AD2000 Trade Mark

Before the Appointed Person

3 September 1996

[1997] R.P.C. 168

Mr. Geoffrey Hobbs Q.C.

3 September 1996

Trade mark –  Application for registration –  Appeal against refusal by registrar –  Whether mark devoid of any distinctive character –  Whether sign which satisfies requirements of Trade Marks Act 1994   section 1(1)  free from objection under section 3(1)(b) –  Construction of sections 1(1) and 3(1) –  Whether acceptance of other marks to be taken into account –  Whether protection afforded by section 11 to be taken into account –  Costs –  Appeal dismissed.

• Trade Marks Act 1994, sections 1(1), 3(1), 11(2)(b).

• Council Directive No. 89/104/EEC, articles 2, 3(1)(a), (b), (c), (d), 3(3), 6(1)(b).

• Council Regulation (EC) No. 40/94 article 7(1)(a).

• Paris Convention, article 6 quinquies, para. B2.

The registrar had held the mark AD2000, prima facie, devoid of any distinctive character and had refused registration under section 3(1)(b) of the Trade Marks Act 1994. On appeal, the applicants argued that having accepted that the mark was a sign “ capable of distinguishing goods”   for the purpose ofsection 1(1), the registrar was precluded (in the absence of any objections under 3(1)(c) and (d) from finding that it was “ devoid of any distinctive character under section 3(1)(b); that the mark possessed sufficient distinctive character for registration and was, at least, equal to other marks accepted for registration; in the event of registration, section 11 provided adequate protection for other traders.

Held, , dismissing the appeal:

(1) In order to be registrable a sign had to possess the qualities of a trade mark identified in section 1(1) and none of the defects identified in section 3. The requirements of section 1(1) were satisfied even when a sign (capable of representation graphically) was only “ capable”  to the limited extent of not being “ incapable”  of distinguishing goods or services of one undertaking from all others. *169 

(2) Section 3(1)(a) prevented the registration of signs which did not satisfy section 1(1) and thus could not constitute a trade mark. Signs which were not objectionable under section 3(1)(a) might nevertheless be objectionable under sections 3(1)(b), (c) and (d).

(3) The proviso to section 3(1) indicated that the essence of the objection under sections 3(1)(b), and (c) and (d), was immaturity; that is signs which were “ not incapable”  of distinguishing goods or services but were not distinctive by nature and had not become distinctive by nurture.

(4) Section 3(1)(b) prohibited registration of signs which met the requirements of section 1(1) but which nonetheless were devoid of any distinctive character at the time of application. Signs which

were not objectionable under section 3(1)(b) would not be objectionable under sections 3(1)(a), (c) and (d) but might be objectionable under other provisions of section 3.

(5) Section 3(1)(c) was comparable to section 11(2)(b) and denied protection to signs which satisfied section 1(1) but served only to designate characteristics, other than origin, which could be used by other traders. Signs which were not objectionable under section 3(1)(c) might be objectionable under other provisions of section 3 since section 3(1)(c) was not exhaustive of those provisions.

(6) Section 3(1)(d) prohibited the registration of signs which satisfied section 1(1) but which consisted exclusively of signs or indications common to the trade or customary in the common language. Signs which were not objectionable under section 3(1)(d) might be objectionable under other provisions of section 3.

(7) For the purposes of section 3(1) a sign possessed a distinctive character if and when it was endowed by nature or nurture with the capacity to communicate the fact that the goods or services with which it was used recurrently were those of one undertaking only.

(8) For a sign to be distinctive of one person's goods or services it had to be incapable, generally speaking, of fair and honest application to the goods or services of anyone else.

(9) A sign did not possess enough distinctive character if people exposed to it were not generally likely to regard it as an indication of provenance.

(10) Although section 11 was designed to protect honest traders, the first line of protection was to refuse registration of signs which were excluded from registration by section 3.

(11) A combination of two letters and a four-figure numeral might possess a distinctive character if it was an idiosyncratic combination but AD2000 naturally referred to the year 2000 and was not idiosyncratic.

(12) Various promotional messages could be conveyed by reference to AD2000 and it could not rightly be said, at the time of application, to be incapable of fair and honest use by anyone else. *170 

(13) Every application had to be judged on its own merits and not by reference to other marks which had been judged registrable on other occasions.

(1) The burden of authority was against the use of Minutes of Council Meetings as to the construction of Directives.

(2) It was generally desirable that the practice of not awarding costs, which applied under the old Act, should continue.

On 31 October 1994 Allied Domecq Plc (“ the applicant” ) applied under the Trade Marks Act 1994   (“ the Act” ) to register AD2000 for use in relation to all goods in Classes 29, 30, 32 and 33. The application was refused by the registrar under section 3(1)(b) of the Act on the ground that the designation was a trade mark devoid of any distinctive character.

Distinctive character

The expression “ distinctive character”  is not defined in the Act or the Directive. However, the requirements of the expression as used in section 3(1) of the Act are not difficult to discern. For the purposes of that section a sign possesses a distinctive character if and when it is endowed by nature and/or nurture with the capacity to communicate the fact that the goods or services with reference to which it is used recurrently are those of one and the same undertaking. This is borne out by the

judgments of the European Court of Justice in the repackaging cases referred to above in which it was reiterated that: 

“ Trade mark rights … constitute an essential element in the system of undistorted competition which the Treaty is intended to establish. In such a system, undertakings must be able to attract and retain customers by the quality of their products or services, which is possible only thanks to the existence of distinctive signs allowing them to be identified. For the trade mark to be able to fulfil that function, it must constitute a guarantee that all products which bear it have been manufactured under the control of a single undertaking to which responsibility for their quality may be attributed (see HAG II, paragraph 13, and IHT International Heiztechnik, paragraphs 37 and 45).” 

