“The word SOVEREIGN is in common use in and beyond the trade, and is widely recognised, as a word describing coins of a particular type and denomination that may be legal tender in any one of a number of different countries/territories.”
“The following shall not be registered— … (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, the time of production of goods or of rendering of services, or other characteristics of goods or services, (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: Provided that, a trade mark shall not be refused registration by virtue of paragraph … (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.”
“33 A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of art.7(1)(c) of Regulation 40/94 is—save where art.7(3) applies—devoid of any distinctive character as regards those goods or services …. 36 … due account must be taken of the objective pursued by art.7(1)(c) of Regulation 40/94. Each of the grounds for refusal listed in art.7(1) must be interpreted in the light of the general interest underlying it …. 37 The general interest underlying art.7(1)(c) of Regulation 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services …. 49 The situations specifically covered by art.7(1)(c) of Regulation 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a ‘characteristic’ of the goods or services referred to in the application. By using, in art.7(1)(c) of Regulation 40/94, the terms ‘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’, the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account. 50 The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in art.7(1)(c) of Regulation 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of art.7(1)(c) of Regulation 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics ….”
“49 Article 7(1)(d) of Regulation No 40/94 must be interpreted as precluding registration of a trade mark only where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought …. Accordingly, whether a mark is customary can only be assessed, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the mark …. 50 With regard to the target public, the question whether a sign is customary must be assessed by taking account of the expectations which the average consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect, is presumed to have in respect of the type of goods in question …. 51 Furthermore, although there is a clear overlap between the scope of Article 7(1)(c) and Article 7(1)(d) of Regulation No 40/94, marks covered by Article 7(1)(d) are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered …. 52 Finally, signs or indications constituting a trade mark which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark are not capable of distinguishing the goods or services of one undertaking from those of other undertakings and do not therefore fulfil the essential function of a trade mark ….”
“51. In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. 52. If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in article 3(3) of the Directive [i.e. First Council Directive (89/104/E.E.C.) of21 December 1988 to approximate the laws of the member states relating to trade marks] is satisfied. However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages.”
“in order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present)”
“Drawing these threads together, so far as relevant for the present case, the principles can therefore be summarized as follows. (i) Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11 ). The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977 ,CPR 52.11 ). (ii) The approach required depends on the nature of decision in question (REEF). There is spectrum of appropriate respect for the Registrar’s determination depending on the nature of the decision. At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions. Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont). (iii) In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re: B and others). (iv) In the case of a multifactorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions. In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation (REEF, BUD, Fine & Country and others). (v) Situations where the Registrar’s decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong. It is not necessary for the degree of error to be “clearly” or “plainly” wrong to warrant appellate interference but mere doubt about the decision will not suffice. However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re: B). (vi) The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed. Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently. Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account. (REEF, Henderson and others). Bearing in mind the repeated reminders that different points are likely to be particularly relevant in other cases, this is not intended to be a summary of universal application for other cases where particular aspects of the approach may require different emphasis.”
“I have decided that these factors do not necessarily mean that a sovereign cannot be a kind of coin within the meaning of s.3(1)(c). This is because, firstly, although the denominative value of a sovereign is nominal, sovereigns are legal tender in the UK with a face value set down by statute. Secondly, the evidence shows that RM itself draws attention to the denominative meaning of sovereigns in its marketing material, particularly in its certificates of authenticity. Thirdly, RM’s promotional material uses ‘sovereign’ in an analogous way to other obvious denominations, such as ‘The Official Queen’s Diamond Jubilee UK£5 Coin’. This is likely to have reinforced the denominative significance of ‘sovereign’ to UK consumers. Fourthly, although the quality of the sovereign coins issued by RM is closely controlled, this is true of all coins minted by RM to meet statutory requirements, including legal tender for general circulation, such as pound coins. No one would say that ‘pound’ is a trade mark for coins. Consequently, although quality control of goods sold under the contested mark is consistent with sovereign being a trade mark, it is not sufficient to establish that it is perceived as a trade mark (rather than as a kind of legal tender coin) by relevant average consumers.”
