CA-2025-000162 - [2025] EWCA Civ 1340

The judge made no error of law or principle in her assessment. She was entitled to conclude, for the reasons she gave, that the Trade Marks did not comply with either the first condition or the second condition in section 1(1) of the 1994 Act, Article 2 of the Directive and Article 4 of the Regulation. I would therefore dismiss the appeal.

I am grateful to Arnold LJ for his clear exposition and analysis of the issues. I agree that the judge was entitled to reach the conclusion that she did, such that the appeal should be dismissed for the reasons given by Arnold LJ.

I would add that the judge was not assisted by the case being argued before her in a way that did not clearly distinguish between the first and second condition in the way exemplified by Spear v Zynga. However, it is nonetheless apparent that the judge concluded that there was no single sign, such that the first condition was not met. Given the examples set out in the Cancellation Division’s decision and reproduced by the judge at [191] of her judgment (see [65] above), this is hardly surprising. Furthermore, the judge was entitled to conclude that the second condition was not met since the Trade Marks were insufficiently clear, precise and objectively ascertainable. As Arnold LJ has said, the distinctive character of position marks derives at least in part from their positioning. If that position is not clearly specified, then the registration requirements may well not be met.

I too would dismiss the appeal for the reasons given by Arnold LJ.