West (t/a Eastenders) v Fuller Smith & Turner Plc

This is an appeal from the judgment of Mr Christopher Floyd QC sitting as a Deputy Judge of the Chancery Division, in which he rejected a challenge to the validity of the respondent’s (“Fullers”) United Kingdom registered trade mark number 1341510 "E.S.B.", but ordered its revocation in respect of all goods except bitter beers. He ordered the revocation to take effect from 21 September 1995, which is five years from the date on which the procedure for registration had been completed. Fullers cross-appeal against the order for partial revocation.

As granted, the mark was registered in respect of ‘beers included in class 32’ as of 15 April 1988 ("the date"). It was registered under the provisions of the Trade Marks Act 1938, and was originally placed in class B after evidence of use and advertisement before acceptance. I can take the history of the use of the mark from the judgment of the judge, which was not challenged on this point.

In 1969, Fullers started brewing a beer known as Winter Bitter. This beer was brewed only from October to March, and it was a strong ale. It was successful and in 1971 Fullers decided to produce it all the year round. It was renamed Extra Special Bitter, which was soon abbreviated to E.S.B. on brewing records, cask labels and pump clips. While brewing records and cask labels are of concern only to the brewer and the publican, pump clips identify the beer to the public. The beer quickly won recognition as an outstanding strong ale. Between 1978 and 1988 it had won the ‘Best Strong Ale’ class at the Great British beer Festival on seven occasions. It won the ‘Best Beer’ class three times during the same period.

The manner in which the mark has been used has changed over the years. In 1989, the full stops after the initials were removed, and the initials were surrounded by gold circles and other material including the mark ‘Fullers’. The current mark is somewhat different from this, but retains the gold circles and the ‘Fullers’ mark.

The use of the mark has been restricted to bitter. The beer has been sold throughout Fullers’ tied estate, which is located in the South of England, but the judge found that it had by the date acquired a degree of national renown.

The mark was attacked only on the so-called ‘absolute’ grounds found in section 3 of the Trade Marks Act 1994. By the amended Particulars of Claim, the claimant alleged that the mark offended against subsections (1)(b), (1)(c) and (1)(d) of section 3 of the Act. The pleaded grounds of objection were (1) that the mark comprises three common letters that are devoid of any distinctive character and that other traders are likely to wish to use in the course of their own business (2) that the letters are a common abbreviation or descriptor for a recognised category of ales, viz. Extra Strong (or Special) Bitter, and the mark accordingly consists exclusively of signs or indications which may serve in trade to designate kind, quality and intended purpose of goods, and (3) the mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide practices of the trade.

The claimant particularly relied on the sale of extra strong or extra special bitter before the date of the application for registration by five named breweries, and on the use of ‘ESB’ by two breweries before the date, Mitchells of Lancaster Limited and the Big Lamp Brewery.

Finally on the question of distinctiveness, the claimant alleged that the mark had not since registration acquired distinctiveness. On the question of ‘acquired distinctiveness’, as I shall call it, passages from a number of publications, and the use of ESB by Mitchells of Lancaster and the Big Lamp Brewery in the United Kingdom, and numerous breweries in the United States, were relied on.

The claimant also made an allegation of non-use. It was said (and accepted) that the mark had only ever been used on bitter beer, and that the scope of the registration should be reduced by revoking the mark in part under section 46 of the 1994 Act so as to limit it either to bitter beers or ‘so as to specifically exclude lager or pils or any other beers which are not similar to bitter beer’.

The objections under 3(1)(b), (c) and (d) all go to the distinctiveness of the mark, and it is convenient to deal with them together. The judge held that the use of the mark by Fullers had been extensive. He said that the use was ‘in a distinctive and trade mark manner, to indicate their beer in contradistinction to others’, and he considered that the consumer would understand that the mark was used by Fullers as a trade mark. He found that between 1973 and 1996 (when they stopped selling the product) Mitchells of Lancaster had sold about 20,000 barrels of their beer, mainly to their 50 tied houses in Lancaster and Cumbria, and he found also that Mitchells had not actually abbreviated their ‘Extra Special Bitter’ name to E.S.B until some time in 1988, and that the use before that date had been by customers, any use before 1988 being very localised and limited. The judge found that the Big Lamp Brewery had used ESB from a date in 1987–9, selling the beer through a corner public house in Gateshead called the Wheatsheaf and some other outlets until 1995 at the rate of some 50 barrels a year, but that on the balance of probabilities the sign ESB had not been used on this beer before the registration date, and the same went for a beer sold infrequently by Marston Moor brewery between 1988 and 1992. It followed that it was not established that ESB had been used in the trade except by Fullers and to some extent by Mitchells before the date of registration.

Both parties called expert evidence. The judge found that the evidence of the claimant’s experts was influenced by their experience of the use of ‘ESB’ in the United States, where it is widely used, and he preferred the evidence of the defendant’s experts. His grounds for doing so are not criticised. He rejected the claimant’s contention, advanced on the basis of his experts’ views, that ESB or Extra Special Bitter designated a recognisable style of beer in the United Kingdom.

The judge also found that the defendant’s experts were right to accept that ‘at times, people used the terms E.S.B. and Extra Special Bitter interchangeably’. He continued

‘If a beer is marketed as Extra Special Bitter, then the evidence supports the suggestion that it may, by some people, be abbreviated to E.S.B. Whether this will happen will depend on the circumstances. Good examples of circumstances where it will not occur are the Simpkiss (marketed pre 1988) and Adnams (post 1988) labels, where emphasis is given to particular words, or Smiles (where additional material – [the word] Exhibition) – is included in the name of the beer).’