 

Two points identified by Jacob J. in British Sugar Plc v. James Robertson & Sons Ltd. (supra) should be borne in mind in this connection. First (page 302) that for a sign to be distinctive of a person's goods or services in the required manner it must generally speaking be incapable of application (meaning fair and *176 honest application) to the goods or services of anyone else: see further The Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada Ltd. (1938) 55 R.P.C. 125, 145 lines 42 to 46 per Lord Russell. Second (page 306) that a sign does not possess enough of a distinctive character for the purposes of section 3(1) if people exposed to the use of it are not generally likely to regard it as something which provides an indication as to the provenance of the goods or services with reference to which it is used.

Although section 11 of the Act contains various provisions designed to protect the legitimate interests of honest traders, the first line of protection is to refuse registration of signs which are excluded from registration by the provisions of section 3. In this regard, I consider that the approach to be adopted with regard to registrability under the 1994 Act is the same as the approach adopted under the old Act. This was summarised by Robin Jacob Esq. Q.C. in his decision on behalf of the Secretary of State in Colorcoat Trade Mark [1990] R.P.C. 511 at 517 in the following terms: 

“ That possible defences (and in particular that the use is merely a bona fide description) should not be taken into account when considering registration is very well settled, see e.g. Yorkshire Copper Work Ltd.'s Trade Mark Application (1954) R.P.C. 150 at 154 lines 20– 25 per Viscount Simonds L.C. Essentially the reason is that the privilege of a monopoly should not be conferred where it might require “ honest men to look for a defence” .

 

For the reasons indicated above, I am unable to accept that an objection to the registration of a sign under section 3(1)(b) of the Act as being a trade markdevoid of any distinctive character must fail in the absence of objections under sections 3(1)(a), 3(1)(c), and 3(1)(d) of the Act. It was open to the registrar to object to the registration of the designation AD2000 under section 3(1)(b) alone. The question is whether the objection is well-founded and the answer to that question depends upon whether at the date of the application that designation had the capacity to communicate the fact that the various goods in classes 29, 30, 32 and 33 with reference to which it would be used recurrently by the applicant were those of one and the same undertaking.

Without any prior use on the part of the applicant, the capacity to communicate that fact must, if it existed, have existed by virtue of the nature and characteristics of the designation per se. A combination of two letters and a four-figure numeral may well possess a distinctive character if it is an idiosyncratic combination. However, the combination represented by the letters and numeral AD2000 is not an idiosyncratic combination. It naturally refers to the year 2000 and that, in my view, is what most people will think of when they see or hear it used in connection with the marketing of goods of the kind for which registration has been sought.

Of all the years in the calendar, the year 2000 is one which stands out as having special significance as a result of the sense of momentousness it arouses by being the year which ushers in a new

millennium. Various promotional messages can accordingly be conveyed with a commensurate degree of impact by referring to the year AD2000 in connection with the marketing of goods and services: 'forward looking'; 'progressive'; `in advance of its time'; 'at the leading edge'; 'good for the future'; 'better than before'; 'the best so far'; 'a fresh start'; 'a new beginning'; 'a turning point'; 'setting new standards for a new *177 era'; 'for the celebration or commemoration of a once-in-a-lifetime event'; and so on. I note from the hearing officer's decision and grounds of decision in the present case that the registrar receives a very large number of applications for registration of trade marks incorporating the number 2000 for all kinds of goods. This reinforces me in the view I have formed that AD2000 cannot rightly be said to be incapable of fair and honest application to the goods of anyone other than the applicant and that it is a designation which did not at the date of the application have the capacity to communicate the fact that the various goods in classes 29, 30, 32 and 33 with reference to which it would be used recurrently by the applicant were those of one and the same undertaking. In my view, that is a capacity it would only have possessed at the date of the application if it had been used in a manner and to an extent sufficient to have endowed it with a distinctive character. I consider that AD2000 is a trade mark devoid (by which I mean unpossessed) of any distinctive character. In agreement with the hearing officer I therefore conclude that it is excluded from registration by section 3(1)(b) of the Act.

I am not persuaded otherwise by the existence of registrations in the proprietorship of the Applicant for: MILLENIUM (No. 1166092) registered in Class 32 as of 8 December 1981 for the use in relation to beer, ale, stout, porter and lager; and MILLENNIUM (No. 1324-754) registered as of 22 October 1987 for use in relation to alcoholic beverages included in Class 33; or by the existence of applications advertised but yet to be registered for: MILLENIUM (No. 2048400) proceeding in the name of the applicant because of prior rights in Registration No. 1324754 for use in relation to wines, spirits and liqueurs all included in Class 33 with an application date of 12 December 1995; and BAR 2000 (No. 2048071) proceeding in Class 42 in the name of Scottish & Newcastle plc for use in relation to restaurant, cafe, bar, public house, catering, hotel, accommodation and nightclub services with an application date of 9 December 1995. Every application for registration must be judged on its own merits and I am not willing to conclude that AD2000 should be judged registrable for all goods in Classes 29, 30, 32 and 33 as of 31 October 1994 because MILLENIUM, MILLENNIUM and BAR 2000 have been judged registrable on other occasions. The state of the register is, in principle, irrelevant to the fate of the application which is before me in the present case. This principle was recently re-affirmed byJacob J. in British Sugar plc v. James Robertson & Sons Ltd. (supra) at page   305  in the following terms: 

“ Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.” 

