Factual and Procedural Background
This appeal concerns an application by Company A to register a three-dimensional shape mark (the "Trade Mark") representing the shape of a well-known four-finger chocolate product in the United Kingdom, excluding the embossed logo present on the actual product. The application was opposed by Company B on grounds including lack of distinctive character under section 3(1)(b) of the Trade Marks Act 1994, implementing Article 3(1)(b) of Directive 2008/95/EC. Company A claimed acquired distinctiveness under the proviso in section 3(1), corresponding to Article 3(3) of the Directive.
The opposition was heard by a hearing officer who found the Trade Mark devoid of inherent distinctive character except for cakes and pastries, and that it had not acquired distinctiveness for other goods. An appeal and cross-appeal were heard by Judge Arnold J, who found the hearing officer incorrect regarding inherent distinctiveness for cakes and pastries and referred questions concerning acquired distinctiveness to the Court of Justice of the European Union (CJEU).
The CJEU delivered judgment clarifying the legal test for acquired distinctiveness. On remittal, Arnold J dismissed Company A's appeal, holding the hearing officer had correctly applied the law and evidence. Company A now appeals that decision.
Legal Issues Presented
- Whether, to establish acquired distinctiveness under Article 3(3) of Directive 2008/95/EC, it is sufficient for the applicant to prove that a significant proportion of the relevant public recognise and associate the Trade Mark with the applicant's goods, or whether it must be shown that the Trade Mark alone, as opposed to any other marks present, identifies the goods as originating from a particular undertaking.
- The proper interpretation of the phrase "use of the mark as a trade mark" in the context of acquired distinctiveness, particularly where the mark is used in conjunction with other registered marks.
- Whether the hearing officer and Arnold J correctly applied the legal test to the evidence in finding that the Trade Mark had not acquired distinctive character by the relevant date.
Arguments of the Parties
Appellant's Arguments
- A significant proportion of relevant consumers identified the three-dimensional shape as that of the product sold by Company A and perceived it as originating from a single source, satisfying the acquired distinctiveness requirement under Article 3(3).
- The hearing officer and judge wrongly imposed a further requirement that consumers must have come to rely on the Trade Mark in transactional decisions, which is unsupported by law and inconsistent with the CJEU decision.
- The hearing officer's assessment of survey evidence was flawed, and the presence of similar third-party products on the market was wrongly taken into account.
- The General Court's decision in a related EU trade mark case supports the conclusion that the Trade Mark has acquired distinctiveness in the UK, and its findings on EU law are binding.
Respondent's Arguments
- The hearing officer and judge correctly applied the legal test requiring that consumers perceive the Trade Mark as indicating the origin of goods exclusively designated by it, not merely associate it with Company A's goods.
- It is essential for acquired distinctiveness that consumers would rely on the Trade Mark as a badge of origin in their transactional behaviour, whether the mark is used alone or alongside other marks.
- The hearing officer properly evaluated the evidence, including the survey results and the presence of similar products, and was entitled to conclude that the Trade Mark lacked acquired distinctiveness.
- The General Court decision is not binding on this court in respect of EU law points and misunderstood the CJEU decision by equating recognition and association with acquired distinctiveness.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber [1999] ECR I-2779 |
Factors relevant to acquired distinctiveness including market share, use, promotion, and consumer recognition. |
Guided the hearing officer's overall assessment of evidence for acquired distinctiveness. |
| Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475 |
Acquired distinctiveness requires use of the mark as a trade mark that makes it capable of distinguishing goods from others. |
Reinforced that identification by relevant consumers must be due to use as a trade mark. |
| Case C-353/03 Société des Produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135 |
Acquired distinctiveness may arise from use of a mark as part of or in conjunction with a registered trade mark. |
Confirmed that perception must be that goods designated exclusively by the mark originate from a particular undertaking. |
| Case C-136/02P Mag Instrument v OHIM [2004] ECR I-9165 |
Consumers do not habitually assume product shapes indicate origin absent other elements; shapes closely resembling normal product forms are less likely to be distinctive. |
Supported hearing officer’s finding that the shape was within sector norms and lacked inherent distinctiveness. |
| Case C-24/05P August Storck KG v Office for Harmonisation in the Internal Market [2006] ECR I-5677 |
Degree of consumer attention varies; highest attention typically at point of purchase. |
Informed the tribunal’s consideration of how consumers perceive marks in different circumstances. |
| Vibe Technologies Ltd’s Application [2009] ETMR 12 (Arnold QC, Appointed Person) |
Reliance by consumers on a sign as indicating origin is sufficient for acquired distinctiveness; explicit promotion as a trade mark not essential. |
Hearing officer adopted this test to assess evidence of reliance and perception. |
| Joined Cases C-217/13 and C-218/13 Oberbank AG v Deutscher Sparkassen- und Giroverband EV [2014] ETMR 56 |
Consumer surveys are one factor in assessing acquired distinctiveness but cannot be the sole decisive criterion. |
Hearing officer properly considered survey results alongside other evidence. |
| General Court Case T-112/13 Mondelez UK Holdings & Services Ltd v EUIPO [2016] ETMR 13 |
Confirmed that acquired distinctiveness requires perception that the mark alone identifies origin; recognition and association alone insufficient. |
Cited by appellant but court found it did not alter the established legal test or hearing officer’s decision. |
Court's Reasoning and Analysis
The court analysed the statutory framework under Article 3 of Directive 2008/95/EC and the Trade Marks Act 1994, focusing on the requirement that a mark devoid of inherent distinctiveness may be registered if it has acquired a distinctive character through use. The court emphasised the CJEU’s clarification that acquired distinctiveness requires the relevant public to perceive the goods designated exclusively by the mark as originating from a particular undertaking, not merely to recognise or associate the mark with the goods or proprietor.
The court reviewed the hearing officer’s detailed findings, including sales and promotional data, the nature of the product packaging, and the results of two consumer surveys. It endorsed the hearing officer’s conclusion that while a significant proportion of consumers recognised the shape and associated it with Company A’s product, there was no evidence that consumers relied on the shape alone as an indication of origin in transactional decisions.
The court explained that reliance, understood as the behavioural consequence of perception, is a relevant consideration in assessing distinctiveness, especially where the mark is used in conjunction with other marks. The hearing officer’s approach, which required evidence that the mark had been used as a trade mark capable of distinguishing the goods, was consistent with the CJEU’s jurisprudence and appropriate in the circumstances.
The court also addressed the appellant’s criticisms of the survey methodology and the use of evidence concerning third-party products, finding no error in the hearing officer’s evaluation. It further distinguished the General Court’s decision in the related EU trade mark case, concluding that it did not mandate a different outcome.
Finally, the court acknowledged the technical and nuanced nature of the distinction between recognition/association and perception as a badge of origin, affirming the importance of this distinction given the exclusive rights conferred by trade mark registration.
Holding and Implications
The court DISMISSED the appeal, upholding the hearing officer’s and Arnold J’s decisions that the Trade Mark had not acquired a distinctive character by the relevant date under Article 3(3) of Directive 2008/95/EC and the Trade Marks Act 1994.
The direct effect of this decision is that Company A’s application to register the three-dimensional shape as a trade mark was correctly refused. No new precedent was established beyond reaffirming the existing legal principles regarding acquired distinctiveness for inherently non-distinctive marks, particularly three-dimensional shapes used in conjunction with other marks.