Intellectual Property Enterprise Court

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

Fecha: 19-Jun-2024

Trade Mark Invalidity

Trade Mark Invalidity

40.

S.47 TMA provides:

(1)

The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

….

41.

S.3(1) is relevant to the Defendants’ counterclaim:

Absolute grounds for refusal of registration

…

(1)

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.

42.

Given the Defendants’ characterisation of s.3(1)(b) TMA as a ‘backstop’ position in this case, I will focus on s.3(1)(c) and (d). The underlying interest protected by s.3(1)(c) TMA is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services: see for example C-51/10 P Agencja Wydawnicza Technopol v EUIPO EU:C:2011:139; [2011] ETMR 34 at [37].

43.

The provisions of s.3(1)(d) TMA overlap with s.3(1)(c) to a certain extent and are directed to preventing the registration of those signs or indications which honest traders customarily use in trade (i.e., signs which are generic). The principles applicable to s.3(1)(d) are now settled by a range of cases such as Case C-517/99 Merz & Krell [2001] E.C.R. I-6959 at [21] to [25] and [35] to [41].