Descriptive Trade Marks - Round 2

Previously we reported on the BABY-DRY and the NEW BORN BABY cases and the effect of these on the registration of descriptive word-only marks at the Community Trade Marks Office.

The following is the first decision by a UK Court which refers to the BABY-DRY decision.

Fuller Smith & Turner Plc are the registered proprietors of UK trade mark registration ESB registered with effect from 15 April 1988 in respect of "beers" in Class 32. The Claimant, a Mr West, who operates an off-licence business near Calais, sold a pilsner beer called ESP, which stands for "Eastenders Strong Pils". Mr West claimed ESB stands for Extra Special Bitter. It was common ground between the parties that the ESB mark had only been used in respect of bitter.

The Claimant applied to the UK Court that the UK trade mark registration should be declared invalid under Section 47 of the UK Trade Marks Act 1994 because it was not distinctive under Sections 3.1(b), (c) and (d) of that Act. Under these provisions the following are not registrable:-

• Trade marks which are devoid of any distinctive character.
• Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity…of goods or of rendering of services…
• Trade marks which consist exclusively of signs or indications, which have become customary in the current language or in the bone fide and established practices of the trade.

The Claimant said the mark ESB fell foul of these sections when it was applied for in 1988. He also stated that the saving provision (a mark shall not be refused registration for the above reasons if it has become distinctive as a result of the use made of it before the application date) did not apply.

He also claimed that the mark should be limited to bitter (rather than extending to all beers) on the grounds that it had not been used in respect of all beers for the past five years and therefore could be revoked for non-use under Section 46(1)(a) of the 1994 Act.

Alternatively he argued that the mark should only extend to those parts of the UK in which it had acquired distinctiveness.

The Court expressly considered the BABY-DRY case. It also referred to the DOUBLEMINT case (2001 ETMR 623) where the initial refusal to register DOUBLEMINT for chewing gum was rejected as it was held that members of the public would not know what DOUBLEMINT meant (did "double" mean twice as strong or did it mean two types of mint?).

The Court set down the following principles:-

• The sub-sections of Section 3(1) did not exclude marks which had an "indirect descriptive connotation". The Court expressly referred to the words "devoid of any" in Section 3(1)(b) and "exclusively" in Sections 3(1)(c) and (d) and that these terms should be given effect to.
• If members of the public have to make some mental activity to work out whether the mark refers to the quality of the goods, this may assist the mark's registrability.
• It would also help in registrability if members of the public are uncertain as to the nature of the reference to the quality or the character of the goods.
• Marks which refer directly to the quality or character of the goods (the example of BITTER FOR BEER was given) must be refused.

On the facts, the Court did not agree with the Claimant that the mark ESB was not distinctive, descriptive or customary in the current language or established practices of the trade. In any event, they found that the evidence of use of the mark by Fuller might overcome such objections.

This decision clearly follows the BABY-DRY case and would seem to suggest that the UK Trade Mark Registry, like the Community Trade Marks Office, will now only refuse to accept marks if they are directly descriptive of the goods or services they cover. Indirectly descriptive marks should now be registrable both at OHIM and the UK.

It was common ground there was no statutory power to revoke a mark for part of the UK.

A UK trade mark registration can be partially revoked if it has not been used in respect of some of the goods which it covers.

There are two differing judicial interpretations of this. The first is that if the mark has not been used in respect of one of the terms in the specification, this is sufficient for that term to be removed. However, the other interpretation is that one should look at the goods in relation to which the mark has been used. If these form a sub-set of one of the terms in the specification, this sub-set can replace the wider term in the specification. The Court found it was helpful to consider whether the specification included "commercially quite different sorts of articles" to those in respect of which there had been use and whether non-use had been established "in respect of a significant sub-set".

In this case, Court held that beer drinkers either drank lager or bitter but not both and there was little overlap of trade marks between lager and bitter. They also found that the class of articles represented by "beer" had a number of significant sub-sets one of which was bitter. Non-use was established in relation to all of the sub-sets except bitter and the specification was limited therefore down from "beer" to "bitter".