D GREEN & COMPANY (STOKE NEWINGTON) v and PLASTICO LTD and [2001] EWCA Civ 639

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
MR JUSTICE NEUBERGER
[2001] EWCA Civ 639Case No Case No: CHANF 00/0008/A3Venue Royal Courts of Justice, Strand, London, WC2A 2LL, Friday 4th May 2001
Between
D GREEN & COMPANY (STOKE NEWINGTON)Appellantand PLASTICO LTD andREGALZONE LIMITEDRespondent
Before
Lord Justice ChadwickLady Justice ArdenLord Justice NourseMr Douglas Campbell (instructed by Wragge & Co for the Appellant)Mr Richard Hacon (instructed by Beckman & Beckman for the Respondent)Date 4 May 2001

LORD JUSTICE CHADWICK:

This

[1]is an appeal against an order made on 13 July 1999 by Mr Justice Neuberger in proceedings brought by D Green & Company (Stoke Newington) Limited and Plastico Limited against Regalzone Limited for alleged infringement of a registered trade mark. The judge upheld the validity of the mark. He held that there had been use of the mark by the alleged infringer, Regalzone, on price lists and circulars. He rejected the defence of 'non-trade mark use' based on section 4(1)(a) of the Trade Marks Act 1938 and section 11(2) of the Trade Marks Act 1994. He granted injunctions against further infringement of the mark and against passing off; and ordered an inquiry as to damages. He refused permission to appeal against his order.[2]Permission to appeal was granted by this Court (Lord Justice Mummery) on 13 December 1999. The appellant, Regalzone, does not seek to challenge the judge's finding as to validity. The principal issue on the appeal is whether the appellant can rely on the defence of non-trade mark use.[3]The mark, "SPORK", was registered in the Register of Trade Marks maintained under the Trade Marks Act 1938 as TM 1052291 with effect from 18 September 1975. The registration is in respect of "cutlery, forks and spoons, all included in class 8". The first named claimant, D Green & Co (Stoke Newington) Limited, is the proprietor of the mark. That company had traded in disposable catering products from 1949 under the name "Plastico Mouldings", but its business was transferred in 1984 to its wholly owned subsidiary, the second named claimant Plastico Limited.[4]Plastico (by which name I can conveniently refer to both claimants) has used the mark in relation to one product only; that is to say, in relation to a white plastic utensil which is the size and shape of a large teaspoon but which has three V-shaped cuts in the bowl of the spoon so as to form the prongs or tines of a fork. It is plain that the utensil is adapted for use as a combination of spoon and fork, to assist in the consumption of convenience or "fast" food and to be disposable after a single use. The utensil is supplied by Plastico to the trade; and is only provided to the general public without charge and in conjunction with the supply of food.[5]Plastico claims no monopoly in the manufacture or supply of disposable catering products having the same characteristics as those which it supplies under the mark SPORK. Similar white plastic utensils – virtually identical in size and shape – are supplied to the trade by other manufacturers and suppliers. In particular, such utensils are supplied by the appellant, Regalzone, which, since 1991, has been in the business of importing and distributing disposable catering products. The issue in these proceedings is not whether the appellant can continue to supply to the catering trade a white plastic utensil which is virtually identical to the product which Plastico supplies under the mark SPORK. The issue is whether the appellant is entitled to use the word "spork" to identify or describe the product or products which it supplies. More precisely, the issue on this appeal is whether the use which (as the judge has held) the appellant has made of the word "spork" is trade mark use; and so properly the subject of an action for infringement by Plastico as the proprietor of the registered mark SPORK.[6]The use complained of falls into two distinct but related categories:(i) use in price lists issued by the appellant on various dates between 9 February 1993 and 28 October 1993; and(ii) use in correspondence between the appellant and a single customer, Automatic Catering Supplies Limited ("ACS"), between 6 January 1995 and 3 July 1995. A further category of use which was the subject of pleaded complaint – the labelling of cases sent by the appellant to ACS and to its associated company, Bunzl Disposables Limited – was not pursued at the trial. The judge described the position in a short passage of his judgment, at page 29 line 23 to page 30 line 3 in the transcript:
"Of the three items where Regalzone is alleged to have used the mark, Plastico has rightly, in my judgment, abandoned the first, that is the alleged use on boxes of spoon/forks supplied to ACS, Bunzl or others. It maintains its claim that Regalzone made use of SPORK on letters to ACS and on price lists to customers. I do not understand that as a matter of fact to be contested."
