[2024] EWHC 1727 (IPEC)

The final issue is the Defendants’ counterclaim. This is for declarations of invalidity in respect of the 2D AGA Mark and the 3D AGA Mark.

Under s.47(1) of the Trade Marks Act 1994, a registration of a trade mark may be declared invalid if (inter alia) it was registered contrary to s.3 of that Act. Under s.3(1)(a), a sign cannot be registered as a trade mark if it does not satisfy the definition of a trade mark contained in s.1(1) of the Act, namely:

Under s.3(2), a sign cannot be registered if it consists exclusively of:

The Defendants assert that the 2D and 3D AGA Marks are invalid because they do not satisfy the test in s.1(1) and that the 3D AGA Mark is also invalid because it does not satisfy the test in s.3(2).

The Defendants’ argument in relation to the 2D AGA Mark is that it does not satisfy the definition in s.1(1) due to a lack of certainty as to its nature and, in particular because, although it was registered as a 2 dimensional mark, it would be understood as being a 3 dimensional mark.

I reject this argument. It is clear from the cases that by reason of s.1(1), the average consumer must be able to identify the mark with clarity and precision. In my judgment, the 2D AGA Mark satisfies his requirement because the average consumer looking at that mark would take it for exactly what it is – a two dimensional representation of a three dimensional object (i.e. of an AGA Cooker of the appearance as depicted). Against this, the Defendants point to the fact that the Particulars of Claim referred (at paragraph 7(c)) to this mark as “the three dimensional mark shown below”. However, the Claimant’s response at paragraph 17 of the Reply and Defence to Counterclaim was that that this was a simple typographical error. At the CMC, HHJ Hacon stated that he accepted that response and that, on that basis, “this point falls away”. I agree.

The Defendants referred to various cases which deal with the nature of the test in s.1(1) – cases such as Case C-321/03 Dyson v Registrar of Trade Marks, Fromagerie Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch) and Société des Produits SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) - all of which emphasised that a mark is not registrable if it could take on a multitude of different appearances. However, I do see that this is of any relevance to the 2D AG Mark which, as I have said, is simply in respect of cookers as depicted.

The Defendants’ argument with regard to the 3D AGA Mark is that it is uncertain because, the Defendants say, the visual representation of the mark (for convenience copied, again, below) is inconsistent with the verbal representation (also set out below):