Case No. EWHC-3296-(IPEC)

30. Turning to the invalidity claim based on s.3(1)(d), the issue here is whether, at the time of the application, the word mercury had “ become customary in the current language or in the bona fide and established practises of the trade to designate goods or services in respect of which registration of that mark is sought ” - see for example, Case C-342/97, Lloyd Schuhfabrik Meyer v Klijsen Handel BV at [23]. 31. The evidence relied on by Battle in support of its claim under s.3(1)(d) was the same as that relied on in support of its claims under s.3(1)(b) and s.3(1)(c). As mentioned above, the evidence of third party use of the word mercury appears to post-date the registration but even leaving that aside, whilst some (but not all) of that evidence shows use of the word mercury in relation to high visibility reflective products, it does not come anywhere close to discharging the burden on Battle to establish that that word had become customary in the sense explained in Lloyd Schuhfabrik . Indeed, if the word mercury was customarily used in respect of reflective high visibility clothing, it begs the question why the operators of the PPE Suppliers and Haztec websites, having used the word for one item of high visibility clothing, did not then use it for other high visibility clothing products on those same websites (such as the Mimas, Boulton, Minerva and Lavan products referred to above). Further, as I have already noted, both Equisafety and Battle referred to the colour of the garments as being reflective silver and not as being “mercury” and the same is true of the Amazon website where it advertises Battle’s HVSMR gilet (see Appendix 5 to the Re-Amended Particulars of Claim). 32. For these reasons, I reject Battle’s claim that the mark was invalid for being registered contrary to s.3(1) of the Trade Marks Act 1994