The circumstances in which the word "spork" was used by Regalzone[7]Master Plastics A/S is a Danish company engaged in the production of injection moulded plastic products; including products for supply to the catering trade. Documents available at the trial – and produced to us at the hearing of the appeal – show that, from the early 1990s, its "cocktail/snack" range of products has included a product adapted for use as a combination spoon and fork and described as a "spork".[8]The circumstances in which Regalzone came to use the word "spork" in price lists and correspondence is described by Mr Peter Blewett, a director of Regalzone, in a witness statement signed on 14 May 1999:
"11. I already knew [at the time when Regalzone started doing business with Master Plastics A/S] that Master Plastics products included injection moulded plastic cutlery. I discovered that the range included a spork. I also discovered at the outset that Master Plastics' name for the product was a spork. I have located in Regalzone's files an old Master Plastics catalogue. I cannot date it exactly but believe it predates Regalzone's dealings with Master Plastics. The product is described as a spork. Master Plastics have continued to use the name spork simply as a description of the product. Over the years I have worked for Regalzone I have learned that the term spork is used descriptively throughout the trade on the continent of Europe and, as I shall deal with in more detail, is a descriptive name used widely in the trade in the United Kingdom. 12. Because the product was called a spork by Master Plastics, when Regalzone first started to try to sell it in the United Kingdom that was the name we used. We offered the product to a number of companies including ACS and Coptrin. There are in Regalzone's files a number of letters and price lists dating from 1993, and which relate to the time when we started to try to sell the product. We used the name spork in a purely descriptive way in a list of descriptions of that and other products. So far as I can recall, we always specified the product as being from Master Plastics. 13. We did not initially get any substantial business from the sale of sporks. It was only in 1995 that we started to get any substantial business and this came from ACS who started to buy the product in quantity. I cannot now recall exactly when, but in the course of our dealings with ACS they requested us to change the product description on the product supplied to them. We changed it to 'snack spoon'. This involved us in changing the product name to 'snack spoon' in our computers and that became the product description used generally."
The judge described Mr Blewett's evidence as "self serving". But the paragraphs of his witness statement which I have just set out were not contradicted by any other witness; and the judge does not say that he did not accept that evidence. He accepted that the word "spork" was used generically "to an extent". Mr Blewett's evidence that the Master Plastics' range included an item which it, Master Plastics, described as a "spork" is consistent with the catalogues which we have been shown. I can see no reason why the paragraphs of his witness statement which I have just set out should be disregarded or rejected. The relevant legislation[9]The use on price lists – so far as it is the subject of specific complaint in these proceedings – is use before 31 October 1994 (when the relevant provisions of the Trade Marks Act 1994 were brought into effect). In considering the allegation of infringement by that use, therefore, it is necessary to examine the position under the Trade Marks Act 1938. But the 1938 Act is relevant, also, to the use in correspondence between the appellant and ACS, between 6 January 1995 and 3 July 1995. The reason is found in the transitional provisions contained in schedule 3 to the Trade Marks Act 1994.[10]Paragraph 4(2) of schedule 3 to the 1994 Act provides that it is not an infringement of an existing registered mark to continue after the commencement of the 1994 Act any use which did not amount to infringement of that mark under the old law – that is to say, under the law as it stood immediately before the commencement of the 1994 Act. In that context an "existing registered mark" means a trade mark registered under the 1938 Act; and the old law includes the provisions of section 4(1) of the 1938 Act. In the present case it has been common ground that the use in 1995 which is the subject of complaint is a continuation of use which had begun before the commencement of the 1994 Act; see paragraph 8A of the re-amended defence served on 17 May 1999 and paragraph 6A of the amended reply served on 22 May 1999. Mr Blewett's evidence bears that out. So, in relation to the use in correspondence in 1995, it is enough that the appellant succeeds in a defence either under the 1938 Act or under the 1994 Act. The 1938 Act[11]Section 4(1) of the Trade Marks Act 1938 (as amended by the Trade Marks (Amendment) Act 1984) is in these terms, so far as material:
". . . the registration of a person in Part A of the register as proprietor of a trade mark . . . in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof . . . uses in the course of trade a mark identical with or nearly resembling it, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either – (a) as being used as a trade mark; . . ."