*178 

In the result, the appeal fails. It was indicated at the hearing before me that the applicant and the registrar would be content if I made no order for costs in connection with the appeal. I think it is generally desirable to continue with the practice which applied in relation to appeals to the “ Board of Trade”  againstex parte refusals of registration under the old Act. I therefore determine that the appeal be dismissed with no order as to costs.

Procter & Gamble Company v Office for Harmonisation In the Internal Market (Trade Marks and Designs)

(Case C-383/99 P)

Court of Justice of the European Communities

20 September 2001

[2002] E.T.M.R. 3

HEADNOTE

H4 P&G applied to register the words BABY-DRY as a Community trade mark for “ disposable diapers made out of paper or cellulose”  and “ diapers made out of textile”  in Classes 16 and 25. The application was refused on the ground that BABY-DRY was descriptive, being composed “ only of a simple combination of the non-distinctive words baby and dry, thus consisting exclusively of an indication which may serve in trade to designate the intended purpose of goods such as those for which registration is sought, i.e. keeping a baby dry” . 

H5 P&G appealed and argued, among other things, that the combination BABY-DRY was sufficiently distinctive to qualify for registration. The Board of Appeal dismissed that appeal, concluding that no undertaking may be given an exclusive right to use a sign which does no more than describe, in ordinary language, the nature, quality or intended purpose of the goods for which it is to be used; since BABY-DRY was a combination of two ordinary words which immediately informed consumers that the product was suitable for keeping babies dry, the term consisted exclusively of signs or indications which served to designate the intended purpose of the goods; the sign was also devoid of any distinctive character, being incapable of distinguishing diapers produced by one undertaking from those of others who might also wish to emphasise the effectiveness of their products in keeping babies dry.

H6 P&G appealed against the Board's decision to the Court of First Instance. That Court annulled the Board's decision on the ground that the Board should have considered the evidence of acquired distinctiveness, but dismissed it on the question of whether the words BABY-DRY were descriptive or lacking in distinctive character. In its decision the Court examined only whether BABY-DRY consisted “ 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 or service”  under Article 7(1)(c) of Regulation 40/94, pointing out that it was sufficient for one of the absolute grounds for refusal to apply for the sign to be ineligible for registration. It considered that the Regulation intended that signs or indications of the kind described in that subparagraph “ should, by their very nature, be regarded as incapable of distinguishing the goods of one undertaking from those of another” . In a further appeal, P&G asked the Court of Justice to set aside the judgment insofar as the Court of First Instance held that BABY-DRY mark was not registrable on account of Article 7(1)(c) of Regulation 40/94. 

H7 In his Opinion the Advocate General advised that the Court of Justice *24  should set aside the decision of the Court of First Instance, alter the decision of the Board of Appeal and annul the decision of the examiner that the BABY-DRY mark consisted exclusively of indications which may serve in trade to designate the intended purpose of babies' diaper and to remit the case for further examination. He considered that Article 7(1)(c) could be taken to preclude registration of any proposed trade mark which consisted exclusively of signs or indications designating characteristics of the goods or services and that it may be better to regard Article 7(1)(c) as being intended not to prevent the monopolisation of ordinary descriptive terms but to avoid registering descriptive brand names, for which no protection was available. He doubted whether any reasonably aware person who has not yet encountered the brand name BABY-DRY would think unhesitatingly of diapers when first confronted with it or that, when hearing it used in connection with such goods, would he regard it as a designation of their intended purpose: although one of the principal functions of diapers was to keep babies dry (in one sense of that expression), the term BABY-DRY was not used in ordinary language to refer to such items or their intended purpose, nor was it suggested that it was. 

H8 Held, by the European Court of Justice, that P&G's appeal should be allowed and the decisions of the examiner and the Board of Appeal annulled.

H9 1. To assess whether a word combination such as BABY-DRY was capable of distinctiveness, it was necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, given that the goods concerned were babies' nappies, the determination to be made depended on whether the word combination in question might be viewed as a normal way of referring to the goods or of representing their essential characteristics in common parlance.

H10 2. While that word combination certainly alluded to the function which the goods were supposed to fulfil, it still did not satisfy the criteria for refusing registration. While each of the two words in the

combination formed part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition was not a familiar expression in the English

language, either for designating babies' nappies or for describing their essential characteristics. Word combinations like BABY-DRY could not therefore be regarded as exhibiting, as a whole, any

descriptive character; they were lexical inventions bestowing distinctive power on the mark so formed and could not be refused registration under Article 7(1)(c) of Regulation No. 40/94.

Linkin Park LLC's Application

Case O-035-05

Lord Chancellor's Appointed Person, United Kingdom

17 February 2005

[2006] E.T.M.R. 74

Richard Arnold Q.C.: 

17 February 20051

Applications; Distinctiveness; Performers; Registrability; Trade marks

H1 Trade mark application— LINKIN PARK (Class 16: printed matter, posters and books)— Registrability— Whether devoid of distinctive character— Whether descriptive— Application refused— Appeal dismissed.

H2 The applicant, a popular and well-known rock band known as Linkin Park, sought to register the words LINKIN PARK as a trade mark in the United Kingdom for, inter alia, printed matter, posters and books (Class 16). During the examination the examiner took objection to the mark on the grounds that, in relation to those goods, it was not distinctive under the Trade Marks Act   1994, s.3(1)(b) , and that it constituted exclusively of matter that was descriptive, under s.3(1)(c)   of the same Act. The application was refused and the applicant appealed to the Lord Chancellor's Appointed Person.