The judge’s conclusion on distinctiveness was as follows:

‘Viewing the evidence as to the position in 1988 as a whole, I do not think it supports the suggestion that in 1988, the average consumer who saw the mark E.S.B. used in relation to beer would take it as consisting exclusively of an indication of the kind or quality of the beer. The main use of the mark had been by Fullers and Mitchells. Fullers’ use was, as I have already held, clearly in a trade mark sense. Mitchells certainly regarded the initials E.S.B. as a brand by 1988. Those consumers who knew what the letters stood for would not take it as making any clear statement about the kind or quality of the beer. There is therefore no reason why they would not still understand the initials to be a trade mark.’

The judge went on to consider whether ‘ESB’ was a customary term for beer. For this purpose, he considered for a second time every alleged instance of use of the abbreviation relied on. He concluded that it was wrong to draw the inference that there had been any customary use of the initials. In the particular cases of Ann Street, Simpkiss and Blue Anchor (Extra Special Bitter) and Smiles (Extra Strong Bitter), where there was no suggestion of the use of initials alone, but only of the descriptive phrase, he found that on the evidence it would be wrong to suppose that there was a likelihood that the trade or public had abbreviated the phrase. He accordingly rejected the objection.

The 1994 Act was passed to implement the provisions of Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) (‘the Directive’). Section 3 corresponds closely to the provisions of Article 3 of the Directive and provides as follows, so far as relevant:

3.

(1) The following shall not be registered—

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

(b) trade marks which are devoid of any distinctive character,

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Section 3 has been the subject of a number of domestic decisions, of which the most important relied on before us is that of the Court of Appeal in Healing Herbs v Bach Flower Remedies Ltd (‘BACH FLOWER REMEDIES’) [2000] RPC 513. As a domestic provision implementing the provisions of the Directive, section 3 must be construed in conformity with the provisions of the Directive. This is not quite an end of the matter, as the provisions of Council Regulation 40/94 of 20 December 1993 on the Community Trade Mark are in substantially identical terms, and are the subject of a number of important decisions of the Court of First Instance and the Court of Justice on appeal from the European Trade Mark Office (the Office for the Harmonisation of the Internal Market (Trade Marks and Designs), or OHIM). The relevant provisions of the Directive are as follows.

‘Article 3

Grounds for refusal or invalidity

1.

The following shall not be registered or if registered shall be liable to be declared invalid:

(a)

signs which cannot constitute a trade mark;

(b)

trade marks which are devoid of any distinctive character;

(c)

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods;

(d)

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

…

(g)

trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

(h)

trade marks which have not been authorized by the competent authorities and are to be refused or invalidated pursuant to Article 6 ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention'.

…

3.

A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.’

In the 1994 Act, the proviso to section 3(1) deals with marks which have acquired distinctiveness before registration, and section 47(1) deals with distinctiveness acquired after registration:

‘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).

Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.’

Mr West’s grounds of appeal on the issue of distinctiveness may be summarised as follows.

Mr Bloch QC, for Mr West, submits that at the date of registration the mark was distinctive ‘in vacuo’ but that by that date the use made of it by Fullers had rendered it incapable of distinguishing the products of Fullers from those of any other brewery. He relies in particular upon the results of his cross-examination of certain of Fullers’ witnesses, in which he sought to draw a distinction between the impact of the mark E.S.B. in (for example) ‘Arundel E.S.B.’ on the one hand from the impact of the mark ‘Cortina’ in ‘BMW Cortina’ on the other. The former coining is not inappropriate, he submits, while the latter is obviously incongruous. He submits that this simple example shows that ‘Cortina’ is an example of a mark possessing distinctive character, whereas E.S.B. is an example of a mark devoid of any distinctive character. I do not think that this example is helpful. Marks can vary widely in the impact they make upon the interested public. Some may be very much stronger than others, without the less strong being open to the objection of being devoid of any distinctive character. To contrast E.S.B. with a strong mark and conclude that it is less strong does not lead to the conclusion that it cannot function as a mark at all.

In many cases, there is substantial overlap between the objection established by section 3(1)(b) and that of section 3(1)(c). ‘Perfection’ for soap is perhaps an example of a mark objectionable under 3(1)(b), and ‘Orlwoola’ for textiles an example of a mark objectionable under 3(1)(c). If at the date of registration, the mark served as a trade mark to the interested public (as the judge held it did in fact) then I do not see how it can be regarded as devoid of any distinctive character, particularly since Mr Bloch accepts that in vacuo (as he put it) the mark possessed distinctiveness at the date. The judge correctly held that the mark would only offend against section 3(1)(b) if it were devoid of any distinctive character in 1988, and this would only be the case if the average consumer knew that the sign E.S.B. was used exclusively as an indication of the kind or quality of the goods or was in common use. In this context, the word ‘devoid’ is construed strictly, as the decision in Case C-383/99P Procter & Gamble v OHIM (BABY-DRY) (below) makes clear, and the concession that the mark possesses distinctiveness in vacuo seems to me to be fatal to the objection.

The real discussion in this case therefore turned on the objection under section 3(1)(c) and to a lesser extent that under section 3(1)(d). The scope of the objection under section 3(1)(c) has been extensively discussed in the ECJ, and before turning to the cases I should briefly mention the matter of infringement. The rationale of the objection under section 3(1)(c) (and a fortiori section 3(1)(b)) is that individual traders should not be able to monopolise as trade marks terms which all traders should be allowed to use. But the defences available to an allegation of infringement are also, in part, designed to protect traders who make use of descriptive terms, geographical designations and the like. The question which has concerned the ECJ is whether the availability of these defences should affect the approach which is taken to the registrability of these marks.

