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

Brexit has given rise to potential complications regarding s.1(1)(a). The application for the Trade Mark was made to the EUIPO. The EU Implementing Regulation then in force required the applicant to identify the type of mark sought, as is still the position now.

The applicant for the Trade Mark did so, stating that he sought a figurative mark. At that stage the relevant party regarding the perception of clarity and precision was the EUIPO as the competent authority.

The mark was granted and on the EUIPO file it was expressly identified to be a registered figurative mark. At this point the relevant parties assessing clarity and precision would have been members of the public and, in the event of a dispute involving an earlier mark, the competent authorities.

Following Brexit, so far as the UK is concerned the mark became a UK comparable mark and it now appears on the UK register. Unhelpfully, the UK Trade Mark Rules 2008 do not require a statement as to the type of mark registered (see rule 47). The UKIPO register shows the visual representation of the Trade Mark as in the EUIPO registration and provides the same verbal description. It is silent as to the type of mark. A member of the public consulting the UK register now would not know what type of mark the proprietor intends it to be.

This opens up the possibility that the perception of the mark on the part of the competent authorities and the public before the Trade Mark became a UK comparable mark differs from the perception of the public since it became a comparable mark.

The Defence and Counterclaim was filed on 3 July 2024. On one view, the lack of clarity and precision during the application process and before the registered mark became a comparable mark, if there was any, is water under the bridge and the registration should now be assessed as is. If that were right, there is a further complication: it is possible that the competent authorities would take the trouble to look at the EUIPO file whereas a member of the public would not.

However, s.47(1) of the 1994 Act provides that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of s.3. The statute requires the assessment to be conducted as of the date of registration. As of that date the competent authorities and the public were told that the proprietor intended the mark to be a figurative mark. Clarity and precision must be assessed accordingly.