Intellectual Property Enterprise Court

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

Fecha: 11-Mar-2025

Grounds of alleged invalidity

Grounds of alleged invalidity

Iceland alleges that the registration of the Trade Mark was not in conformity with ss.1(1) and 3(1) of the Trade Marks Act 1994 (‘the 1994 Act’) and should be declared invalid pursuant to s.47(1). These are the relevant provisions of the 1994 Act:

‘1. Trade marks.

(1)

In this Act “trade mark” means any sign which is capable—

(a)

of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b)

of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

Absolute grounds for refusal of registration.

(1)

The following shall not be registered—

(a)

signs which do not satisfy the requirements of section 1(1);

…

47.

Grounds for invalidity of registration.

(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).’

The parties are agreed that the validity of the Trade Mark can and should be determined at this application and that no evidence is required.