Anonymised Summary of Opinion (appeal concerning validity of position trade marks)

Factual and Procedural Background

This is an appeal by the First Defendant (referred to throughout as "Defendant") against an order of the trial judge, Judge Smith, dated 13 December 2024 which declared invalid six United Kingdom registered trade marks ("the Trade Marks") owned by the Defendant. The judge's substantive reasoning appears in her judgment dated 22 November 2024 ([2024] EWHC 2990 (Ch)). Permission to appeal was granted by the trial judge.

In the underlying trial the Claimants (referred to throughout as "Plaintiff") sought declarations of invalidity, alternatively revocation, of 16 registered trade marks owned by the Defendant. The marks all featured three stripes applied to clothing, footwear, bags or hats. The Plaintiff attacked the registrations on three grounds: (i) lack of registrability (the requirement that the subject-matter is a sign and is properly represented), (ii) lack of distinctive character, and (iii) lack of genuine use. The trial judge found the registrability attack succeeded in respect of eight of the 16 registrations and failed in respect of the other eight. The attack for lack of distinctive character failed against all 16 marks; the non-use attack largely, but not entirely, failed. The Defendant's counterclaim for trade mark infringement and passing off was dismissed. The present appeal concerns the judge's findings that a subset of the Trade Marks were invalid for lack of registrability.

There have been parallel invalidity and related proceedings before the European Union Intellectual Property Office (EUIPO) (including its Cancellation Division and Board of Appeal) and before the District Court of The Hague involving substantially similar marks. The EUIPO and Hague proceedings form part of the factual and procedural backdrop considered by the court on appeal.

The Trade Marks at issue are so-called "position marks" made up of a pictorial representation and an accompanying written description. A subset of the UK registrations were originally EU/Community marks which became "comparable" United Kingdom marks after the UK's withdrawal from the EU. The opinion explains differences between the "Comparable Trade Marks" and the "Pure UK Trade Marks" but records that those differences were not material for the appeal.

Legal Issues Presented

1. Do the Defendant's Trade Marks (and each of them) constitute a "sign" so that the subject-matter of the registration is a single sign rather than a multiplicity of different signs? (The "first condition" derived from Article 2 of the Directive / Article 4 of the Regulation and their UK implementation.)
2. If the subject-matter is a sign, does the graphical representation of that sign on the register satisfy the legal requirements of clarity and precision (i.e. is the representation clear, precise, self-contained, easily accessible, intelligible, durable and objective)? (The "second condition".)
3. Was the trial judge's evaluative fact-finding and legal application on those questions infected by error of law such that the appellate court should intervene?

Arguments of the Parties

Appellant's (Defendant's) Arguments

• The trial judge wrongly treated as determinative the fact that the written descriptions allowed for variants not depicted in the pictorial representations, relying improperly on the Dyson principle (i.e. that an applicant cannot claim all conceivable variants where pictorial examples are said to be merely examples).
• The judge overstated the degree of variation encompassed by each Trade Mark and thereby mischaracterised what was claimed.
• The judge confused the requirement of clarity and precision with a requirement that every permissible variation must be depicted in the pictorial representation; in other words, the judge erred by requiring pictorial depiction of variations rather than properly assessing the written description.
• The judge focused improperly on visual differences between variants and failed adequately to consider whether such differences would affect the "origin" message conveyed to the relevant public (i.e. she failed to assess the impact of variation on the indication of trade origin).
• As supporting material, the Defendant relied on favourable decisions from the EUIPO Cancellation Division and the District Court of The Hague (and other foreign decisions) as demonstrating different analyses and outcomes.

