Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)

“[40] …First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings: Windsurfing (cited above) at [46], Philips v Remington (cited above) at [35], Joined Cases C-53/01 to C-55/01 Linde AG, Winward Industries Inc and Rado Uhren AG [2003] ECR I-3161 at [40], [47], Case C-218/01 Henkel KGaA v Deutsches Patent- und Markenamt [2004] ECR I-1725 at [48], Joined Cases C-456/01P and C-457/O1P Henkel KGaA v Office for Harmonisation in the Internal Market [2004] ECR I-5089 at [34], Joined Cases C-468/01P to C-472/01P Procter & Gamble Co v Office for Harmonisation in the Internal Market [2004] ECR I-5141 at [32], Case C-136/02P Mag Instrument Inc v Office for Harmonisation in the Internal Market [2004] ECR I-9165 at [29] and Case 64/02P Office for Harmonisation in the Internal Market v Erpo Möbelwerk GbmH [2004] ECR I-10031 at [33].

[41] Secondly, the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration is applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect: Philips v Remington at [59], [63], Linde at [41], Case C-104/01 Libertel Group BV v Benelux-Merkenbureau [2003] ECR I-3793 at [62]-[63], Henkel v Deutsches Patent- und Markenamt at [50], Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 at [34], Procter & Gamble v OHIM at [33], Henkel v OHIM at [35], Case C-445/02P Glaverbel v Office for Harmonisation in the Internal Market [2004] ECR I-6267 at [20], Case C-404/02 Nichols plc v Registrar of Trade Marks [2004] ECR I-8499 at [23], Nestlé v Mars (cited above) at [25], Case C-173/04P Deutsche SiSi-Werke GmbH & Co. Betriebs KG v Office for Harmonisation in the Internal Market [2006] ECR I-551 at [25] and C-24/05P August Storck KG v Office for Harmonisation in the Internal Market (Storck I) [2006] ECR I-5677 at [23].

[42] Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others: Linde at [42], [48], Libertel v Benelux-Merkenbureau at [65], Henkel v Deutsches Patent- und Markenamt at [52], Procter & Gamble v OHIM at [36], Henkel v OHIM at [38], Glaverbel v OHIM at [21]-[23], Nichols at [24]-[28], Mag v OHIM at [30], OHIM v Erpo Möbelwerk at [34]-[35], Case C-447/02 KWS Saat AG v Office for Harmonisation in the Internal Market [2004] ECR I-10107 at [78], Deutsche SiSi-Werke v OHIM at [27]-[28] and Storck I at [24]-[25].

[43] Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character: Windsurfing Chiemsee v Huber at [49]-[53], Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-1318 at [23], Philips v Remington at [60]-[62], Libertel v Benelux-Merkenbureau at [67], Nestlé v Mars at [31] and C-25/05P August Storck KG v Office for Harmonisation in the Internal Market (Storck II) [2006] ECR I-5719 at [75].

[44] Fifthly, with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking: Philips v Remington at [64], Nestlé v Mars at [26], [29] and Storck I at [61].

[45] Sixthly, a trade mark may acquire a distinctive character in consequence of the use of that mark as part or in conjunction with another trade mark (which may itself be a registered trade mark): Nestlé v Mars at [27]-[30], [32].

“[52] …The applicant must prove that, as a result of the use he has made of the mark, a significant proportion of the relevant class of persons perceive the goods designated by that mark, as opposed to any other mark which might also be present, as originating from a particular undertaking. Put another way, the mark must have come to identify the relevant goods as originating from a particular undertaking and so to distinguish those goods from those of other undertakings.”

“[102] The test for whether a mark which has no inherent distinctiveness has nevertheless acquired a distinctive character must now be regarded as settled. It is that a significant proportion of the relevant class of consumers perceive goods designated by the mark applied for as originating from a particular undertaking. It is a requirement of Article 3(3) of the Directive that there has been use of the mark applied for before the date of application. But there is no requirement that the use should be of the mark on its own: the use may be in conjunction with another mark or marks.”