trade marks; paragraph (c) deals with the registered proprietor's trade mark. The Defendant argued that section 11, which is headed "Limits on effect of registered trade mark", necessarily covers all uses in the course of trade, which, but for the section, would otherwise be subject to the full "effect of [the] registered trade mark". Whether or not the relevant use is trade mark use is immaterial.
A necessary consequence of this argument is that in certain circumstances uses of confusingly similar signs are permissible. It is this that seems to have stuck in the craw of the learned Lord Justice and Jacob and Rattee JJ., but none of them explains why this should not be so, unless Mr Justice Jacob's view of the all-pervasive effect of the function of a trade mark means that the interests of the trade mark owner are paramount - even to the extent of allowing the secondary meaning of a word to exclude ordinary use of the primary meaning.
Incidentally, before leaving that passage from Lord Justice Millett's judgment, it is to be observed that the last two sentences fly in the face of long-established authority, if and to the extent that it is suggested that, in considering confusing similarity for trade mark infringement purposes, one should not "consider the nature and kind of customer who would be likely to buy [the] goods" (Parker J in Pianotist Co. Ltd.'s Application 23 RPC 774 at page 777).
However, on the question of section 11(2), it is clear that the learned Lord Justice supported Mr Justice Jacob's approach in Treat and Mr Justice Rattee's at first instance. He, too, would have taken the view that the Defendant's use of the word "European" as part of the title EUROPEAN VOICE for a newspaper concerned with matters European and directed to those working in and around the European institutions was not entitled to the benefit of section 11(2) (b).
The competing arguments were identified succinctly by Lord Justice Hobhouse in the same case:
"On the one hand it can be argued that the holder of a registered trade mark should not be deprived of the protection of his mark and the prima facie infringer should not be allowed to continue to use a confusing sign. On the other hand it can be argued that the holder should not be permitted to acquire a monopoly over a descriptive word to which he is not entitled and that a competitor should be allowed to use that descriptive word if it is consistent with honest trade practice to do so."
Put thus, can there be any question but that the latter argument is the correct one? Bearing in mind that the subject under discussion is the use of ordinary English words, which have both a primary and secondary meaning, on what basis is it asserted that the secondary should exclude the primary? If the argument is simply the bald proposition that trade mark monopolies should protect the trade mark proprietor against all forms of confusion/deception as to origin, then the argument is a novel one. In Office Cleaning Services Limited -v- Westminster Window and General Cleaners Limited [1946] RPC 39 at page 42 Lord Simonds said:
"So it is that, just as in the case of a trade mark, the use of descriptive words is jealously safeguarded, so in the case of trade names the Courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to cause confusion and will easily accept small differences as adequate to avoid it."
And at page 43:
"It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words."
The judiciary have to be restrained from interfering where there is no need to interfere. Section 11 must be allowed to mean what it says. No gloss is necessary. Section 3(1)(c) contemplates the registration of trade marks which consist of descriptive (other than exclusively descriptive) indications and Section 11(2) (b) limits the effect of such registered trade marks.
It matters not that the use in question is or is part of a trade mark use; it matters not that the use may be causing confusion; all that matters is that the use falls within the language of one of the three subsections (a), (b) and (c) and is honest within the meaning of the proviso. The object of the section is simply to exclude from the ambit of the monopoly reasonable, honest third party trade uses, which ought not to be precluded by the monopoly.
There is nothing heterodox in this approach. It has the advantage of giving the wording of the section its straightforward meaning, it is common sense, it makes commercial sense and it reflects what has been the position at common law for a very long time. So far as section 11 (2)(b) is concerned, if a trader selects for his mark ordinary words that are likely to be required by competitors fairly to describe their goods, then, as in the case of passing off, he has to accept with equanimity such confusion as may result from any such fair use.
Written by Tony Willoughby (solicitor for the Defendant in the European case)
Dawn Osborne is a senior solicitor at Willoughby & Partners. Willoughby & Partners, in association with Rouse & Co International, have an active interest group devoted to legal issues relating to the Internet.
The content of this article is to provide only a general information on the subject. Legal advice should be sought for any specific circumstances.