In that context, the phrase "to be taken . . . as being used as a trade mark" takes its meaning from the definition of "trade mark" in section 68(1) of the Act:
" 'trade mark' means . . . a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark . . ."
[12]The question, therefore, under section 4(1)(a) of the 1938 Act, is whether the use which is alleged to be infringing use is(i) use in the course of trade(ii) of a mark identical with or nearly resembling the registered mark(iii) in relation to any goods in respect of which it is registered and(iv) in such manner as to render that use likely to be taken as use for the purpose of indicating, or so as to indicate, a connection between the goods in relation to which the use is made and some person having the right to use the registered mark. In the present case, there is no dispute – and no doubt - that the elements which I have numbered (i), (ii) and (iii) are satisfied. The issue is whether the use of the word "spork" in the price lists issued by the appellant in 1993 and in the 1995 correspondence was use likely to be taken as trade mark use, in the sense which I have described.[13]To pose the issue in those terms begs the question:
"likely to be taken by whom?"
The appellant accepts – rightly, in my view – that that question is not answered by an investigation into the subjective understanding of the actual recipient or recipients of the price lists or the correspondence. The question requires an objective answer. The answer which I would give, in the present context, is "likely to be taken as trade mark use by an average recipient"; treating as "an average recipient" for that purpose a trade purchaser of disposable catering products (that is to say, a person within the class of those for whose purposes the price lists were intended or to whom the correspondence was addressed) who is reasonably well informed and reasonably observant and circumspect. The "average recipient" may be seen as a particular embodiment of the "average consumer" to whom those characteristics – reasonably well-informed and reasonably observant and circumspect – were attributed by the Court of Justice at paragraph 31 of its decision in Case C-210/96 Gut Springenheide GmbH and Tusky [1998] ECR I-4657 ; see, also, the decision of the Court of Justice in Case C-324/97 Lloyd Shuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ETMR 690 , at paragraph 26, and the decision of this Court in Bach and Bach Flower Remedies Trade Marks [2000] RPC 513, at pages 524 (paragraph 28) and 534/5. The price lists[14]There were seven price lists (or sets of lists) in evidence at the trial:(i) a list, headed "Master Plastics – Bulk Prices", sent to BCL Supplies Ltd under cover of a letter dated 9 February 1993;(ii) a list, divided under the headings "ISAP Products" and "Masterplastics Products", contained in a letter dated 5 April 1993 sent to Staples Disposables;(iii) a list, divided under the headings "ISAP", Tolkki" and "Master Plastics", contained in a letter dated 7 April 1993 sent to Coptrin Catering;(iv) a list, divided under the headings "Fastcup", "Master Plastics" and "ISAP", contained in a letter dated 20 September 1993 sent to W K Thomas & Co;(v) three lists, headed respectively "ISAP", "Masterplastics" and "Fastcup", sent to Malsarkest Limited under cover of a letter dated 21 September 1993;(vi) two lists, headed respectively "Isap Crystal and Polypropylene Glasses" and "Masterplastics Injection Moulded Products", sent to ACS under cover of a letter dated 21 October 1993; and(vii) a list, divided under the headings "Masterplastics" and "ISAP", sent to Coptrin Limited under cover of a letter dated 28 October 1993. In each case the Master Plastics' list (or the Master Plastics' section of the list, as the case may be) included an item referred to as "spork". In most (but not all) cases that item is in a distinct section of the list, grouped with other items of the same general nature - "chip fork", "coffee stirrer", "stirrers", "coffee spoon" or "snack spoon". The question is whether the recipient of a list in that form and in those circumstances would understand the item "spork" to mean a product supplied or manufactured by Plastico. It is common ground, of course, that the item which Regalzone would actually supply to a trade customer who ordered "sporks" off one of those price lists would not be a product supplied or manufactured by Plastico.[15]"Spork" is a contrived, or "fancy", word. It is obvious, once the word is linked to the product in connection with which it was used by Plastico, that the word is an elision of the two descriptive words "spoon" and "fork". It was said, in support of the argument that registration of the mark SPORK was invalid, that it was so obviously a combination of those two descriptive words that it was, itself, wholly descriptive and so incapable of distinguishing the goods of one trader from those of another.