The defences to the action for infringement, so far as relevant, provided by section 11 of the 1994 Act which is derived from Article 6 of the Directive, are as follows.

‘(2) A registered trade mark is not infringed by—

(a) the use by a person of his own name or address,

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters. ’

Section 3(1)(c) thus finds its echo in section 11(2)(b). Although the desirability of allowing marks with a substantial descriptive component on to the register and requiring traders to establish in legal proceedings that the nature of their use of such marks is such as to provide them with a defence is disputable, it is now the law that the existence of the defence is material to the scope of the prohibition on registration contained in sub-section 3(1)(c). In the BABY-DRY case, Case C-383/99P Procter & Gamble v OHIM [2002] ETMR 22, the Court of Justice considered the corresponding question under Articles 7(1) and 12 of Council Regulation 40/94, which are (so far as relevant) in terms identical to Articles 3 and 6 of the Directive and stated:

‘37 It is clear from those two provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is, as both Procter and Gamble and the OHIM acknowledge, to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function.

…

39

The signs and indications referred to in Article 7(1)(c) of Regulation No. 40/94 are thus only those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the goods or services concerned or their essential characteristics.’

It is notorious that this used not to be the approach under the Trade Marks Act 1938: see Bailey & Co v Clark, Son & Morland (‘Glastonbury’s’) (1938) 55 RPC 253 (HL) and Re Yorkshire Copper Works’ Application (‘Yorkshire’) (1954) 71 RPC 150 (HL). The approach taken in those cases (which were geographical marks) was closer to that articulated by the Court of Justice before the BABY-DRY decision in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, [1999] ETMR 585 (the references in this case are to the provisions of the Directive):

‘24. It should first of all be observed that Article 3(1)(c) of the Directive provides that registration is to be refused in respect of descriptive marks, that is to say marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for.

25.

However, Article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

26.

As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.

…

28.

In addition, Article 6(1)(b) of the Directive, to which the national court refers in its questions, does not run counter to what has been stated as to the objective of Article 3(1)(c), nor does it have a decisive bearing on the interpretation of that provision. Indeed, Article 6(1)(b), which aims, inter alia, to resolve the problems posed by registration of a mark consisting wholly or partly of a geographical name, does not confer on third parties the right to use the name as a trade mark but merely guarantees their right to use it descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices in industrial and commercial matters.’

I think that it is likely that in the BABY-DRY case the Court of Justice has departed from what it said in Windsurfing Chiemsee, but the former is the most recent authority on the approach to be taken. The decision of the Court of First Instance in Case T-193/99 Wm Wrigley Jr Company v OHIM (‘DOUBLEMINT’) judgment of 31 January 2001 [2001] ETMR 623 is illustrative of the manner in which the principles are applied in practice (it precedes the BABY-DRY case but is cited with approval by Advocate General Jacobs in paragraphs 19ff. of his Opinion):

‘19. Under Article 7(1)(c) of Regulation No 40/94 - the only provision in question in this case -, “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods ... or other characteristics of the goods ... are not to be registered”.

20.

It was thus the intention of the legislature that - subject to Article 7(3) of Regulation No 40/94 - such signs should, by their purely descriptive nature, be regarded as incapable of distinguishing the goods of one undertaking from those of another. By contrast, signs or indications whose meaning goes beyond the merely descriptive are capable of being registered as Community trade marks.

21.

In this case, the Board of Appeal states in the contested decision that the term DOUBLEMINT is a combination of two English words, namely the word “double” - which means “consisting of two members, things, layers, sets” and “of two or more times the usual size, value, strength” - and the word “mint” - which means, inter alia, “any of various aromatic ... plants of the genus Mentha, which bear lilac flowers and include spearmint, peppermint, and other culinary herbs” and “a sweet or chocolate flavoured with an extract of such a plant, especially peppermint”. According to the Board of Appeal, that term immediately indicates to potential consumers that the goods in question contain “twice the usual amount of mint” or that they are “flavoured with two varieties of mint”.

22.

The Board of Appeal does not find it at all relevant that both the word “double” and the word “mint” have alternative meanings, on the ground that a consumer who sees the term at issue assumes, in the Board of Appeal’s view, that the product in question contains “a great deal of mint” or “the flavour of mint”. It concludes that the term at issue is purely descriptive and cannot therefore be registered as a Community trade mark.

23.

The Board of Appeal was wrong in regarding the term DOUBLEMINT as exclusively descriptive. …’

and the Court proceeds to demonstrate how DOUBLEMINT is not exclusively descriptive. It might describe various combinations of more than one type of mint, such as spearmint and peppermint. The conclusion is

‘29. Therefore, the numerous meanings of the composite term DOUBLEMINT - each element of which is a common word of the English language - are immediately apparent, at least by association or allusion, to an average English-speaking consumer and thus deprive that sign of any descriptive function, for the purposes of Article 7(1)(c) of Regulation No 40/94, whereas for a consumer who does not have a sufficient mastery of the English language the term at issue will, by its very nature, have a vague and fanciful meaning.

30.

It follows from all the foregoing considerations that the term DOUBLEMINT, when applied to the goods referred to in the application for registration, has an ambiguous and suggestive meaning which is open to various interpretations. The multiplicity of possible semantic combinations therefore precludes the consumer from remembering one of them in particular. Accordingly, the term at issue does not enable the public concerned immediately and without further reflection to detect the description of a characteristic of the goods in question.

31.

Consequently, that term cannot be characterised as exclusively descriptive.’