H3 Held, by the Appointed Person, that the applicant's appeal would be dismissed.

H4 1. The appropriate standard of review in this case was that the appellate judge had to show real reluctance, but not the highest degree of reluctance, to interfere with the hearing officer's decision in the absence of a distinct and material error of principle.

H5 2. Although issues relating to passing off had not been raised on behalf of the applicant, it was appropriate to refer to recent developments in the law of passing off. Following the decision in Irvine v Talksport Ltd, the position in the United Kingdom is that a performer whose name and/or likeness is used in merchandising, advertising or other commercial activities in such a manner as to suggest that he has licensed or endorsed those activities is likely to have a legal remedy in passing off. However,

the performer has no remedy in passing off if his name or likeness is used in a manner that does not mislead members of the public into believing that he has licensed or endorsed the use.

H6 3. The average consumer of the goods for which registration was sought was likely to be a fan of the group who was young, male, knowledgeable about the group but otherwise of no particular sophistication. The goods might also be bought by relatives or friends of fans. No special degree of care would be used *1018 when selecting those goods, since they were relatively inexpensive everyday items.

H7 4. Although the word LINKIN and the phrase LINKIN PARK were invented by the group and were meaningless at the point at which they were coined, when considering the registrability of a sign it is its meaning at the application date that is decisive. At that date, this mark was no longer meaningless because it denoted the group. Even though this did not make LINKIN PARK a dictionary term, a sign which is not a dictionary term might still be considered descriptive.

H8 5. It was not the case that, in order to be a characteristic of the goods, the thing denoted by the sign must be a measurable property of the goods rather than information content concerning the goods. The information content is a critical characteristic of many goods, particularly computer programs.

H9 6. In order to be excluded from registration under s.3(1)(c), it is not necessary for a sign to fall within one of the types described in that provision (e.g. a sign relating to the kind, quality or geographical origin of goods in respect of which registration is sought). The types of sign listed do not constitute any recognisable genus and the mention of “ other characteristics”  shows that the list of types of sign is non-exclusive.

H10 7. The fact that there was no better way of describing a poster of the group than as “ a LINKIN PARK poster”  meant that the application of s.3(1)(c)could not be avoided. A consumer who wanted to ask a shop assistant whether the shop stocked posters depicting the group would most likely ask: “ do you have any LINKIN PARK posters?”  In this question, the applied for mark was clearly being used to describe a characteristic of the goods being sought, namely their subject matter. Even in an alternative formulation of the question such as “ do you have any posters of LINKIN PARK?” , the mark was being used descriptively.

H11 8. It would be impossible for those wishing to trade in posters of the group to market their products without using the LINKIN PARK mark. Although it may be possible for posters of the very famous to be sold on the basis of the image of the person featured alone, the group had not reached this level of fame. Moreover, since the test is that a mark must be capable of being used descriptively before it is barred from registration under s.3(1)(c), the availability of alternatives would be of no assistance to the applicant group in this case.

H12 9. The submission that performers should be able to stop the use of their names without consent in relation to any goods or services without exception was without authority. Even though it was possible that Parliament could confer a right of personality upon celebrities or that such a right lay within the right to a private life under Art.8 of the European Convention on Human Rights, no such developments had yet occurred and, even if they had, they would not necessarily support the registration of a trade mark in a case such as this.

H13 10. The starting point of any consideration of the distinctiveness or the descriptiveness of a mark is the essential function of a trade mark, which is to guarantee the identity of the origin of the marks, goods or services by enabling the consumer to distinguish those goods or services from those which have another origin. The name of a performer, like the name of an author, undoubtedly identifies the origin of the performance or work, which may give the performer or author a remedy in passing off if his work is marketed by others under his or a confusingly *1019 similar name. However, it does not necessarily follow that the name of the performer or author acts as an indication of the trade origin of a product (e.g. a CD, book or MP3 file) which embodies the performance or work. Even where the

performance or work is protected by copyright or performers' rights, consumers are well aware of the existence of unauthorised reproductions.

H14 11. Where consumers have obtained unauthorised copies of performances or works, the name of the performer continues to designate accurately a characteristic of the music track, namely the origin of the performance, even though the consumer may have infringed various intellectual property rights and would probably be aware that this was so.

H15 12. Copyright and performers' rights are of finite duration. Once the rights have expired, the author no longer has the power to prohibit the reproduction and dissemination of the work and the author's name cannot function on a trade mark even on the basis that his consent is required for the work to be reproduced and distributed. However, it would make no sense for the ability of a name to function as a trade mark to depend on whether a work in respect of which a trade mark is sought is within the period of copyright or performers' right protection.

H16 13. Even if the name of the author was registered as a trade mark in respect of CDs or books because consumers had an expectation concerning authorisation, that would not mean that the mark was registrable for posters. In so far as applicants rely on consumer expectations about authorisation, it is for those applicants to show evidence as to what those expectations are.

H17 14. The fact that LINKIN PARK had been accepted as a Community trade mark for the goods in question was not even of persuasive value since the Office which accepted that application had not produced a reasoned decision to justify this opinion. Likewise, the fact that the word mark ARSENAL was registered in Class 16 in the United Kingdom was of no assistance since it could have been accepted for registration on the basis of acquired distinctiveness. It was also possible that sports teams should be treated differently from the names of performers and celebrities.