The judge addressed that argument in a passage at page 23 in the transcript of his judgment:

"I turn to the second issue, which is whether SPORK is capable of distinguishing Plastico's goods from those of another - section 3(1)(a) [of the Trade Marks Act 1994]. In essence, on this issue, it is said that SPORK is not capable of being a trade mark; that it is self-evidently a spoon/fork with the last "on" of spoon and the "f" of fork elided so as to make a single convenient word "
SPORK"; that it is obvious what a SPORK is, and therefore it is said that it is descriptive of the item and cannot be a trade mark. I reject that argument. I accept that the word SPORK involves a clever idea of making a single word by eliding the end of the word spoon and beginning of the word fork. The fact that it is clever and the fact that the meaning of SPORK could be said to be obvious once it is explained does not mean that it is obvious what it is. Indeed, I would have thought that if one asked a person in 1975 what a SPORK was, he or she would not know. If one then explained what it was and how the word came about, one might then be told that it was obvious or that it was clever."[16]The judge then went on to consider whether SPORK had, since registration, become purely descriptive through use. He said this, at page 29 lines 11 to 19 in the transcript of his judgment:
"It is true that in correspondence involving ACS and Bunzl, reference could be said to have been made to SPORK as a generic term, at least arguably, but that is of course comparatively late in the day. Overall, I am satisfied that by the present day, and over the 1980's and 1990's, SPORK, if it had not already, contrary to my view, been a trade mark properly registered in the name of Plastico, had become redolent of spoon/forks from Plastico. I accept that it was also used generically to an extent."
[17]The point for decision on this appeal is whether, in the circumstances that, as the judge found, the word "spork" had acquired a generic or descriptive meaning – that is to say, that the word had a hybrid quality; being understood by some (or in some contexts) as distinctive of Plastico's product and by others (or in other contexts) as descriptive of any small white plastic combined spoon/fork utensil – it would have been taken by the "average recipient" of a price list in the form of those which I have described as being used, in that context, to mean a product supplied or manufactured by Plastico.[18]The judge did not ask himself that question. He asked himself a different question: "would the price lists have been understood by a number of people in the trade, and reasonably so understood, as indicating a spoon/fork manufactured by Plastico?" – see the passage of his judgment at page 32, line 16 to page 33, line 8. He answered that question in the affirmative. For my part, I have serious doubt whether he was entitled to come to that conclusion on the evidence which was before him - to which he refers in his judgment. But that is irrelevant. It cannot assist the appellant to establish that the answer which the judge gave to the wrong question may, itself, have been wrong.[19]In my view the answer to the relevant question - would the word "spork" have been taken by the "average recipient" of a price list in the form of those which I have described as being used, in that context, to mean a product supplied or manufactured by Plastico - is not in doubt. Use of the word in that context would not have been taken by a reasonably well informed and reasonably observant and circumspect trade purchaser of disposable catering products to identify a Plastico product. The reason, as it seems to me, is that the item referred to as a "spork" in the price lists is plainly identified as a Master Plastics product. The point is best illustrated by the covering letter to Malsarkest Limited, dated 21 September 1993:
"Isap and Fastcup products are direct deliveries from the factories and Masterplastics [products] are quoted both direct [from the factory] and from our warehouse."
The price list sent with that covering letter lists prices for Master Plastics products (including the item "spork") in two columns, "Direct" and "Ex UK". The judge accepted that the word "spork" had acquired a generic or descriptive meaning. A reasonably well informed trade purchaser would know that. Knowing that, he could not think that the item in the price list, described as a Master Plastics product, was a Plastico product.[20]It follows that I would hold that use of the mark in the 1993 price lists was not likely to be taken as use for the purpose of indicating, or so as to indicate, a connection between the goods in relation to which the use is made and some person having the right to use the registered mark. There was no infringing use within section 4(1)(a) of the 1938 Act. The 1995 correspondence[21]The correspondence which is said to include infringing use falls into two tranches. The first tranche comprises only two letters. It begins with a letter dated 6 January 1995 from Ms Julia Clarke, who was at the time employed as product manager by ACS, to Mr Blewett of Regalzone. That letter followed a telephone conversation between them. Ms Clarke wrote:
"I now enclose samples of the products required. The products do not necessarily have to be exactly the same. Below I have listed the annual quantities."