The Doublemint case is of course a case on its own facts, but it is important in providing a concrete example of the approach taken by the Court of Justice to Article 3(1)(c) of the Directive, and thus of the correct approach to section 3(1)(c). The basic message is that section 3(1)(c) does not present a high hurdle for the applicant to surmount.

The judge summarised the principles to be derived from the cases in four propositions.

‘(i) Sections 3(1)(b), (c) and (d) are not designed to exclude from registration marks which merely possess an indirect descriptive connotation: the words ‘devoid of any’ in sub-section (b) and ‘exclusively’ in (c) and (d) are to be given effect to;

(ii)

the fact that some mental activity is necessary in order to discern a reference to the quality of or a characteristic of the goods may assist in its registrability;

(iii)

uncertainty as to the precise nature of the reference to the quality or character of the goods will also assist;

(iv)

marks which can only refer directly to the quality or character of the goods (BITTER for beer would be an example) must be refused registration. This is because such a mark does not ‘differ from the usual way of designating the goods or their characteristics’ and because it may ‘serve in normal usage from a consumer’s point of view to designate either directly or by reference to one of their essential characteristics’ the relevant goods.’ (judgment, paragraph 16)

In my judgment this summary of the principles so far as applicable to the present case is not open to criticism. The judge concentrated on the matters which arose in connection with ESB.

Before the judge, and before this court, Mr Bloch QC submitted that it was not sufficient that the mark had some distinctive capacity. He submitted, basing himself on the Bach Flower Remedies case (above), that the descriptive content of the mark must be ‘displaced’, by which he meant that the descriptive sense must have been lost to the interested public, who must either consider that the mark has a purely distinctive signification or must attach no meaning to the mark when they see it in use. He said that the evidence that persons might use the initials ‘E.S.B.’ in ordinary speech in referring to ‘Extra Special/Strong Bitter’ meant that the mark had such a descriptive signification, which was not displaced.

The principal ground of decision in the Bach Flower Remedies case was that a mark might be objectionable under section 3(1)(a) of the Act if it did not satisfy the definition of ‘trade mark’ in section 1(1), that is ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’. The judge had failed to consider whether E.S.B. satisfied the requirement that it should be ‘capable of distinguishing’ Fullers’ beer from that of other brewers, as those words were interpreted in the Bach Flower Remedies case.

In the Bach Flower Remedies case, the judge had found that at the date of registration and thereafter the expression ‘Bach Flower Remedies’ and the word ‘Bach’ would have been used and understood in a generic sense. Morritt LJ observed that the averagely informed, observant and circumspect consumer must know the sense in which the word Bach was used and understood and that sense was generic. In paragraph 39 of his judgment, he concludes

‘For these reasons I conclude that the expression Bach Flower Remedies and the word Bach both in 1979, 1989 and 1991 failed to satisfy section 1(1) so that the registrations of those marks was in breach of section 3(1)(a). It follows that I would dismiss the appeal on this basis.’

In dealing with a submission that provided the mark is distinctive to a significant proportion of the relevant class it does not matter that it is not distinctive to the rest, Morritt LJ said this (paragraph 44 of his judgment):

‘The suggested conclusion,…appeared to be that for the purposes of the proviso to section 3(1) and section 47(1) a mark might acquire a distinctive character from use if a significant proportion of the relevant class recognised it to bear both a distinctive character and descriptive connotations.

45.

I do not accept those submissions …. First, it has never been the law…that a mark must be universally recognised as distinctive. If it were otherwise the rights of traders would be dependent on the views of the ignorant and illiterate…what is necessary, in the words of the Act and the Directive, is that the word or mark should “distinguish the goods or services of one undertaking from those of other undertakings” (section 1(1)) so as “to guarantee the trade mark as an indication of origin” (10th Recital to the Directive). If to a real or hypothetical individual a word or mark is ambiguous in the sense that it may be distinctive or descriptive then it cannot comply with the requirements of the Act for it will not provide the necessary distinction or guarantee. It is in that sense that a common or descriptive meaning must be displaced.’

Chadwick LJ put the matter slightly differently, again in the context of the objection under section 3(1)(a) and the non-applicability of the proviso to section 3(1):

‘What is required, in the context of the proviso, is that persons in [the relevant] class, or at least a significant proportion of persons in that class, identify the words or word in question as distinctive of the origin of the goods. But before the need to consider the proviso can arise, it is necessary that the words or word in question should have the capacity to distinguish. In that context, the question is whether the words or word are so widely understood amongst the relevant class in their generic or descriptive meaning that they have become incapable of identifying, in the minds of the members of that class, the goods as originating from a particular undertaking. To put the point another way, the test will not be satisfied, in the context of sections 1(1) and 3(1)(a) of the Act of 1994, if consumers of the relevant product who are reasonably well informed and reasonably observant and circumspect, or at least a significant proportion of such consumers, would regard the words or word as generically descriptive; so that they would find it impossible to say that the words or word identify, for them, the goods as originating from a particular undertaking.’

I do not understand Chadwick LJ’s formulation to be different as a matter of substance from that of Morritt LJ, as it is plain that he considers that the requirement cannot be met if a ‘significant proportion’ of consumers considered the words to be generically descriptive.

Since the Bach Flower Remedies case was decided, the ECJ has decided the Philips Three-Headed Razor case, Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Limited (Judgment of 18 June 2002). This was a reference by this Court to the ECJ, and the first question referred was ‘Is there a category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of [the Directive] which is none the less excluded from registration by Article 3(1)(a) of the Directive as being incapable of distinguishing the goods of the proprietor from those [of] other undertakings?’ The answer was in the negative, the Court holding that

‘…there is no class of marks having a distinctive character by their nature or by the use made of them which is not capable of distinguishing goods or services within the meaning of Article 2 of the Directive.’

