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

In Heidelberger Bauchemie the CJEU identified (at [27]) the function of the requirement of clarity and precision. It is in order to determine the precise subject of the protection afforded by the mark to its proprietor.

Section 1(1)(a) of the 1994 Act (like the equivalent EU provisions) states that clarity and precision must be satisfied from the point of view of the competent authorities and the public. To date courts appear to have assumed that the perceptions of these groups will amount to the same thing.

In Heidelberger Bauchemie the CJEU singled out economic operators among ‘the public’:

This passage in Heidelberger Bauchemie confirms what that words of the statute appear to mean on their face: the requirement of clarity and precision must be satisfied from the point of view of both the competent authorities and of the public.

In Glaxo Kitchen LJ explained the rationale behind the requirement. The tests of identicality with an earlier trade mark and similarity with an earlier trade mark such that there exists a likelihood of confusion, both contained in s.5(1)-(3) of the 1994 Act, can only be applied workably if both the earlier trade mark and the sign or trade mark in suit, as the case may be, are defined in a sufficiently clear and precise manner. This may imply parallels in the approach to assessment.

Kitchen LJ identified (at [35]) two key aspects of clarity and precision: the sign must always be perceived both unambiguously and uniformly. They are not the same thing, though lack of uniformity could be seen as a subset of ambiguity. Uniformity addresses what Sir John Mummery described in Nestlé as the problem of a ‘multitude of forms’.