Descriptive Trade Marks - Round 2

Previously we reported on the BABY-DRY and the NEW BORN BABY cases and the effect of these on the registration of descriptive word-only marks at the Community Trade Marks Office.

The following is the first decision by a UK Court which refers to the BABY-DRY decision.

ESB

Fuller Smith & Turner Plc are the registered proprietors of UK trade mark registration ESB registered with effect from 15 April 1988 in respect of "beers" in Class 32. The Claimant, a Mr West, who operates an off-licence business near Calais, sold a pilsner beer called ESP, which stands for "Eastenders Strong Pils". Mr West claimed ESB stands for Extra Special Bitter. It was common ground between the parties that the ESB mark had only been used in respect of bitter.

Claimant's Case

The Claimant applied to the UK Court that the UK trade mark registration should be declared invalid under Section 47 of the UK Trade Marks Act 1994 because it was not distinctive under Sections 3.1(b), (c) and (d) of that Act. Under these provisions the following are not registrable:-

Trade marks which are devoid of any distinctive character.

Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantityof goods or of rendering of services

Trade marks which consist exclusively of signs or indications, which have become customary in the current language or in the bone fide and established practices of the trade.

The Claimant said the mark ESB fell foul of these sections when it was applied for in 1988. He also stated that the saving provision (a mark shall not be refused registration for the above reasons if it has become distinctive as a result of the use made of it before the application date) did not apply.

He also claimed that the mark should be limited to bitter (rather than extending to all beers) on the grounds that it had not been used in respect of all beers for the past five years and therefore could be revoked for non-use under Section 46(1)(a) of the 1994 Act.

Alternatively he argued that the mark should only extend to those parts of the UK in which it had acquired distinctiveness.

Descriptiveness

The Court expressly considered the BABY-DRY case. It also referred to the DOUBLEMINT case (2001 ETMR 623) where the initial refusal to register DOUBLEMINT for chewing gum was rejected as it was held that members of the public would not know what DOUBLEMINT meant (did "double" mean twice as strong or did it mean two...