H18 15. Since the sign was barred from registration under s.3(1)(c), there was no need to consider its registrability under subs.(1)(b).

Invented words

42 The applicant's first main contention is that the word LINKIN and the phrase LINKIN PARK were invented by the group. Accordingly, the applicant argues, the Mark is meaningless, and therefore it cannot be descriptive. In my judgment the flaw in this argument is that it is looking at the meaning of the Mark at the date when was it coined. What matters, however, is its meaning at the application date. By the application date, the Mark was no longer meaningless, but on the contrary had acquired a well-established meaning of denoting the Group. This was particularly so in the perception of the relevant average consumer. It is true that the Mark was not a dictionary term (as was the case in TARZAN), but it is clear from DOUBLEMINT and POSTKANTOOR that it is not a pre-requisite for the application of s.3(1)(c) that the sign in question be a dictionary term.

43 The applicant's attorney argued that this led to a paradox, which was that the applicant was worse off than if it had sought to register the Mark when the Group was unknown. He said that it ought to have a stronger case for registration once the Group was well-known. In my judgment there is no such paradox, for two reasons. First, there is no evidence that the Group is (or was at the application date) well-known as a trade source of posters and the like. If there was, it could gain registration on that basis. Secondly, as the Registrar's representative observed, a mark may by becoming distinctive for one class of goods or services (here musical performances) become descriptive for another class of goods or services (here the Goods).

 

Rugby Football Union and Nike European Operations Netherlands BV v Cotton Traders Ltd

High Court of Justice (Chancery Division)

26 March 2002

([2002] EWHC 467 (Ch))

[2002] E.T.M.R. 76

HEADNOTE

H4 In 1871 members of the England Rugby team began to wear a red rose emblem on their rugby jerseys. In about 1920 a standard design *862 of rose was introduced. This was worn by team members until 1998, when the currently-used rose was designed. Before 1992 members of the team wore, for home games, the classic English jersey with the rose emblem on the left breast but no other frontal marking. In 1991 the defendant, who had made and sold a version of the jersey which bore the word ‘ England’  beneath the rose, became the official licensee of the first claimant, the Rugby Football Union (RFU). The RFU, being the governing body for rugby union in England, managed the national rugby team. During the currency of the licence, the official England rugby team strip was redesigned. The defendant produced the redesigned jerseys for the team and also made versions of them for sale to the public, but did not sell the classic English rugby jersey.

H5 In 1996 the RFU registered a non-colour version of the English rose emblem as a Community trade mark (CTM). In 1997 the RFU and the defendant concluded an agreement for the consensual termination of the defendant's licence on terms that restricted the defendant's right to make and sell England rugby jerseys. Subsequently the RFU licensed the second claimant both to produce the official strip and to sell versions of it to the public. The second claimant made and sold jerseys to the 1998 design, while the defendant reverted to producing and selling the classic English rugby jersey.

H6 The claimants brought proceedings against the defendant for breach of contract, infringement of the CTM and passing off. The defendant denied infringement, arguing that any use made of the trade mark was in accordance with honest business practices. The defendant also counterclaimed for a declaration that the CTM was invalid, maintaining that the rose was perceived by members of the public as a national emblem or symbol which was associated with the English rugby team, not as an indication of trade origin.

H7 Held, by Lloyd J., dismissing the claims for breach of contract, trade mark infringement and passing off and allowing the counterclaim for a declaration of invalidity, that the CTM was not, and never had been, distinctive of goods of the RFU or in any way associated with it.

1. On a proper construction of the terms of the termination contract, the defendant was not prohibited from selling the classic jerseys. Such jerseys were not actually manufactured under the original licence and were not covered by it.

2. Evidence demonstrated that the relevant public associated the rose primarily with England in general or with the England rugby team. In the light of the use that had been made of the rose emblem before 1996, it was no longer capable of being *863 distinctive— if it ever had been— so as to fall within under Article 7(1)(a) of the CTM Regulation.

3. Even if the court was wrong to conclude that the rose emblem was not distinctive of the RFU's goods at all, the emblem was primarily a descriptive or generic sign and was accordingly excluded from registrability under one or both of the absolute bars to registrability under Articles 7(1)(c) and (d). Evidence of sales of classic English rugby jerseys by undertakings operating without authority from the RFU proved that it had become bona fide customary within the trade to use the rose by way of association with the England rugby team.

4. Even if the trade mark had been valid, the use of the emblem by the defendant would not have infringed the claimant's rights since that use would have been in accordance with honest business or commercial practices.

5. Since the English rose had not been shown to be perceived by a significant proportion of the relevant public as being distinctive of the RFU's goods or of being associated with that body, the RFU had not shown that it enjoyed any goodwill in the emblem. Accordingly the defendant's sales of the classic English rugby jersey could not amount to an act of passing off their goods as being those of, or as being associated with, the RFU, since they did not involve any element of misrepresentation.

Trade mark rights

28 The RFU sues the defendant for infringement of its Community trade mark, for using a similar mark to that which is registered in relation to the same goods, thereby giving rise to a likelihood of confusion on the part of the public, including a likelihood of association with the registered mark. The defendant counterclaims for a declaration of the invalidity of the Community trade mark. There are issues about infringement, but the main debate on the trade mark claim is about validity.