Both counsel suggested that it is not possible for the principal ground of decision of this court in the Bach Flower Remedies case to stand with this decision, a suggestion which I accept. The effect of the judgment of the ECJ is that the second half of the definition of ‘trade mark’ in section 1(1) of the Act (corresponding to Article 2 of the Directive) must be viewed as imposing no distinctiveness requirement separate from that imposed by Articles 3(1)(b), (c) and (d) and 3(3). Thus, there is no requirement that the mark be both ‘capable of distinguishing’ and ‘not devoid of any distinctive character’.

Mr Bloch contends, however, that the logic of the Bach Flowers Remedies is equally applicable to marks which naturally may have a descriptive meaning to some. Whether or not this contention is sound, it is not relevant to the present case. In the Bach Flower Remedies case, the mark had been used for many years in a wholly descriptive sense. It was conceded that at the date of registration it offended against section 3(1)(c). As Mr Wyand QC submitted, it was tantamount to an attempt to register the word ‘bread’ for bread. The judge in the present case found that while the mark had, for some, a descriptive connotation, it had in addition a distinctive character. Descriptiveness and distinctiveness in fact are not mutually exclusive. A mark may be both distinctive (in that it communicates a message as to the trade origin of the goods to which it is applied) while simultaneously conveying a clear description of those goods. Such marks (an example from the cases under the 1938 Act is ‘Weldmesh’ for steel mesh in roll or sheet form made from wire or rods, said to be ‘100% distinctive in fact’) have a substantial advantage in trade, since they have the enormous advantage of combining both distinctive and descriptive significations.

I have quoted the judge’s conclusion on distinctiveness in fact in paragraph 13 above. For the reasons I have given, I consider that this finding is determinative of this appeal so far as the objection under section 3(1)(c) is concerned. It is irrelevant that the initials E.S.B. may also have a descriptive connotation to some, and the appeal against the judgment on section 3(1)(c) must fail.

The judge set out his approach to the objection under section 3(1)(d) in the following passage:

‘However, in the light of the evidence that Extra Special/Strong Bitter may sometimes be shortened to E.S.B. it is relevant to consider the use by traders of the terms Extra Special/Strong Bitter before 1988. If these terms were customary, and were used in such a way that they were likely to be abbreviated to E.S.B., then E.S.B. itself would be a customary term. As Mr Bloch QC pointed out, even if the brewer is using Extra Special Bitter, his customers may order E.S.B.. If such a use had become customary, it would be wrong to maintain the registration of the mark.’

Given the evidence to which I have referred that the terms ‘Extra Strong/Special Bitter’ might be abbreviated to ‘E.S.B.’, the judge accepted that if there was evidence that they were customary, and if there was evidence that they were likely to be abbreviated to E.S.B., then that would be a customary term. The judge found that in the light of the uses proved it would be wrong to infer a likelihood that the abbreviation would be used. Other material such as dictionaries, guides and the like did not help. The defendant failed to establish that the initials were a sign or indication customary in the current language or established practices of the trade. The judge accordingly rejected this ground of objection.

The circumstances in which the Court of Appeal will interfere with a finding of fact of this kind are discussed in a number of cases. The reluctance of the Court of Appeal to interfere will of course depend on many factors, identified in the speech of Lord Hoffmann in Biogen v Medeva [1997] RPC 1, 45:

‘The question of whether an invention was obvious had been called “a kind of jury question” (see Jenkins LJ in Allmanna Svenska Elektriska A/B v The Burntisland Shipbuilding Co Ltd (1952) 69 RPC 63, 70) and should be treated with appropriate respect by an appellate court. It is true that in Benmax v Austin Motor Co Ltd [1955] AC 370 (1955) 72 RPC 39, 42, this House decided that, while the judge’s findings of primary fact, particularly if founded upon an assessment of the credibility of witnesses, were virtually unassailable, an appellate court would be more ready to differ from the judge’s evaluation of those facts by reference to some legal standard such as negligence or obviousness. In drawing this distinction, however, Viscount Simonds went on to observe, at page 374, that it was “subject only to the weight which should, as a matter of course, be given to the opinion of the learned judge”. The need for appellate caution in reversing the judge’s evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge’s overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation.’

To this may be added what Hoffmann LJ said in Re Grayan Building Services Ltd [1995] Ch 241, 254 as applied in this court to the issues of fair dealing with copyright works in Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605, 612:

‘The judge is deciding a question of mixed fact and law in that he is applying the standard laid down by the courts ([in that case] conduct appropriate to a person fit to be a director) to the facts of the case. It is in principle no different from the decision as to whether someone has been negligent or whether a patented invention was obvious: see Benmax v Austin Motor Co Ltd [1955] AC 370. On the other hand, the standards applied by the law in different contexts vary a great deal in precision and generally speaking, the vaguer the standard and the greater the number of factors which the court has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere with the trial judge’s decision.’

The determination which the judge made in the present case is a good example of a ‘multi-factorial’ determination where the evidence of witnesses has been assessed by an experienced tribunal.

Nothing relied on persuaded me that the judge had made any error in his assessment of the facts and this ground of opposition must equally fail.

In my judgment, the judge’s conclusion that the mark was not objectionable under section 3(1) in 1988, and that the proprietors did not have to rely upon the proviso to section 3 to obtain registration was sound. Nonetheless, he undertook what he rightly described as the artificial exercise of identifying those parts of the evidence which would support a contention that the mark had, through use, acquired distinctiveness by that date. He also considered the facts relevant to the question of distinctiveness acquired after registration (the second sentence of section 47(1)).

