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

It is common ground that, since the Trade Mark was registered in 2009, its registrability is governed by the legislation that was in force at that time. It is debatable whether that means the relevant provisions of the Trade Marks Act 1994 as they then stood implementing European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (“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 signs 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.

Rule 3 of Commission Regulation 2868/95/EC implementing Council Regulation 40/94/EC on the Community trade mark as amended by Commission Regulation 1041/2005/EC of 29 June 2005 (“the Implementing Regulation”) provided, so far as relevant:

“Representation of the mark

(1)

If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. The use of small letters and capital letters shall be permitted and shall be followed accordingly in publications of the mark and in the registration by the Office.

(2)

In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears. The sheet on which the mark is reproduced shall not exceed DIN A4 size (29,7 cm high, 21 cm wide) and the space used for the reproduction (type-area) shall not be larger than 26,2 cm × 17 cm. A margin of at least 2,5 cm shall be left on the left-hand side. Where it is not obvious, the correct position of the mark shall be indicated by adding the word ‘top’ to each reproduction. The reproduction of the mark shall be of such quality as to enable it to be reduced or enlarged to a size not more than 8 cm wide by 16 cm high for publication in the Community Trade Mark Bulletin.

(3)

In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark.

…

(5)

Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.

…”

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.