29 The position as regards Community trade marks is governed by Council regulation 40/94 which I will refer to as the CTM Regulations. They mirror, in many respects, the Trade Marks Directive and therefore the Trade Marks Act 1994. Under Article 4 a Community trade mark may consist of any signs capable of being represented graphically, provided that such signs are capable of distinguishing the goods of services of one undertaking from those of other undertakings. Article 7 sets out absolute grounds for refusal of registration, of which reliance is placed on four: 

“ 1. The following shall not be registered: *872   • (a) signs which do not conform to the requirements of Article 4

• (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 the service, or other characteristics of the goods or service

• (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.” 

30 All of those four grounds are relied on by the defendant for saying that the Community trade mark is not validly registered, and therefore claiming a declaration of invalidity under Article 51(1). The essence of the defendant's case is that the English Rugby Rose is not perceived by members of the public as a mark of trade origin, but as a national emblem or symbol, associated with the English rugby team.

31 The tests for the validity of the trade mark are to be applied as at the date of the application for registration, namely 18 April 1996. However, as regards grounds (b) to (d), if the trade mark would fail as at that date, it is nevertheless open to the RFU to uphold it by showing that, by the time of the challenge, the mark had acquired the necessary distinctiveness. The date of the challenge is the date of the defendant's Part 20 claim for a declaration of invalidity, namely 21 September 2000.

32 So far as Article 7(1)(a) is concerned, it is true that roses are commonly used in the relevant trade, but there are individual features of the CTM rose, particularly as regards the arrangement of the petals, the number and arrangement of the leaves, and the angle and length of the stalk in relation to the leaves and the petals, though not any particular feature of colour since the rose as registered is not limited as regards colour. That is what is relied on to show that the rose can be, and is, distinctive of the RFU.

33 Article 7(1)(a) is to be applied in relation to the facts as they exist at the date of the application for registration: see Bach Flower Remedies [2000] R.P.C. 513. There it was accepted that the words could in principle have been taken as a sign of trade origin, but the question was whether, by virtue of the manner of their use up to the relevant date, they had become generic and had thereby lost their ability to distinguish as regards trade origin. The Court of Appeal held that by then they were not, and could no longer be, distinctive of trade origin. It is therefore necessary to examine the effect on the relevant public of the CTM rose in April 1996. In this context, there is less of a demarcation line between Article 7(1)(a) and Article 7(1)(b) to (d) than *873 might apply where the sign has not yet been used, or not substantially. Leaving aside points turning on differences between the various roses, and on questions of colour, the defendant's case on Article 7(1)(a), as also on the other paragraphs, depends on the public's perception of the rose, which in turn is affected by the way it has been used up to the relevant date.

34 It seems to me that, in substance, the question under each relevant element of Article 7(1) can be seen to be whether, as at April 1996, the CTM rose was in fact regarded as a sign of trade origin, distinguishing goods of or associated with the RFU from those of other undertakings, or rather as an emblem denoting England, or England rugby, and, if it was not regarded as a sign of trade origin at that date, had the position changed by September 2000? The defendant's argument that it was not so regarded at either date is based on the proposition that it was in fact seen as a national symbol, not as a sign of trade origin, and that its use for that purpose was customary in the bona fide and established practices of the trade. It is worth noting that Article 7(1)(c) applies only if the mark consists exclusively of what one might summarise as descriptive indications. Article 12(b) shows that a trade mark may include such indications, but does not preclude others from using the descriptive indication. It seems to me that, since the present mark consists only of a single sign, and a non-verbal one, the whole must stand or fall, under this provision, according to whether or not it is descriptive, unless (because the CTM rose as registered is not limited as to colour) a distinction is to be drawn between red roses and others.

35 In considering how the rose is perceived, I have to have regard to its impact on the average consumer, being someone who does not know that there is a question about the significance of the rose but who is otherwise reasonably well-informed and reasonably observant and circumspect.

36 I heard evidence from a wide range of witnesses, some of whom gave evidence relevant to the question what one version or another of the rugby rose means to the public. I can divide the claimant's witnesses into three categories: those from the RFU itself, those from organisations associated with it in some way, and members of the public […].

37 It is clear from the evidence of all witnesses who had anything to say on this subject that the primary association of the rose (whichever version was in question) is with England in general or with the England rugby team. Some witnesses also mentioned an association with the RFU. I will summarise the principal evidence on this point. *874 

38 The witnesses from the RFU itself are not average members of the public for this purpose, because of their special knowledge […]

39 to 40 [Evidence of RFU's Director of Marketing between 1992 and 1999 and Chairman of RFU's Merchandise Group reviewed].

41 Mr Vaughan, Commercial Director of the RFU, gave evidence that sponsors buy into the RFU and England Rugby through the rose, but I found the evidence of an actual sponsor more useful and convincing as an indication both of what sponsors want and correspondingly of what they believe will be the response or perception of members of the public. Mr Vaughan also spoke of a Sky television advertisement in about February 2001, in relation to the Six Nations Championship, which used the English Rugby Rose. I do not see that this shows any concern to exploit an association in the mind of members of the public between the English Rugby Rose and the RFU; rather it seems to me to emphasise that, from the point of view of the advertiser, the valuable connection is with the national team. Ms Norris, the RFU's merchandising and licensing manager, accepted that the primary

association of the rose is with the England rugby team and its support. Mr Hornbuckle, who worked for the RFU in 1998 to 2000 as a marketing executive, having come from Umbro, and was responsible for commissioning the redesign of the rose from Springetts, accepted in cross-examination that what licensees want to buy into above all, in most circumstances, is the England rugby team.

