IP-2024-000037 - [2025] EWHC 547 (IPEC)

The statutory requirement under s.1(1)(b) of the 1994 Act has been the subject of extensive judicial and academic debate for many years. The authors of Kerly’s Law of Trade Marks and Trade Names, 17^th ed., summarise the issues arising at paragraphs 2-104 to 134, introducing the reader to the German Theory, the Second Theory and The Cynic’s Theory.

The requirements of s.1(1)(a) and (b) respectively are closely related. The nuances and possible alternative interpretations of ‘capable of distinguishing’ have not been explored in the authorities referred to above. The effects of the two requirements of s.1(1)(a) and (b) respectively, as contained in equivalent EU legislation, were not given a comparative analysis. On the particular facts variously considered, the two requirements seem to have been viewed as sufficiently intertwined such that either both or neither was met.

So far as s.1(1)(b) is concerned, it seems clear that the capacity to distinguish is to be assessed from the perspective of the relevant consumers, see Libertel at [65], which probably means the average consumer.