Case No. EWHC-3296-(IPEC)

21. A sign can be descriptive even if at the time of the application for registration it is not actually in use in a way that is descriptive; it is sufficient that it could be used for such a purpose. Moreover, there does not need to be a real and current need to leave the sign free for use by others and a sign can be descriptive even if there are other, more usual, signs which can be used for designating the relevant characteristics of the relevant goods or services (see Agencja Wydawnicza at [38] and [39]). On the other hand, as the CJEU also noted in Agencja Wydawnicza at [50]: “The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) …. are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) … only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics…”. 22. A slightly different, possibly more restrictive, interpretation of the law as to when a sign might be regarded as descriptive appears in Case C-273/05 P OHIM v Celltech R&D Ltd . In that case, the CJEU upheld the Court of First Instance’s decision that a sign was not descriptive. In so doing, the CJEU does not appear to have disagreed with the lower court’s comments (which the CJEU quoted at [13]) that, for a sign to be descriptive, it must be such that: “the relevant public would immediately and without further reflection make a definite and direct association with the … goods and services claimed and the meaning of [the relevant word mark]” and that this association: “… is such as to be immediately and unambiguously perceived…” 23. In support of its claim that the word mercury is descriptive of the relevant goods, Battle relies on dictionary definitions of the word to the effect that it is a “heavy, silver-white… metallic element… used in… reflecting surfaces of mirrors ” or a “ heavy, silver-coloured metal, liquid at normal temperature ”, and it points to the fact that Equisafety’s Mercury products are “ made of a silver-grey ‘mercury’ coloured, high-visibility reflective fabric ”. It also notes that Equisafety uses the word mercury in conjunction with other descriptive words (i.e. “reflective” and “hi-vis”) and argues that on occasions Equisafety and its customers have referred to the reflective fabric used by Equisafety in these products as “mercury fabric”. Finally, it points to a number of what it says are examples of the word being used by third parties to describe products made from high visibility or reflective material. 24. In my judgment, whether one applies the Agencja Wydawnicza test or the Celltech test, the evidence does not establish that the word mercury would be seen by the average consumer as being descriptive of reflective high visibility clothing, let alone as being descriptive of the wider class of goods for which the word is registered. It may be that the average consumer would be aware that mercury is a metallic substance and has the properties referred to in the above dictionary definitions. However, I do not accept that this means that the average consumer would easily recognise, let alone would immediately and without further reflection, regard the use of the word mercury in the present case as being descriptive of any characteristic of the relevant goods. The goods are not made from mercury and the mere fact that mercury (the substance) has a silver-white appearance and can be used in reflective surfaces does not mean that products with that appearance or qualities are or are likely to be described as mercury products. Indeed, in an email dated 22nd April 2015 to Equisafety's Chinese manufacturers, Ms. Fletcher referred to “the Mercury gilet, it is made from reflective silver fabric”. Similarly, in a packing list sent to Battle by its Chinese manufacturers and on the swing tags for Battle’s HVSMR products, the colour of those products was described as “Reflective silver”. 25. Further, in my judgment, the instances of the use (by Equisafety and by customers) of the phrase “Mercury fabric” (and I note that in most of these cases, the “M” is capitalised) are really instances where the word mercury is being used to identity the range or derivation of the fabric (i.e. the fabric used for products sold under the Mercury brand) rather than as a description of the appearance of that fabric. Accordingly, insofar as customers may have referred to “Mercury fabric”, I accept Ms Fletcher’s evidence that this was not a reference to the colour of the fabric but rather “because it was from the Mercury range”. 26. A similar point is apparent from Equisafety’s marketing materials dating from October 2016 where it offered (as part of its Charlotte Dujardin Collection) the following products - VOLTE WATERPROOF JACKET RENVER QUILTED JACKET MERCURY JACKET ARRET JACKET The words volte, renver and arret are all terms used in dressage and are in no way descriptive of the jackets on offer. They are being used as brands. In my judgment, the word Mercury is being used in exactly the same way and would be taken as such by the average consumer. 27. The position is also similar as regards Battle’s examples of third party uses of the word mercury. I note that these examples appear to date from 2020. If so, they post-date the application for registration and do not assist Battle’s case. But, in any event, none of them shows use that is clearly descriptive and certainly none of them comes close to showing that the average consumer would have seen the word as descriptive when applied to high visibility reflective products. Indeed, several of Battle’s examples seem to be of non-descriptive use. For example, so far as can be ascertained from the pictures in the trial bundle, the Mercury Trainer and the two Mercury Bridles on which Battle relies do not feature any reflective high visibility material 1 and for these products the word mercury appears to be used as a brand. In the case of the bridles, they have a “silver clincher curved brow band” but this is a purely decorative and not a high visibility reflective feature. In one case, the brow band is not even sold as part of the Mercury Bridle. 28. On the “HAZTEC” website on which Battle relies, there is a picture of a jacket made from high visibility reflective fabric and identified as a “HAZTEC Mercury Hi-Vis RIS FR AS ARC Jacket”. However, immediately below that are four other products also made from such fabric and called the: HAZTEC Mimas Hi-Vis RIS FR AS ARC Coverall, HAZTEC Boulton FR AS Hi-Visibility Waterproof Traffic Jacket, HAZTEC Minerva FR AS ARC Hi-Vis Rail Spec Trouser and HAZTEC Lavan FR AS Hi-Vis Sleeveless Waistcoat. It seems clear that the words Mimas, Boulton, Minerva and Lavan are not here being used descriptively but are being used in a trade mark (brand) sense. In my judgment, an average consumer would regard the use of the word “Mercury” in this context in exactly the same way. The same can be said about the products shown on the PPE Suppliers website on which Battle relied. 29. A point made by Mr Selmi for Equisafety was that the reference to Mercury could just as well be taken as a reference to the Roman god Mercury or to the planet Mercury. On this basis he argued (relying on comments of the Court of First Instance in Celltech at [39]) that the word had “ many possible areas of use ” and could not, therefore, be held to be used here in a descriptive sense. I am not convinced that this is correct. It seems to me that on the law as summarised in Agencja Wydawnicza , the fact that a word has different uses would not of itself prevent the average consumer concluding that it was being used in a descriptive sense. However, I can see that it does suggest that the average consumer is less likely to make an immediate and unambiguous association between the word and the reflective silver grey characteristics of the product in question or to “easily recognise” its use in that context as being descriptive.