42 From the evidence of Mr Roberts from Carlsberg Tetley concerning his company's motivation for their sponsorship, it is clear that the reason for their sponsorship is the association with the team, not with the RFU, and that they believe that their use of the Springetts rose will enable them to become associated in the mind of potential customers with the team, and that this may influence the choice of beer. The same can be said about the promotion of an affinity credit card issued by MBNA which uses the Springetts rose and generates payments to the RFU. The whole tenor of the leaflet is to sell the connection with England rugby, and there is no legible reference to the RFU at all, apart from one to its website address.

43 Mr Green, of Springetts, gave evidence about the task that his company bid for and undertook in 1998 as regards the redesign of the rose. He put in evidence his report to the RFU in February of that year in which he identified a dilemma in branding terms, namely that the RFU's “ branding communication is currently inseparable from that of the English team” . Later in the document he said “ the consumer is only interested in the England team. Potential licensees therefore want to buy into the England Team rather than the RFU— using the emotion consumers feel for the team to sell their products” . In his witness statement he said that the emotive part of the RFU's identity  *875 was the team, and that the RFU was seen by the public as managing the team.

44 Mr Robert Tucker, of Nike, spoke in his witness statement of a real association in the minds of members of the public between replica shirts, that is to say replicas of what players wear when playing matches, and the England rugby team, though it is true that in cross-examination he referred at one point to an association “ with the RFU and in particular the team” .

45 [Evidence from the defendant and from clothing businesses reviewed].

46 to 47 [Evidence of members of the public reviewed].

48 From the evidence of members of the public, it is fair to say that there is a degree of awareness of the RFU as the body behind the England team, but it is clear to me that many references to the RFU were influenced by the leading nature of the questioning. Unprompted, in almost all cases, the association evoked by the particular rose in the mind of the witness was with England rugby, that is to say with the national team, and not with the RFU.

49 The conclusion I draw from this evidence overall is that the rose is primarily taken by relevant members of the public as denoting either England as a country or, more specifically, the England rugby team, and that any association with the RFU is much less widespread and, even where it exists, it is of secondary significance […].

50 In my judgment, looking at the relevant evidence as a whole, even now the primary association in the minds of the public evoked by the English Rugby Rose is with the national team. I am not satisfied that it is taken by a significant proportion of the relevant public as denoting the trade origin of the goods to which it is applied. But even if it were, it is undoubtedly seen at least partly, and primarily, as generic, as a national emblem or symbol. I find that this was the position in 1996, and that it was still the case in 2000. Moreover, as I say, the rebranding has put before the public, by way of a brand, consistently the Springetts rose. The English Rugby Rose is similar to it, but it is not the same. It has not been used by the RFU since some date in 1999. In that respect also it seems to me that the RFU have difficulty in showing that the English Rugby Rose (or rather, I should say strictly, the CTM rose) had acquired by September 2000 a distinctiveness as denoting the trade origin of the goods to which it is applied which it did not have in April 1996.

51 In Arsenal Football Club v. Reed [2001] R.P.C. 922 Laddie J. had to consider allegations of trade mark infringement in relation to unofficial merchandise showing the club's familiar cannon

symbol. *876 In that case the validity of the claimant's trade mark was attacked on the grounds that any indication of trade origin in the mark was swamped by the acquired meaning of allegiance to the club. That defence failed. In that case, however, it was clear that there was an association between the team and the club, since the team represents the club, and there was also clear trade mark use of the various registered marks, for example on swing tickets and neck labels. In the case of the national team, by contrast, the team represents the country, and an association with the entity which manages the team is secondary, if present at all.

52 The English Rugby Rose was never used for swing tickets or neck labels. As regards jerseys it was only ever used on the breast of the garment. A different rose, usually the commercial symbol, was used for swing tickets for official items before the Nike licence. I was shown one jersey produced by the defendant during its licence (a replica of the England away jersey) which used on its swing ticket a variant known during the trial as the cabbage rose, which is somewhat similar to the CTM rose and the English Rugby Rose, but with the word England under it. It also had below that the defendant's trade mark and at the bottom of the ticket the words “ The official England RFU kit” . This was sold in a department store in Spain. It seems to me that in this case as well the rose was not used to show the trade connection with the RFU as such but to show easily (for example if the garment were folded up in such a way as to obscure the English Rugby Rose on the front) that it is an England jersey, rather than one for Scotland or any other relevant country or team. This use therefore was also as a national emblem, not as a trade mark.

53 On the view I take, the CTM rose was not, either in 1996 or in 2000, distinctive of goods of or associated with the RFU. It seems to me that, in the light of the use that had been made of it before 1996, it was no longer (if it had ever been) capable of being distinctive, so as to fall within Article 7(1)(a). If I am wrong about that, it was in any event not in fact distinctive, and thus within Article 7(1)(b). Either way, it was not properly registrable. If I am wrong in considering that it was not distinctive of the RFU's goods at all, nevertheless it seems to me that it was primarily a descriptive or generic sign, and thus within either or both of Article 7(1)(c) or (d). The evidence as to sales over the years of classic English rugby jerseys by undertakings operating without authority from the RFU seems to me to show that it had become customary in the trade to use the rose by way of association with the England rugby team, and that this established practice was, in my judgment, bona fide. So Article 7(1)(d) is satisfied. As regards Article 7(1)(c), the defendant contends that the English Rugby Rose is used as a national symbol or to show that its products are replicas of the *877 traditional jersey worn by the national team until 1991. The same point is also formulated differently, as being that the use of the rose is an indication of the nature of the Articles of clothing in question as being jerseys of the same style as had historically been worn by the English rugby team, or alternatively that it is an indication of its character as something to be worn out of loyalty to the nation and in particular to the nation in connection with rugby union football. My hesitation about that is that the use of the rose is not merely an indication of that, it is an inherent part of the replication involved. If I am wrong to doubt whether that makes it an indication of a characteristic of the goods, then I accept that the case falls within Article 7(1)(c) as well.

