[2024] EWHC 1727 (IPEC)

In determining whether a mark can be identified with clarity and precision, the average consumer would have regard to both its visual representation and the verbal representation (see Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335 at [34] and [63]). In my judgment, the average consumer would not see any inconsistency between the visual representation and verbal representation set out above. In particular, the words quoted above make it clear that the mark relates to “this” range cooker which, in my judgment, the average consumer would take as a reference to the cooker depicted and to no other. The only qualification to this being that the words make clear that colour is not an element of the mark. Other than that, I do not think that the average consumer would take the words as seeking to expand on or alter that nature of the mark as depicted in the visual representation. This is not, therefore, a case like Glaxo, where the words made it clear that the visual representation was merely “an illustration of one form the mark may take” (see per Kitchin LJ at [79]). Rather, in the present case, the average consumer would take the words to be an attempt to describe the significant features of the cooker that has been depicted.

The Defendants also argue that the 3D AGA Mark is invalid because it did comply with the requirements of s.3(2). This is because, as they put in their skeleton argument, “range cookers are required by their very nature and purpose to be a certain shape. For example, range cookers must have a flat top surface with round hobs, they must have doomed heads to keep in the heat from the hobs, and they must have oven doors on”.

I have no hesitation in rejecting this argument. As appears from the Fromagerie Bel case (at [48]—[50]), in order to determine a claim under s.3(2)(a) and (c), it is necessary to identify first the essential characteristics of the sign in issue (i.e. its most important elements). Here, Mr Johnson suggests that they include the top plate front profile, the top plate rear upstand, the hot plate insulating cover and polished dome, the hotplate insulating cover and cast iron handle supporting arms, the corner top plate buttons, the door hinge lugs, the door profile and the door handles. I really cannot see that the shape of any of these essential characteristics can be said to be exclusively the result of the fact that the thing depicted is a cooker. Still less do I think that any of these features was necessary to obtain a technical result. Rather, it seems to me that the shape of these features are distinctive of the AGA Cooker and involved aesthetic considerations.

I have to say that I do not understand the basis on which it was asserted that the 3D AGA Sign consisted exclusively of a shape or other characteristic which gave substantial value to the cooker, nor was this explained in the Defendants’ skeleton argument or in their closing submissions. I therefore reject that assertion.

For these reasons, I reject the Defendants’ counterclaim for declarations of invalidity in respect of the 2D AGA Mark and the 3 D AGA Mark.