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

There is no dispute between the parties that the relevant date for the purpose of determining whether a registered trade mark has acquired distinctive character for the purposes of s. 47(1) TMA is the date of the application for invalidity, which in this case is the date of the original (unamended) Counterclaim: 2 February 2023 (per London Taxi Corp Ltd (t/a London Taxi Co) v Fraser-Nash Research Ltd [2016] EWHC 52 (Ch), [2016] ETMR 18 at [179]).

Equally, there is no dispute that this is distinct from the relevant date for assessing inherent and acquired distinctiveness for the purposes of determining whether a registered mark is validly registered, which is the date when the application was filed. That is 2 November 2020 for the Builder Home Mark (UK ‘066) and the Builder Word Mark (UK’010), and 17 December 2021 for the remaining Marks in suit. Evidence relating to facts and matters after that date are inadmissible for the purposes of assessment, save where it is of such a type as to support, or enable the drawing of conclusions about, what the position was as at the filing date (see Case C-192/03 Alcon Inc v OHIM [2004] ECR 1-8993 at [39] to [40]).

The relevant date for assessing whether a mark has a reputation is the date that the proprietor of the mark alleges infringing use began. In relation to Category 1 alleged infringement, no date of first use has been alleged, so that must at the latest be the date of the Claim Form: 17 October 2022. In relation to Category 2 alleged infringement, that is the date of the LinkedIn Post, which was a date unknown in July 2022.