Case No. IP-2015-000146

66.The first was that if a trade mark is inherently distinctive, by which I mean that it does not fall foul of any of subparagraphs 1(b)-(d) of art.7, a party may rely on art.7(3) to show that use of the mark has rendered it non-distinctive. On a straightforward reading of art.7 that is not correct. Paragraph (3) comes into play only if any of subparagraphs 1(b), (c) or (d) apply. In other words, an inherently distinctive mark can never be vulnerable to an allegation that it has lost distinctiveness through use, at least not pursuant to art.7(3).67.Continuing with this possible construction of the Regulation, it would remain the case that if in consequence of the use of the mark by or with the consent of the proprietor (but no one else) the mark becomes liable to mislead the public, the mark may be revoked pursuant to art.51(1)(b).68.Jumping ahead, it seems to me that the same point could be said to arise in the context of art.52(2): art.52(2) is only engaged if the trade mark was registered in breach of any of art.7(1)(b) to (d) in the first place.69.This matters, of course, because I have found that the Trade Mark was inherently distinctive.70.That said, it was not a point raised by either counsel, partly because neither addressed the question whether the assessment under art.7(1)(c) taken alone must exclude the effect of use of the Trade Mark. I think it would be unfair for me to reach any concluded view on the point without having heard argument.71.Importantly, had the question whether Fox was entitled to rely on art.7(3) or art.52(2) been raised by Miss Himsworth, I imagine that Mr Hicks may have directed his attention to Fox’s case under art.51(1)(b). Although he said nothing about it in oral argument he did not formally abandon Fox’s pleaded case which relied on that provision.72.I will therefore consider both art.7(3) and art.52(2) on the assumption that they are engaged and that use of the Trade Mark before and after its application date must be taken into account. I need not go on to consider Fox’s case under art.51(1)(b), given Mr Hicks’ concession that it stands or falls with Fox’s argument on art.7(1)(c) and acquired distinctiveness through use.