I have no doubt that in the same way that a mark can gain distinctiveness after registration, so also it can lose distinctiveness because of the use which is made of it by the proprietor. Where the mark is not objectionable under section 3(1), nonetheless if the proprietor’s acts render the mark a common name in the trade for a product in respect of which it is registered, or if it misleads the public, it may be revoked to that extent (section 46(1)(c) and (d)). These objections are narrower than the objections under section 3(1)(c) and (d) but it must be remembered that the latter are available only at the date of registration. Section 46(1)(c) and (d) are not relied on in this case. The judge concluded that the use that Fullers had made of the mark might have served to displace the objections under section 3(1)(c) and (d), having considered the (admittedly statistically non-significant) survey evidence advanced by Fullers. He also noted that Fullers always used ‘E.S.B.’ or ‘ESB’ in combination with ‘Extra Special Bitter’ and ‘Fullers’, which was accepted to be a strong house mark. Mr West also placed great store by a remark made by one of Fullers’ brand advisers, Media Solutions Group, in 1997, that ‘E.S.B.’ was a generic:

‘E.S.B.’s name is an ale generic. Other brewers make E.S.B.’s. To expand it to Extra Special Bitter compounds the problem.’

The judge rightly did not attach too much weight to this comment: it would have been true in North America, that its author was influenced by North American experience, and that it was not supported by the other evidence in the case.

I think it might be fairly said that the evidence of the use of the mark made after registration could throw light on the questions arising under section 3(1), although care must be exercised if it is used for that purpose. The judge evidently thought that it helped, rather than hindered, the mark, and I can see no reason to disagree with him.

It was accepted that the mark had only ever been used by Fullers in respect of bitter beer. The question was whether it was for that reason vulnerable to revocation under section 46(1), which provides, so far as relevant, as follows.

‘(1)   The registration of a trade mark may be revoked on any of the following grounds—

(a)

that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

…

(5)

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.’

The mark is registered in respect of ‘beer’. The question is whether it is right to restrict this specification. The judge held that the mark ought to be revoked save in respect of ‘bitter beer’. The cross-appeal raises the question whether he took the right approach, and, if he did, whether there was evidence to support the restriction that he considered appropriate.

There has been a difference of judicial opinion on the right approach to section 46(5). The question has now been considered by the Court of Appeal in Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civ 1828. In that case, Aldous LJ, with whom Waller and Scott Baker LJJ agreed, have approved what is said in Decon v Fred Baker [2001] RPC 293.

Aldous LJ sets out the principles to be followed in paragraphs 29-31 of his judgment:

‘29 …Because of section 10(2) fairness to the proprietor does not require a wide specification of goods or services nor the incentive to apply for a general description of goods and services. As [counsel] pointed out to continue to allow a wide specification can impinge unfairly upon the rights of the public. Take for instance a registration for “motor vehicles” only used by the proprietor for motor cars. The registration would provide a right against a user of the trade mark for motor bikes under section 10(1). That might be understandable having regard to the similarity of the goods. However the vice of allowing such a wide specification becomes apparent when it is envisaged that the proprietor seeks to enforce his trade mark against use in relation to pedal cycles. His chances of success under section 10(2) would be considerably increased if the specification of goods included both motor cars and motor bicycles. That would be unfair when the only use was in relation to motor cars. In my view the court is required in the words of Jacob J to “dig deeper”. But the crucial question is–how deep?

30.

Pumfrey J was, I believe, correct that the starting point must be for the court to find as a fact what use has been made of the trade mark. The next task is to decide how the goods or services should be described. For example, if the trade mark has only been used in relation to a specific variety of apples, say Cox’s Orange Pippins, should the registration be for fruit, apples, eating apples, or Cox’s Orange Pippins?

31

Pumfrey J in Decon suggested that the court’s task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under section 10(2), adopts the attitude of the reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark. Thus the court should inform itself of the nature of [the] trade and then decide how the notional consumer would describe such use.’

In deciding the scope of the restriction in the Decon case, I took into account the intended use of the proprietor’s goods, the channels of trade through which they were sold, and the likely purchasers of the goods. The limitation which was eventually arrived at encompassed the whole of the use which had taken place. Too wide a specification of goods will affect the rights of the public.

In the Thomson Holidays case, Aldous LJ pursued the Cox’s Orange Pippins question when considering the judge’s finding in paragraph 13 of his judgment in that case that ‘cruises in the sense of cruise ship holidays and the ancillary services directly involved with such cruises form a distinct category of holiday product which differs both in kind and customer profit to land based package holiday products such as the Claimants’ club Freestyle Package Holiday.’ The mark in question was ‘FREESTYLE’ registered in respect of a range of services in classes 39 and 42. The specification of services in class 39 was ‘arrangement and booking of travel, tours and cruises; escorting travellers and arranging the escorting of travellers; providing tourist office services: all included in Class 39’. Aldous LJ commented on the judge’s finding as follows:

‘36. There was ample evidence upon which the judge could have come to the conclusion that he did in paragraph 13 of his judgment, but that could not form the basis for his conclusion that the specifications should be limited to exclude only cruises. If he had been right then all the other segments such as safaris, city breaks and activity holidays should also have been excluded. To do that would result in limitation to perhaps two segments of the holiday trade. That would not be how the notional consumer would perceive the services that Thompson had provided.

37.

Professor Middleton’s evidence was interesting, but was not directed to the correct question. It does not follow from the fact that tourism has distinct segments that the services offered by Thomson would not be referred to using a more general description. The fact that Cox’s Orange Pippin apples are marketed in and directed at the eating apple market does not mean that the average consumer would not refer to them as apples.

