West v Fuller Smith & Turner

Date

31 January 2003

Legislation

Trade Marks Act 1994, s.1(1), s.3, s.46, s.47

Keywords

Distinctive character; descriptive marks; revocation; invalidity

Counsel

Michael Bloch QC, Michael Edenborough, Roger Wyand QC, George Hayman

Solicitors

Hammond Suddards Edge; Bird & Bird

Judge

Schiemann, Arden LJJ; Pumfrey J

Court

Court of Appeal

Reported

[2003] FSR 44

Summary

West applied for a declaration that Fuller's 'E.S.B.' trademark registered as of 15 April 1988, was invalid. At first instance the challenge to validity was unsuccessful but the trademark was revoked on the grounds of non-use, in respect of all goods except bitter beers. West appealed to the Court of Appeal on this decision and Fuller cross-appealed against the order for partial revocation.

West had alleged that the mark fell foul of s.3(1)(b)(c)(d) - the mark was devoid of any distinctive character and that the letters were a common abbreviation or descriptor in the trade, (as an abbreviation for Extra Strong Beer) and had not acquired any distinctiveness since registration. On appeal West alleged that the descriptive meaning of the mark had to be displaced.

Decision:

Dismissing the appeal and cross-appeal; the judge's findings that the use of the 'E.S.B' mark had been extensive and had been regarded as a brand by 1988; and that the initials 'E.S.B.' were not a customary term for beer, were upheld. The appeal had turned on the objection under s.3(1)(c) and s.3(1)(d).

After the ECJ's judgement in Koninklijke Philips Electronics NV v Remington it was clear that s.(1)(1) did not impose an additional requirement of distinctiveness separate from that imposed by s.3(1)(b),(c),(d), and 3(3), and on the judge's findings, the initials possessed a secondary meaning additional to the purely descriptive meanings attaching to the words which the initials represented.

This decision is also important because it gives consideration to the infamous ECJ Baby Dry decision on absolute grounds for trade mark registration and approves the principles in that case.