Respondent's (Plaintiff's) Arguments

• The trial judge did not adopt the impermissible position that any unrepresented variant is automatically fatal; rather she treated such unrepresented variants as a relevant factor among others in the first and second condition analyses.
• The judge reasonably concluded that the written descriptions (read together with the pictorial examples) embrace a wide range of variations such that, on proper analysis, the subject-matter amounts to either multiple signs or a single sign that is not represented with the required precision.
• The judge correctly applied the established case law (as summarised in the opinion) and did not err in principle; the foreign decisions do not demonstrate legal error and, where they differ, they are either fact-specific or not higher authority.
• The evidence of use adduced by the Defendant did not operate as a legitimate cross-check on the registrability question (which is logically anterior to distinctiveness and use) and did not establish that the public would understand all variations as indicating the same origin.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Company A v Company B [2003] ECR I (Libertel)	Establishes the three cumulative conditions for registrability: (1) the sign, (2) graphical representation, (3) capacity to distinguish.	The court treated Libertel as establishing that the conditions are independent and cumulative and used it as foundational authority for assessing whether the Trade Marks satisfy the statutory definition.
Company C (Heidelberger Bauchemie) [2004] ECR I-6129	Colour or combination of colours in the abstract may be a sign only if they represent a sign in context and are systematically arranged in a predetermined, uniform way; representation must show contours/arrangement.	Used to emphasise that colour claims in the abstract without systematic arrangement do not satisfy the graphical representation requirement; supports caution with broadly worded colour/appearance descriptions.
Company D v The Registrar [2007] ECR I-687 (Dyson)	Where an application claims all conceivable appearances (e.g. transparency taking many forms) the subject-matter may be a mere property of the product and not a sign; such breadth fails the first condition.	The court relied on Dyson to explain the principle that a description embracing an indefinite multiplicity of signs can be fatal to registrability; the judge applied this reasoning when assessing whether written descriptions led to “unrepresented signs”.
Company E v Company F [2003] ECR I-14329 (Shield Mark)	Second condition: representations must be clear and precise; examples show that certain descriptive approaches (e.g. onomatopoeia) fail while formal notation (e.g. full musical score) may satisfy the requirement.	Used to illustrate the nature of the precision required for non-visual signs and to support the requirement that a verbal description must clarify the subject-matter and scope of protection.
Company G v Company H [2013] EWCA Civ 1175 (Spear v Zynga)	A written description embracing a multitude of permutations (size, position, combinations) may fail the first condition; also second condition may fail where representation is not clear and precise.	The court relied on this authority to support the proposition that marks covering an infinite number of permutations can be mere properties of the goods and do not qualify as a sign; used as directly relevant domestic authority.
Company I v Company J [2013] EWCA Civ 1174 (Nestlé v Cadbury)	A description that embraces an unknown number of signs or an undefined range of uses lacks clarity and precision, failing the requirements for graphical representation.	Applied to demonstrate that accompanying verbal descriptions can render a registration invalid where they introduce indeterminacy beyond what is depicted.
Company K v Company L [2003] ECR I-2799 (LTJ Diffusion)	Case law concerning tests for identity (referred to in the opinion as context for discussion of whether differences are perceptible to the consumer).	Referenced to distinguish the identity test (used in other contexts) from the separate analysis required for registrability under the first and second conditions.
Company M (Hartwall) [EU:C:2019:261]	Where an application contains an inconsistency between a pictorial drawing and a verbal description the registration must be refused for lack of clarity and precision.	Relied on to support the proposition that inconsistency between pictorial and verbal elements can render an application unclear and imprecise; court used it to reject submissions that pictorial and verbal elements could be read in an inconsistent fashion.
Company N v EUIPO [EU:C:2019:641] (Red Bull)	Verbal description must clarify the pictorial representation and cannot be inconsistent; registration allowing a plurality of undetermined reproductions is incompatible with the representation requirement.	Used to confirm that registrations permitting multiple indeterminate reproductions will fail the graphical representation requirement, reinforcing the analysis of the trial judge.
Company O v Company P [2017] EWCA Civ 335 (Glaxo v Sandoz)	Second condition requires clarity such that third parties can determine the precise subject of protection; registrations leaving multiple plausible interpretations fail.	The court relied on Glaxo to explain how multiple possible interpretations of a registration undermine clarity and create unfair competitive advantage; the passage of Kitchin LJ was cited for the rationale behind the second condition.
Company Q v EUIPO (Stihl) [T-193/18; EU:T:2021:163]	General Court decision applying principles to particular facts; not assimilated law but persuasive where relevant facts align.	The court observed this decision but noted it is not assimilated (i.e. not binding) and that it is difficult to reconcile with higher court authorities such as Hartwall and Red Bull; used to explain limits of relying on that decision.
Company R v Company B [2004] ECR I-1619 (KPN)	Third condition: sign incapable of distinguishing goods for the purpose of Article 2 if it cannot do so irrespective of the goods/services in question.	Referred to as context for the tests applicable to the third condition, although the appeal turned on the first and second conditions so detailed discussion was unnecessary.
Company S v The Patent Office [EU:C:2014:2070] (Apple)	Clarification of the third condition (capacity to distinguish) in terms of being incapable of distinguishing irrespective of goods/services.	Referenced for completeness on the third condition; not pivotal to the court's determination on this appeal.
Company T v Company U [2024] UKSC 8 (Lifestyle Equities v Amazon)	Sets out appellate standard of review for evaluative judgments (deferential; only intervene for error in law or principle including gaps in logic or failure to take account of material factors).	Cited to explain the limited circumstances in which the appellate court may overturn the trial judge's evaluative conclusions; court applied that standard and found no error.
Company V v Company W [2025] UKSC 25 (Iconix v Dream Pairs)	Reinforces standard of review for appellate intervention in evaluative matters.	Used alongside Lifestyle Equities to confirm the proper standard governing the appeal court's review of the trial judge's assessments.