38.

We were not directed to any evidence that would lead us to believe that there is a category of holiday referred to as ‘land-based’. Further, such a categorisation of Thomson’s use would not be apt as their holidays involved swimming in the sea and day cruises. I therefore reject the submission that the specification should be restricted to ‘land-based holidays’.

39.

How would the average consumer describe the services provided by Thomson under the FREESTYLE mark? I believe that they would use the term “package holidays”. That term is a fair description of the use made. I therefore would add to both specifications words to the effect that the services were all for package holidays…’

The emphasis throughout this judgment is on a fair description which would be used by the average consumer for the products on which the mark has been used by the proprietor.

The judge followed Jacob J’s suggestion in Minerva TM that it was relevant to enquire whether the specification of goods included ‘commercially quite different sorts of articles’ from those in respect of which the proprietor has actually used the mark, and also whether ‘non-use in respect of a significant [and, I would add, identifiable] sub-set’ of the specification of goods was established. He appears to have determined the question of the width of the specification of goods in part as a question of the perception of the average reasonably informed consumer:

‘61. Lager and bitter are different types of beer, commercially more different than red and white wine, but perhaps not as different as whisky and gin. Although there was some evidence of so-called “repertoire drinking”, by which is meant the practice of drinking different alcoholic drinks on different occasions, I take the evidence as a whole as establishing that the two types of beer are commercially quite different. Beer drinkers in the main drink either lager or bitter, but not both. There is little overlap of trade marks between those two classes. The class of articles represented by “beer” has a number of significant sub-sets of which “bitter” is only one. Non-use is established in relation to the rest.’

Because the decision of the Court of Appeal in the Thomson Holidays case was not known at the date of the hearing before us, the parties were invited to make further submissions in writing in the light of the judgment in that case. Both parties availed themselves of the opportunity so provided. Mr Wyand QC submitted that in the light of Thomson Holidays the judge applied the wrong test. He submits that not only are the terms ‘lager’ and ‘bitter’ ill defined, but that in fact they are merely segments of the market in beer. All bitter is sold side-by-side with lager in pubs and bars. He says that the natural word that the average consumer would use (and which is the global term used by the Good Beer Guide), is ‘beer’ and the judge was wrong to revoke the mark to the extent he did.

My Wyand further observes that there is no clear dividing line between different types of beer: lagers, pilsners, ales, bitters, stouts, porters and so on are not clearly defined categories but are on the contrary to some extent arbitrary. There are no commonly agreed criteria for deciding between them, and it is largely a matter of what the brewer decides to call his particular beer. Obviously, Mr Wyand said, the channels of trade are the same for all of them, and even on the approach which commended itself to him the judge should not have found on the evidence that ‘bitter’ constituted a defined sub-class. The point on ‘repertoire drinking’ was much narrower, turning upon some evidence relating to the propensity of some drinkers not to limit themselves to certain classes of drink in particular circumstances. But, says Mr Wyand, the judge was in error in limiting the specification of goods to a single segment only of the class of goods naturally described as ‘beer’.

Mr Bloch submits that in fact the judge did exactly what Aldous LJ says should be done. He informed himself of the nature of trade, and then decided what in ordinary language the goods were on which the proprietor had used the mark. There was nothing wrong with the judge’s approach in principle. Every case depended on its own facts, and in limiting the registration to ‘bitter beer’ the judge recognised a class of beer well-known to the interested public. In contrast, no consumer can ever have referred to ‘land-based holidays’, to which the judge had limited the registration in the Thomson Holidays case.

In my judgment there is no difference of substance in the test applied by the learned judge and that set out by Aldous LJ in the Thomson Holidays case. While the judge concentrated on whether the different classes of beer had distinct groups of consumers, I consider that his finding in paragraph 61 of his judgment in respect of the habits of the relevant body of consumers is important:

‘Beer drinkers in the main drink either lager or bitter, but not both. There is little overlap of trade marks between those two classes.’

This is a finding that the relevant consumers are accustomed to seeing lager and bitter bearing different marks. Added to this is that the use has been use as a ‘house’ mark, always accompanied by the mark ‘Fullers’. I do not think that the judge’s conclusion can be successfully challenged.

In the result, I would dismiss both the appeal and the cross-appeal.

I agree with the judgment of Pumfrey J but add a few words of my own as this is the first opportunity which this court has had of expressing a view of the effect of the decision of the European Court of Justice in Koninklijke Philips Electronics NV v Remington Products Ltd, Case C-299/99, 18 June 2002 (the Philips case) on the decision of the Court of Appeal in Healing Herbs Ltd v Bach Flower Remedies Ltd [2000] RPC 513 (the Bach case).

Accordingly, I turn to the issue of distinctiveness. The words “extra special bitter” on their face are descriptive and they are not inherently distinctive. But, the findings of the judge, following a careful review of the evidence, were that, by the date of registration of the trademark “E.S.B”, those initials would have had a distinctive meaning to the average consumer as denoting the product of the respondent. Accordingly, on the judge’s findings, this is not a case where, to use the words of Chadwick LJ in the Bach case, the consumer would know “that the words … are widely used in a generic or descriptive sense.” (page 535). Thus, the trademark was not rendered invalid by virtue of the absolute grounds in section 3(1)(b) to (d) of the Trade Marks Act 1994. Despite the detailed submissions of Mr Michael Bloch QC, for the appellant, I see no basis on which the judge’s findings can be disturbed by this court.

