Case No. EWHC-3296-(IPEC)

17. The first, second and third issues are whether the Mercury mark was invalid for lack of distinctiveness and/or for being descriptive and/or for having become customary. In this regard, so far as relevant, s.3(1) of the Trade Mark Act 1994 provides that: “The following shall not be registered – (a) … (b) trade marks which are devoid of any distinctive character. (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services. (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.” 18. In the course of its submissions, Equisafety did not rely on the proviso to s.3(1). Accordingly, for present purposes I will proceed on the basis that the issues under s.3(1) are simply whether or not the trade mark mercury was distinctive, descriptive and/or had become customary. 19. Underlying s.3(1)(b) is the concept that, to be registrable, a trade mark must serve to identify the goods or services for which registration is sought as originating from a particular undertaking, and therefore to distinguish them from the goods or services of other undertakings (see Case C-265/09 P OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG at [31]). By contrast, what underlies s.3(1)(c) is the need to ensure that signs that are descriptive of the relevant goods or services (because they relate to one or more characteristics of those goods or services) remain free to be used by all traders who wish to offer such goods or services (see Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM at [37]). 20. Whilst the two grounds of invalidity are independent and are capable of standing alone (see Agencja Wydawnicza at [33] and [46]), in the present case Battle’s case is that the mark mercury is descriptive (at least insofar as it is used for goods of a reflective high visibility nature) and to that extent is also not distinctive. Accordingly, the invalidity claims based on s.3(1)(b) and (c) can be considered together and turn on whether the mark mercury was or was not descriptive of some characteristic of the goods that were covered by the registration.