It is plain that she was seeking information as to availability and price. The products listed included an item:
"Sporks 5'' (1x1000) 4000 cases"
. Mr Blewett replied on 18 January 1995:
"Thank you for your enquiry for injection moulded products. Attached are samples of our applicable items."
The products listed included:
"Snack Spoons (Sporks) Packed 1000 per case - £5.90 per case."
[22]The second tranche comprises four letters or memoranda between 8 June and 3 July 1995. It begins with a note dated 8 June 1995 from Mr Blewett to Ms Clarke:
"Re. Sporks Our price for snack spoons (sporks) £6.20 per thousand from 1/7/95. Delivery in whole pallets of 100 cases of 1000 per case"
. He followed that with a note dated 27 June 1995, also to Ms Clarke:
"Bar code number on snack spoons (sporks) is 5709470002204. Regalzone article number for ordering is 220"
Ms Clarke replied on 30 June 1995:
"220 Sporks Please could you invoice me £7.50 per case for 1,000 sporks, with a yearly rebate of £1.30 per case net price £6.20/1,000."
That correspondence ends with a note from Mr Blewett to Ms Clarke dated 3 July 1995:
"We now have in our warehouse at Immingham stocks of Article 220 Snack Fork (spork) ready for your branches to call off."
The number 220 was the article number which Master Plastics allocated to the item which it described as a "spork". It is, I think, plain that the item which Regalzone did, in fact, supply to ACS following that correspondence was a Master Plastics' product.[23]The use of the word "spork" in letters or memoranda from Ms Clarke cannot be infringing use by Regalzone. But the use of the word by Ms Clarke provides the context in which Mr Blewett's letters and memoranda must be understood. The relevant question, again, is whether the word "spork" as used by Mr Blewett in his letters and memoranda would be taken by the "average recipient" of correspondence in that form to mean a product supplied or manufactured by Plastico. In my view that question, also, must be answered in the negative.[24]There are two reasons which lead me to that conclusion. First, the correspondence opens with a request by Ms Clarke for information as to availability and price of an item which had three characteristics:(i) it was to be identified by comparison with a sample which she had sent to Regalzone,(ii) it need not be exactly the same as the sample item, and(iii) the item was described by her as a "spork". In that context she could not, herself, have been taken to be referring only to a product supplied or manufactured by Plastico. Her use of the word "spork" was plainly descriptive. That colours the use of the word in the letters and memoranda thereafter - including letters and memoranda from Mr Blewett. Secondly, on each occasion that Mr Blewett uses the word "spork" in that correspondence, he does so as part of the composite phrase "snack spoons (sporks) or "Snack Fork (spork)". To my mind it is plain that he does so because he make it plain to the recipient of the letter that he regards "snack spoons" and "sporks" - in the context of this correspondence - as interchangeable descriptive terms. Or, to put the point another way, that he is confirming the availability and price of an item which he would describe as a "snack spoon" on the understanding that that is the item which the recipient has referred to as a "spork".[25]The judge decided the point against Regalzone on the basis that he was satisfied on the evidence that the word "spork" in the letters, "would have been understood by a number of people in the trade, and reasonably so understood, as indicating a spoon/fork manufactured by Plastico." As I have said, in relation to the price lists, I doubt whether that conclusion can be supported on the evidence. But, whether or not there were people in the trade who, if they had directed their minds properly to the context in which the word "spork" is used by Mr Blewett in the letters and memoranda, would have understood him to be referring to a product manufactured by Plastico, I have no doubt that that would not be the understanding of a reasonably well-informed and reasonably observant and circumspect trade purchaser who was the recipient of those letters and memoranda in the circumstances in which they were sent.[26]It follows that, in relation to the letters and memoranda also, I would hold that the use of the mark was not likely to be taken as use for the purpose of indicating, or so as to indicate, a connection between the goods in relation to which the use is made and some person having the right to use the mark. There was no infringing use, in the letters and memoranda, for the purposes of section 4(1)(a) of the 1938 Act. The 1994 Act[27]The conclusions which I have already expressed are sufficient to dispose of this appeal. Even if I were persuaded that the use of the word "spork" in the 1995 correspondence was infringing use for the purposes of the 1994 Act (which I am not), I would allow the appeal. The transitional provisions in paragraph 4(2) of schedule 3 to the 1994 Act, to which I have already referred, would require that result.[28]In those circumstances it is unnecessary to address the position under the 1994 Act at any length. But we have heard argument upon it; and it may be of some assistance if I explain why - in common with counsel for both appellant and respondent - I take the view that, in the present case, a conclusion that use would have been non-infringing use under section 4(1)(a) of the 1938 Act compels a conclusion that the same use would also be non-infringing use within section 11(2)(b) of the 1994 Act.[29]Section 11(2) of the 1994 Act is in these terms, so far as material:
"A registered trade mark is not infringed by - (a) . . . , (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods or services, or (c) . . . provided the use is in accordance with honest practices in industrial or commercial matters."