Court's Reasoning and Analysis

The appellate court applied a deferential standard of review: the trial judge's conclusions were evaluative and would only be disturbed for an error of law or principle, including a gap in logic or failure to take into account a material factor. The court set out and applied the established three-stage framework derived from harmonised EU/UK trade mark law: (1) the subject-matter must be a sign, (2) the sign must be capable of being represented graphically (with the representation meeting strict criteria of clarity, precision, self-containment, intelligibility, durability and objectivity), and (3) the sign must be capable of distinguishing the relevant goods or services.

The court reviewed the authorities (including the anonymised leading authorities above) and summarised the trial judge's approach. The judge had divided the Plaintiff's objections into (a) arguments of non-compliance with the first condition (the subject-matter being a multiplicity of signs rather than a single sign) and (b) arguments of non-compliance with the second condition (the graphical representation being unclear or imprecise). The judge had interpreted the pictorial and verbal elements together, and she accepted that in some respects the pictorial examples were intended as non‑limiting illustrations, but she concluded that the written descriptions nonetheless allowed too wide a range of variations.

The court analysed the judge's detailed reasoning in relation to each challenged mark (for example, a "Tracksuit Top" mark described in the opinion). The judge identified many possible permutations (different starting and finishing points for stripes on sleeves; variations between long and short sleeves; possible variation in stripe position on the sleeve) and concluded that the combined pictorial and verbal representations would lead the public and third parties to confusion about what exactly was protected. The judge therefore concluded that, on the facts, the subject‑matter either did not constitute a single sign or was not represented with the requisite clarity and precision. Her conclusion was that the registrations failed both the first and second conditions in section 1(1) of the Trade Marks Act 1994 (as then in force) and the equivalent EU provisions.

The appellate court considered each ground of appeal in turn:

• Ground 1 (Dyson-related argument): The court held the trial judge did not adopt an all‑or‑nothing rule that any verbal allowance for unrepresented variants is inevitably fatal. Rather, the judge treated the presence of unrepresented variants as a relevant factor; she had also expressly stated that variations can sometimes be permissible. The appellate court found no legal error in that approach.
• Ground 2 (overstating variation / underside-of-sleeve comment): The court found no inconsistency in the judge's analysis and considered any single observation about, for example, underside placement of stripes to be an ancillary observation rather than essential to her reasoning. Any overstatement on that point would have been immaterial to the core reasoning, which focused on the broad variety of permutations illustrated by the Cancellation Division.
• Ground 3 ("one third or more" wording): The court accepted that words can be individually clear yet their practical effect may still be unclear when read with a non-limiting illustration; the judge's analysis that the written phrase created uncertainty in practice was legally coherent and consistent with authorities such as Red Bull, Hartwall and Glaxo.
• Ground 4 (focus on visual differences / origin message): The court rejected the criticism that the judge failed to consider whether visual differences would affect the origin message. The judge did assess whether the public would "see the same mark" and rejected the Defendant's submissions; the appellate court found that evidence of use did not provide a proper cross‑check on registrability and there was no survey evidence demonstrating the relevant public's understanding.

The court also dealt with foreign and EU decisions relied upon by the Defendant (e.g. decisions of the EUIPO Cancellation Division, Board of Appeal and the District Court of The Hague). The appellate court said those decisions were either inconsistent among themselves or not binding and did not demonstrate error by the trial judge. Where decisions were favourable to the Defendant, the appellate court recorded that they were distinguishable or under appeal.

Holding and Implications

Holding: The appeal was dismissed. The appellate court concluded that the trial judge made no error of law or principle in her assessment and was entitled to hold that the Trade Marks at issue failed to comply with the requirements for registrability under the first and second conditions of the legislative scheme (as implemented in section 1(1) of the Trade Marks Act 1994, Article 2 of the Directive and Article 4 of the Regulation).

DISPOSITION: APPEAL DISMISSED

Immediate Consequences

• The trial judge's declarations of invalidity (insofar as they concerned the six UK registered trade marks challenged on the appeal) stand.
• The court affirmed that the proper analysis requires careful separation of the first condition (whether the subject‑matter is a sign) and the second condition (whether the graphical representation is sufficiently clear and precise), and that the presence of unrepresented variants is a relevant but not necessarily determinative factor.
• The appellate court emphasised the constrained standard of review for evaluative factual and mixed questions on appeal: intervention is only appropriate for legal error or a flaw in the judge's reasoning, not merely because an appellate court might have reached a different view.
• No novel general legal principle was announced; the judgment applies and explains existing authorities to the facts of these registrations.

Panel and Concurrence

The court's reasoning and disposition were given by Judge Arnold. Judge Falk and Judge Jackson agreed and delivered concise concurring observations endorsing the primary analysis and conclusion.

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Note on anonymisation: All persons and commercial parties named in the original opinion have been replaced with generic, consistent placeholders (e.g. "Defendant", "Plaintiff", "Judge Smith", "Judge Arnold", and "Company A", "Company B", etc.) in accordance with the instruction to anonymise personally identifiable information. Citations and statutory references have been preserved in form and content only to the extent set out in the provided opinion; no facts beyond the opinion text have been introduced.