IP-2023-000120 - [2025] EWHC 1793 (IPEC)

Invalidity in the trade mark sense is assessed at the date of filing of the relevant trade mark. For these purposes, the relevant date would be 2 May 2013.

The counterclaim for invalidity was filed on 11 January 2024. NHBCL had until then to demonstrate that the Trade Mark had acquired distinctiveness in the UK.

The Trade Mark expired on 2 May 2023, and the Renewed Trade Mark was a nullity for the reasons set out above. There is no current valid and subsisting Trade Mark. That is the end of this Issue.

Distinctiveness is acquired through use. It would have been for NHBCL to demonstrate that the Trade Mark had acquired a distinctive character through use. Even if the Claimants had been able to evidence some use or acquired distinctiveness or character up to 10 April 2018, they cannot demonstrate use of the Trade Mark by the Restored Company or with its consent from 11 April 2018 and its expiry on 2 May 2023.

The Defendants say that the Trade Mark was invalidly registered in any event because it was devoid of distinctive character or consists of a sign designating the intended purpose of the goods and services for which it was registered (s.3(1)(b) and (c) TMA 1994) (see Arnold J in Starbucks HK Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch).

Given my decision about the Renewed Trade Mark and the pending applications to the UKIPO I do not intend to consider distinctiveness or the other aspects of the invalidity issue.