The judge made no finding that the use in the 1995 correspondence - if indicative of the kind, intended purpose or other characteristics of the product referred to - was otherwise than in accordance with honest practice in commercial matters. There was, as it seems to me, no evidence on which he could have found dishonesty. But he did not need to make a finding under the proviso; his finding was that the use was distinctive rather than descriptive.[30]The 1994 Act was enacted, as its long title makes clear, in order to implement EEC Council Directive 89/104 of 21 December 1988 ("the first Council Directive") on the approximation of the laws of Member States relating to trade marks. It is important, therefore, to keep in mind that the function of a registered trade mark (and the purpose of the protection to be afforded by the directive and by national legislation) is to guarantee the trade mark as an indication of origin. Article 6.1 ("Limitation of the effects of a trade mark") of the first Council Directive – to which section 11(2) of the 1994 Act gives effect in the national legislation – must be read in the light of that objective. It is, to my mind, clear that the purpose of article 6.1 is to exclude from the prohibitions in article 5 – which confer trade mark protection - use in the course of trade which is not indicative of origin in the trade mark sense. In other words, the purpose of article 6.1 – and section 11(2) of the 1994 Act – is much the same as the purpose of the fourth requirement under section 4(1)(a) of the 1938 Act. Trade mark protection is not available unless the use complained of is likely to be taken as use for the purpose of indicating, or so as to indicate, a connection between the goods in relation to which the use is made and some person having the right to use the registered mark.[31]Section 11(2) of the 1994 Act must be placed within the statutory scheme enacted in Part I of the 1994 Act. Section 1(1) defines "trade mark" to mean "any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings". Section 3 sets out grounds upon which registration must be refused. In particular, section 3(1)(c) prohibits registration of trade marks which consist exclusively of 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; unless, before the date of application for registration, the trade mark has in fact acquired a distinctive character as a result of the use made of it. Section 9(1) confers exclusive rights on the proprietor of a registered trade mark. Section 10(1) provides that a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. It can be seen that those two sections give effect to the provisions in article 5.1 of the first Council Directive. Section 11 imposes limitations on the protection afforded by sections 9 and 10. As I have said, it gives effect to the provisions in article 6.1 of the directive. In particular, section 11(2)(b) excludes trade mark protection where the use of a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered, in the course of trade, is use for the purpose of indicating 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.[32]It is, I think, no coincidence that the language of section 11(2)(b) reflects that in section 3(1)(c) of the 1994 Act. The first question is whether the sign is capable of distinguishing the goods or services of one undertaker from those of other undertakers. If it is incapable of being distinctive, then the sign cannot be registered as a trade mark – see section 3(1)(a) of the Act. The second question is whether the trade mark is, in fact, devoid of any distinctive character – see section 3(1)(b) of the Act. That is to be judged at the time of the application for registration; a trade mark may acquire distinctive character as a result of the use made of it. Sections 3(1)(c) and (d) may be seen as particular cases within section 3(1)(b). A trade mark which consists exclusively of indications which serve to designate, say, the kind or intended purpose of goods or services – section 3(1)(c) – or which consists exclusively of indications which have become customary in the bona fide and established practices of the trade – section 3(1)(d) – are prima facie devoid of any distinctive character. They are devoid of distinctive character because, prima facie , they are descriptive and not distinctive. But even those marks within sections 3(1)(c) and 3(1)(d) may acquire a distinctive character as a result of use. So, in a case within sections 3(1)(c) or 3(1)(d), the second question becomes: whether the trade mark has acquired a distinctive character as a result of the use made of it? If the trade mark is capable of distinguishing the goods of one undertaking from those of