CA-2024-00277 - [2025] EWCA Civ 1000

Neither side took issue with the accuracy of the following passage from my judgment in Walton International Ltd v Verweij Fashion BV [2018] EWHC 1608 (Ch), [2018] ETMR 34 which the judge cited at [132]:

“119.

... The CJEU stated in Specsavers International Healthcare Ltd v Asda Stores Ltd (C-252/12) [EU:C:2013:497], [2013] ETMR 46 (‘Specsavers (CJEU)’) at [29] that the objective of what is now art.18(1)(a) of the Regulation was:

 ‘by avoiding imposing a requirement for strict conformity between the form used in trade and the form in which the trademark was registered, ... 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.’

120.

In BUD and BUDWEISER BUDBRAU Trade Marks [2002] EWCA Civ 1534, [2003] RPC 25 Lord Walker of Gestingthorpe (with whom Pill LJ agreed) held that the correct approach to s.46(2) of the 1994 Act, which corresponds to art.15(2)(a) of the Regulation, was as follows:

‘43. ... The first part of the necessary inquiry is, what are the points of difference between the mark as used and the mark as registered? Once those differences have been identified, the second part of the inquiry is, do they alter the distinctive character of the mark as registered?

44.

The distinctive character of a trade mark (what makes it in some degree striking and memorable) is not likely to be analysed by the average consumer, but is nevertheless capable of analysis....

45.

Because distinctive character is seldom analysed by the average consumer but is capable of analysis, I do not think that the issue of 'whose eyes? - registrar or ordinary consumer?' is a direct conflict. It is for the registrar, through the hearing officer's specialised experience and judgement, to analyse the 'visual, aural and conceptual' qualities of a mark and make a 'global appreciation' of its likely impact on the average consumer, who:

“normally perceives a mark as a whole and does not proceed to analyse its various details.”

....

121.

  As this indicates, and as the recent decision of CJEU in European Union Intellectual Property Office v Cactus SA (C-501/15) [EU:C:2017:750], [2018] ETMR 4 at [68]-[71] confirms, the normal approach to the assessment and comparison of distinctive character applies in this context.

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 Sony Computer Entertainment Europe Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (T-690/14) [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 [165]-[169] a decision of the General Court cited by easyGroup: Case T-792/22 Quatrotec Electrónica SL v European Union Intellectual Property Office [EU:T:2024:69]. This is not assimilated law, but it is potentially persuasive. It suffices to say that in my judgment it neither adds to, nor detracts from, the principles I derived from 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].