The judge did not have to consider section 3(1)(a) of the Act of 1994. His decision preceded in time the decision in the Philips case. That decision supersedes the decision of the Court of Appeal in the Bach case on the question of the interpretation of section 1(1) in conjunction with section 3(1)(a) of the 1994 Act. The words in question in section 1(1) are “capable of distinguishing the goods and/or services of one undertaking from those of other undertakings”. These words reproduce equivalent wording in article 2 of the First Council Directive 89/104 of December 21 1988, which the 1994 Act was designed to implement. In the Philips case, the European Court of Justice adopted a purposive construction of the Directive, holding that article 2 established a general proposition, that a trademark must serve to distinguish the proprietor’s product, but that that proposition did not extend the boundaries of the grounds for refusal or invalidity separately covered by article 3. In other words the relevant words in article 2 are merely epexegetical of the grounds in article 3(1)(b) to (d) and article 3(3). Thus the answer given by the European Court of Justice in the Philips case on this issue states:-

“1.

There is no category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks which is nonetheless excluded from registration by Article 3(1)(a) thereof on the ground that such marks are incapable of distinguishing the goods of the proprietor of the mark from those of other undertakings.” (emphasis added).

Neither article 3 of the Directive nor the propositions of law set out by the judge in paragraph 16 of his judgment (and contained in paragraph 27 of the judgment of Pumfrey J) define the point at which a mark is outside article 3(1)(b) to (d) (the equivalent of section 3(1)(b) to (d) of the 1994 Act), for example, because it is “devoid of any distinctive character”. The test applied by the judge is that of the average consumer. This is the correct test: see, for example, the Bach case. This test has its roots in the proviso to article 2. Accordingly, if the mark passes section 3(1)(b) to (d) (as the case may be) on that test, it is “capable of distinguishing the goods or services of one undertaking from those of other undertakings” for the purposes of section 1(1) and 3(1)(a) and properly registrable. At least where a sign is not inherently distinctive but only becomes distinctive by use, the court has to consider whether the average consumer test is passed on the basis of the position in fact.

I thus agree with Pumfrey J that, in the light of the answers given by the European Court of Justice in the Philips case, the critical words in section 1(1) are now to be interpreted:

“as imposing no distinctiveness requirement separate from that imposed by articles 3(1)(b), (c) and (d) and 3(3)” (above paragraph 34).

In this passage, Pumfrey J refers to the provisions of the Directive contained in the relevant answer of the European Court of Justice (see above). It follows that the provisions of the 1994 Act which must now be read as imposing no separate distinctiveness requirement from those imposed by section 3(1)(b) to (d) are sections 1(1) and 3(1)(a), and in addition the provisos to sections 3(1) and 47(1) of the 1994 Act, which are designed to implement article 3(3) of the Directive. The conclusions which I have expressed are in line with tenor of the solutions to the primary question, the subject of the reference in the Philips case, preferred in the current edition of Kerly, Law of Trade Marks and Trade Names (2001) (13th ed), which was published after the reference to the European Court of Justice in the Philips case but before that decision was announced.

Even though the decision of the Court of Appeal in the Bach case on the point identified above has been superseded by the decision of the European Court of Justice, the rest of the decision is unaffected. I refer in particular to the observations of the court on the average consumer test and the usefulness of survey evidence.

The instant appeal goes further than Proctor & Gamble Company v Office for Harmonisation in the Internal Market (Trade Mark and Design) [2002] ETMR 3 (the Baby-Dry case). In that case the two words in question, “baby” and “dry”, were also descriptive of the product (disposable nappies) on the face of it. In the Baby-Dry case, the European Court of Justice held that the words had a “syntactically unusual juxtaposition” and constituted a “lexical invention”. This conclusion has been the subject of criticism by the Advocate General in Koninklijke KPN Netherlands NV v Benelux-Merkenbureau, Case C-363/99, 31 January 2002, (the KPN case). As the judge in this case noted, the Advocate-General regarded the conclusion of the European Court of Justice as (on the facts) “over academic” since the words “baby” and “dry” can be used in a normal English sentence (“this product keeps my baby dry”). In this case the words which the initials represent have not been combined in any unusual way. Nor are the initials themselves particularly distinctive. They do not require the degree of mental effort required to deduce the significance of “doublemint” (see Wm Wrigley Co v Office for Harmansation in the Internal Market (Trade Marks and Designs) [2001] ETMR 58 (the Doublemint case). But the judge’s finding was that by the date of registration the initials had become capable of distinguishing the respondent’s product from beverages produced by other brewers, i.e. had become distinctive by use (see paragraph 38 of the judgment, and in particular the last sentence thereof).

On the judge’s findings, the initials possess a secondary meaning additional to the purely descriptive meanings attaching to the words which the initials represent. It would be impossible to displace the descriptive meaning of the words entirely, and in my judgment, Community law does not require that that should be shown.

To a much greater degree, this case illustrates the break with our domestic past brought about by the 1994 Act. The words for which the first two initials stand are merely laudatory words, the mark consists purely of initials and the words connoted by the initials are mere descriptors. This concatenation of features would have made it difficult for this mark to survive the present attack under our pre-1994 Act domestic law. If King Canute had been a trade mark agent, the waters of Community law, which Lord Denning depicted as rushing up our native shores, would surely have overwhelmed him by now. As the respondent submits, one has to start by forgetting the preconceptions of pre-1994 Act trade mark law. The territory that can be occupied by registered trade marks has been significantly enlarged by the 1994 Act, and traders who use such marks without consent must increasingly rely on the limits as to the effect of a registered trade mark, set out in section 11 of the 1994 Act.

Accordingly, I would dismiss the appeal on the distinctiveness point.

On the cross appeal on non-use, I agree with the judgment of Pumfrey J and have nothing to add.

I agree with both judgments.