another, and either has, or has acquired through use, a distinctive character, then (subject to other considerations which are not relevant in the present context) the trade mark can be registered. It will then remain registered for a period of ten years – see section 42 of the Act – or for successive periods of ten years –see section 43 – unless it is surrendered (under section 45) or revoked (under section 46) or declared invalid (under section 47). While registered, the proprietor will have the protection from infringement afforded by section 10 of the Act; but only if the use is infringing use. Section 11(2)(b) re-introduces, in a different context, the dichotomy between distinctive and descriptive use that had already been identified by section 3(1)(c). Just as a trade mark which is inherently descriptive may acquire a distinctive character as a result of the use made of it – and so become registrable – so a trade mark which has or has acquired a distinctive character – evidenced by the fact of registration – may be used in a descriptive manner. When it is, that use will not be infringing use – see section 11(2)(b) of the Act. As Lord Justice Aldous pointed out in Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809, at page 824, it does not follow that, because a mark which consists, even exclusively, of indications which serve to designate the kind or intended purpose of goods or services has been registered, all use of that mark – including use to indicate the kind or intended purpose of goods and services – must be infringing use. The court is required to consider, in each case, whether the use complained of does actually infringe the mark; that is to say, whether the use complained of falls within section 11 and, in particular, within section 11(2), having due regard to the proviso to that sub-section.[33]We were referred to observations of Mr Justice Jacob in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 . At page 298 he directed himself, correctly in my view, that for the purposes of an enquiry under section 11(2) of the 1994 Act:
"one must here look at the whole context of the use. You cannot tell whether the use is descriptive or not from the use of the sign alone"
. But he went on to say this, at page 299, in a passage on which the respondent places much reliance:
"Thirdly there is the question of use of the sign for the defendant's goods. I considered the question of comparative advertising first to test the proposition that the sign can only be used as a "pure descriptor"
. I reject that because it can be used as part of a description when used for the plaintiff's goods. But use of the sign for the defendant's goods is something different. That seems to me to be inconsistent with the mark being used as a description or performing any of the other functions. If a mark is used as a trade mark for the defendant's goods, then it is not used as a description. This conclusion may have important implications where a semi-descriptive mark is validly registered. In particular if the defendant's mark is descriptive to some but has trade mark significance to others, he will not be within the section."[34]I am not at all sure that, in that passage, Mr Justice Jacob is intending to lay down any general proposition that a defence under section 11(2)(b) of the 1994 Act is not available in the case of a semi-descriptive mark which has been registered. But, if that were his intention, then I must say that I do not accept that proposition. It seems to me that section 11(2)(b) requires in every case – including those cases in which the registered mark is a semi-descriptive mark – the court to address the question: is the use complained of distinctive or descriptive use? The answer to that question is to be given by viewing the use through the eyes of the average consumer.[35]For those reasons, if the matter fell to be determined under section 11(2)(b) of the 1994 Act, I would hold that the considerations to which I have already referred in the context of section 4(1)(a) of the 1938 Act lead to the conclusion that the use of the word "spork" in the 1995 correspondence is not infringing use. The claim in passing-off[36]Although it was not formally conceded that, if the claim for infringement failed, the claim in passing-off must fail also, no argument to the contrary – at least, no argument of any force – was advanced. Conclusion[37]For the reasons which I have set out, I would allow this appeal.

LADY JUSTICE ARDEN:

[38]I agree, save that I prefer to express no concluded view on the provisions of the Trade Marks Act 1994 which do not arise for decision. SIR MARTIN NOURSE:[39]I also agree.

ORDER

As minuted

Cited in 1 later judgment