CA-2024-002240 - [2025] EWCA Civ 946

It is common ground that the judge accurately summarised the law in his judgment at [40]:

“The law with regard to what constitutes a variant form of a registered mark under s.46(2) of the Trade Marks Act 1994 was considered by Arnold J in Walton v Verweij Fashion [2018] EWHC 1608 (Ch) at [119] to [123]. From this, I note the following:

a.

The objective of s.46(2) is to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (see Walton at [119], citing Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd at [29]).

b.

There are two parts to the necessary inquiry. First, to identify the points of difference between the mark as used and the mark as registered and, second, to ask whether those differences alter the distinctive character of the mark as registered (see Walton at [120], citing BUD and BUDWEISER BUDBRAU Trade Marks [2002] EWCA Civ 1534).

c.

The normal approach to the assessment and comparison of distinctive character applies in this context. Accordingly, it is necessary to analyse the ‘visual, aural and conceptual’ qualities of the mark as used and of the mark as registered and to make a ‘global appreciation’ of their likely impact on the average consumer (see Walton at [120]-[121], citing BUD and BUDWEISER BUDBRAU at [45] and Case C-501/15 European Union Intellectual Property Office v Cactus SA at [68]-[71]).”

Although the judge did not specifically refer to it, there is no dispute either as the correctness of what I said in Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch) at [122]:

“As the case law of the General Court makes clear, alteration or omission of elements which are not distinctive is not capable of altering the distinctive character of a trade mark: see Case T-690/14 Sony Computer Entertainment Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:T:2015:950] at [45]. Furthermore, when a trade mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter: see Sony at [49]. Accordingly, it is possible in an appropriate case for use of the word element on its own to constitute use of the trade mark: see Sony at [51].”

The judge discussed at [41] and [44]-[46] three decisions of the General Court cited by easyGroup: Case T-24/17 LA Superquimica SA v European Union Intellectual Property Office [EU:T:2018:668], Case T-521/21 6minutes Media GmbH v European Union Intellectual Property Office [EU:T:2022:520] and Case T-792/22 Quatrotec Electrónica SL v European Union Intellectual Property Office [EU:T:2024:69]. The latter two decisions are not assimilated law, but they are potentially persuasive. Although there was some discussion of these decisions during the course of argument on the cross-appeal, it suffices to say that in my judgment they neither add to, nor detract from, the principles I derived from Sony Computer Entertainment Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:T:2015:950].