CA-2025-000801 - [2025] EWCA Civ 1341

As I have explained, the judge applied the “capacity to distinguish” test which he had previously applied in Sainsbury. Iceland contends that this test is legally erroneous. I agree with this. As discussed above, the three conditions in Article 2 of the Directive, Article 4 of the Regulation and section 1(1) of the 1994 Act are independent and cumulative conditions. Furthermore, whether something is a sign and whether it is sufficiently clearly and precisely represented are logically anterior questions to the question whether it has a capacity to distinguish. The judge did not refer to Spear v Zynga, I presume because it was not cited to him. In his judgment in that case Sir John Mummery firmly rejected Mattel’s argument that the three conditions could not be viewed independently from each other and that the distinctive character of the trade mark was relevant to the assessment of whether it complied with the first two conditions: see [19], [26], [28] and [33]. Although that argument was framed in terms of acquired distinctive character, the same logic applies to inherent distinctive character, as counsel for Babek rightly accepted.

The fact that the judge applied the wrong test means that this Court must reconsider the issues. It does not necessarily mean that the judge reached the wrong conclusion. Before reconsidering the issues, it is appropriate to consider the other grounds of appeal.

Since I have accepted ground 1, ground 2 does not arise.