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

It is common ground that, since the Trade Marks were registered in 2003, their registrability is governed by the legislation that was in force at that time. In the case of the Comparable Trade Marks, it is debatable whether that means the relevant provisions of the Trade Marks Act 1994 as they then stood implementing First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (“the Directive”) or the relevant provisions of Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark (“the Regulation”), but it is common ground that it is not necessary to resolve that question because there is no material difference between the relevant provisions.

Article 2 of the Directive provided:

“Signs of which a trade mark may consist

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Article 2 was implemented in the UK by section 1(1) of the 1994 Act as it then stood (it has subsequently been amended to give effect to Directive 2015/2436/EU which replaced Directive 2008/95/EC which replaced Directive 89/104/EEC). Article 4 of the Regulation corresponded to Article 2 of the Directive.

Article 3(1) of the Directive provided:

“The following shall not be registered or if registered shall be liable to be declared invalid:

(a)

signs which cannot constitute a trade mark;

…”

Article 3(1) was implemented by sections 3(1)(a) and 47(1) of the 1994 Act, which remain unamended. Article 7(1)(a) of the Regulation corresponded to Article 3(1)(a) of the Directive.

The case law of the Court of Justice of the European Union decided prior to 31 December 2020, which is assimilated law, establishes that, in order to comply with Article 2 of the Directive and Article 4 of the Regulation, the subject matter of an application or registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. See in particular Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I at [23], Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129 at [22] and Case C-321/03 Dyson v Registrar of Trade Marks [2007] ECR I-687 at [28]. It is clear that these conditions are independent and cumulative.