“77. I find that the relevant average UK consumer is likely to be aware that although most sovereigns offered for sale in the UK are GB sovereigns issued by RM on behalf of the UK Government, ‘sovereign’ gold commemorative coins from, at least, the Isle of Man, Jersey, Gibraltar and/or Australia are also available for sale in the UK. It is true that some of the coins in question, such as the Jersey sovereign minted in 2000, are more likely to be re-sold to UK consumers by coin or gold traders rather than sold as new coins. However, such on-going trade is capable of affecting the expectations of the average consumer as to the meaning and significance of the word sovereign when used in relation to new coins. 78. I therefore find that although GB sovereigns were by far the most common gold commemorative coins traded in the UK at the relevant date, the word sovereign alone did not guarantee the trade origin of such goods because it had become customary in the current language or in the bona fide and established practices of the trade.
“It is clear that RM has sold sovereigns for a very long time and that it sold a large volume of sovereigns over the 10 year period running up to the relevant date. There is no evidence as to the share of the UK market for gold commemorative coins held under the mark SOVEREIGN at the relevant date, but I am prepared to accept that it was a very significant share of the relevant market. Similarly, although there is no evidence as to the amount that RM spent promoting sovereign coins, and the evidence of promotion in evidence is quite modest, I am prepared to accept that a large proportion of the relevant public would have been familiar with the name ‘sovereign’ at the relevant date and associated that name with coins issued by the UK Government and/or RM as its traditional agent. Equally, a significant proportion of relevant average consumers would also have been aware that one or more other territories also produce gold commemorative coins called sovereigns which are traded in the UK.”
“RM’s evidence does not establish that, at the relevant date, a significant proportion of relevant consumers perceived gold commemorative coins as originating from a particular undertaking because of the word ‘sovereign’ alone. This is because, absent words such as ‘British’, ‘GB’ or ‘Royal Mint’, the word ‘sovereign’ would have been quite widely recognised as also denoting similar coins produced by other undertakings which are traded in the UK, such as Isle of Man sovereigns.”
“[A]lthough he is undoubtedly very experienced and knowledgeable about British coinage, his principal activity is as a curator of a museum. He is not a trader in gold coins or a collector of such coins on his own account. He is not therefore an average consumer of gold commemorative coins. I therefore see no reason to regard his opinions as necessarily representative of the opinions of relevant average consumers. In fact, his exceptional level of knowledge on the subject may suggest that his views are unlikely to be representative.”
“[L]ike Dr Clancy he is the curator of a museum, not a trader or typical collector of gold commemorative coins. I therefore see no reason to accept that his views are likely to be representative of those of the average consumer either.”
“Instead I will focus on the evidence which shows the manner in which the word SOVEREIGN was used in the trade prior to the date of RM’s trade mark application on29th August 2012 …. This is likely to be the most reliable guide as to what the word connoted to relevant average consumers at this time.”
“I find that sovereign is a denomination of money in the UK. That is clear from the Coinage Act, the fact that a sovereign is legal tender in the UK, and the way that RM uses the name. However, I accept that a sovereign is only a nominal value of currency. The real commercial value of the coins bears no relation to their nominal value.”
“The SOVEREIGN mark is not the denomination of a coin such as ‘Pound’ or ‘Penny’ forming part of a coherent currency system within the UK. In other words it does not give the value of the coin but is rather a name attributed to a type of coin or coins of certain denominations which are struck exclusively by [RM].”
“It is therefore my view that the current use of the term ‘denomination’ by theCoinage Act 1971 and [RM] is not strictly accurate from a numismatic point of view, but has arisen because of the now long standing denomination at a fixed value of 20 shillings and now 100 pence.”
“I note that RM was able to produce late evidence from the Foreign and Commonwealth Office, but that this did not address the question of whether [CMPB’s] sovereigns had been approved, despite the issue being hotly contested between the parties. If I needed to decide the point, I would have found that [CMPB’s] sovereign coins probably were approved. However, I do not need to decide this matter. This is because the approval process only relates to coins that are legal tender in Tristan da Cunha. It is therefore wholly irrelevant to the question of whether RM’s trade mark has any distinctive character in the UK.”