54 Accordingly, the claim based on the registered trade mark, the CTM rose, fails, and the defendant's counterclaim as to its invalidity succeeds. I have not drawn any distinction between the CTM rose and the English Rugby Rose, though they are different, nor have I addressed any question which might arise from the fact that the CTM registration is not limited as to colour. In the circumstances I need say nothing more about the differences, or about colour, and any relevance they might have. In particular I do not need to say anything about whether acquired distinctiveness in respect of a Community trade mark needs to be based on use of the exact sign, the mark itself, or whether use of a sign which differs, but not significantly, will do: compare section 46(2) of the 1994 Act with Article 51(2) of the CTM regulations. Of course, the position of the RFU as regards the Springetts rose is likely to be different, since they have copyright protection for that as well as a trade mark registration. All that my decision means, as regards trade marks, is that the RFU cannot claim a monopoly of the classic English rugby jersey, which conforms with what they seem to have thought to be the position in and before 1991, and for some time after that.

55 In case the matter goes further, however, I should say something about one other point which was argued in respect of the trade mark claim, namely honest use. This arises under Article 12(b) of the CTM regulations. A Community trade mark does not entitle the proprietor to prohibit a third party from

using in the course of trade indications concerning the kind, quality, etc., or other characteristics of the goods, provided he uses them in accordance with honest practices in industrial or commercial matters. If my doubts about the application of Article 7(1)(c), expressed above, are wrong, and if I am also wrong as to the invalidity of the registration, it follows that the defendant would have a defence under Article 12, so long as it can establish honest use. The claimants challenge this on a number of grounds. *878 

(i) First, the use of the English Rugby Rose was said to be contrary to the Termination Agreement, to the knowledge of the defendant. As I have found, it was not contrary to that agreement. If I were wrong about that, I would not be satisfied that the defendant knew it to be contrary to the agreement. Accordingly, even if a knowing breach of contract, not in any way kept secret from the RFU, were not in accordance with honest practices, which I doubt, I would not have accepted this answer to the defendant's claim.

(ii) Then the RFU relies on the defendant having, while acting as their licensee, asserted, as the RFU itself had, that it had an exclusive licence as regards the English Rugby Rose. I see no reason why an undertaking should not act consistently with its licensor's position and interests while it holds its licence, but be allowed, upon termination of the licence, to take a contrary stance, without being described as guilty of less than honest practice. I would not accept this point for the RFU.

(iii) Thirdly, they rely on an allegation that the defendant continued, after termination of the licence, to describe itself in terms which implied that the licence was still continuing. This turns on an issue of the defendant's teamwear catalogue issued in 1998, which was sent to schools and clubs. The passage criticised is as follows: 

“ Central to the success of Cotton Traders has been the ongoing association with rugby, which started in 1991 when the company was appointed an official supplier to the RFU. Since then the company has continued to expand its activities and currently supplies many of the leading English First and Second Division clubs.” 

I do not read that passage, addressed to a relatively well-informed audience, namely those making buying decisions on behalf of schools and rugby clubs, as implying that the defendant still is an official supplier to the RFU. The text does not say that the defendant is an official supplier, or that it supplies the leading clubs and the RFU. I therefore reject this criticism of the defendant's commercial practices as well.

(iv) Lastly, it was said that the use of the English Rugby Rose on the defendant's jerseys is likely to lead a substantial number of persons to be deceived into believing that the defendant or its business is somehow connected with the RFU or Nike. The idea of a supposed connection with Nike is absurd. As for a connection with the RFU, several points were relied on, partly derived from the evidence. One is that people used to be, and some still are, aware that the defendant was once the official licensee, and some *879 may not have noticed that the position has changed. Another is that some people are aware of Mr Cotton's historical connection with English Rugby, and of the fact that he has for a few years been on the RFU Committee, and they seem to suppose that this means that the defendant, which they rightly associate with him, has some official connection with the RFU. I do not see how either of these factors can properly be regarded as making the defendant's use of this emblem of the nation and its rugby team on replicas of the historical jersey anything other than use in accordance with honest practices in the relevant trade. In essence, however, this point depends on showing that the defendant is guilty of passing off, to which I will come.

56 Subject to that, therefore, I would have held, if the point had arisen, that the defendant's use of the English Rugby Rose was within Article 12(b), so that the claim for trade mark infringement would have failed on that ground.

57 The defendant argued that the RFU was precluded by the terms of Maurice Kay J's judgment from asserting that it had any exclusive proprietary rights in the English Rugby Rose. I have grave doubts as to whether that could be right, but I am certainly not able to conclude that it is, for I have seen

nothing of the pleadings in the case, from which I could tell what points were at issue. Not every statement in a judgment gives rise to an issue estoppel between the parties. I therefore ignore that point. It was also argued that the RFU was estopped from proceeding against the defendant by having led it to believe that it would not sue. The representation relied on is by conduct, having threatened others, in particular in 1989, but not having sued any of them. I do not see how a representation sufficient to found an estoppel can be spelled out of the conduct of the RFU in this respect. This too is a bad point.