“(1) The registration of a trade mark may be revoked on any of the following grounds (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; … (2) For the purposes of subsection (1) use of a trade mark includes use in a form (“the variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)…” (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; … (2) For the purposes of subsection (1) use of a trade mark includes use in a form (“the variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)…”
“(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section… … (5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods and services only. (6) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made…”
“4.10 The Wordless Mark is a figment of Lidl’s legal imagination and a product of its trade mark filing strategy. It does not exist in the real world. The fact that Lidl have illegitimately obtained registered trade mark protection does not assist Lidl and only means that it should be expunged from the Register on grounds of Lidl’s bad faith and/or the lack of distinctiveness of the mark in any event. Lidl have never used the Wordless Mark and never intended to use it. Lidl argue that its use is validated by use as part of the Mark with Text. But if that is so, then there is no legitimate reason for Lidl having applied for it over and above a registration for the Mark with Text – other than to extend the protection already conferred by that registration. This is therefore a case of applying for a mark for the sake of legal protection per se, for its value as a legal weapon (just as it has been deployed in this action) and contrary to the true functions of a mark– in short, a paradigm case of bad faith. 4.11 As if that were not enough, Lidl have sought to “evergreen” the Wordless Mark as evidenced by duplicative protection sought in 2005 and even in 2021, the latter being after Lidl became aware that the Wordless Marks advanced in this claim could be vulnerable on grounds of non-use. Evergreening, Lidl seem to believe, confers fresh grace periods with no need to show use for 5 years following registration. But Lidl is wrong. Evergreening is characteristic of a bad faith actor since it allows a trade mark to be extended indefinitely, and the use provisions to be circumvented, with the mark maintained on the register for reasons unconnected with its purpose as a badge of origin. Again, paradigm bad faith. 4.12 In any event, the Wordless Mark was never a distinctive trade mark to begin with, being utterly devoid of any distinctiveness when applied for, and never having been used by Lidl in a way that could confer distinctiveness through use. Consumers, if they even would recognise the Wordless Mark as such, certainly would not rely on it on its own to indicate origin, which is the requisite test. 4.13 The Wordless Mark registrations should be revoked or declared invalid as sought in the Counterclaim.”
“47. As regards the 1995 UK application for the Wordless mark (UK trade mark registration nos. UK2016658A, UK2016658C and UK2016658D): 47.1 The Wordless Mark is and always was a legal artifice with no corresponding mark in the real world. It has never been used by Lidl in the form appearing on the register. 47.2 Given that, as pleaded, Lidl apparently devised its logo corresponding to the Mark with Text in 1987 or thereabouts, there is a reasonable inference that, at least by 1995 there was no bona fide intention (if there ever was, which is denied) to use the Wordless Mark in the form as registered. This is supported by the lack of use of that mark in the period both before and since the date of application. 47.3 It is denied that use of the Mark with Text amounts to use of the Wordless Mark, but even if it did, that would have no bearing on the bad faith nature of the application. If the Mark with Text supported the use of the Wordless Mark, then there was no need to apply for the Wordless Mark separate to that unless the purpose of the Wordless Mark application was to give Lidl wider or different protection. Lidl makes that argument in the present proceedings. 47.4 The result was an application for a Wordless Mark made solely for the purposes of deployment as a weapon in legal proceedings, not in accordance with its function of being used on goods or services to indicate the origin thereof. 48. Further or alternatively, as regards the Additional Wordless marks and the 2005 version of the Wordless Mark (UK trade mark registration no. 904746343), Tesco will contend as follows: 48.1 The Additional Wordless Marks and the 2005 version of the Wordless Mark, namely the EU marks from which those UK comparables are derived, are evergreened versions of the 1995 mark in that they duplicate coverage of various goods and services covered by the earlier mark. 48.2 There was no reason for Lidl to re-apply for the same marks and goods/services other than to avail itself of a fresh grace period during which it would not be required to show use of, in effect, the same marks. 48.3 In the circumstances, the Additional Wordless Marks and the evergreened 2005 application are probative of bad faith in relation to the marks themselves and the 1995 mark. As regards the 1995 mark, although the bad faith assessment is at the date of application, facts and matters subsequent to that date, such as evergreening, have a bearing on that assessment. The fact that Lidl considered it necessary to evergreen that 1995 mark in 2002, 2005 and 2007 is further proof of its bad faith at the date of application of the 1995 mark. 48.4. As regards the Additional Wordless Marks and the 2005 version of the Wordless Mark, paragraph 47 above is repeated. However, in addition to those matters, the fact that those applications were made in order to evergreen an earlier trade mark is itself probative of bad faith as regards those later marks. 48.5. In the premises, Lidl made applications not in accordance with the functions of a trade mark but purely to obtain exclusive rights for ulterior and illegitimate purposes. In respect of the UK comparable marks that derive from the EUTMs, because the EUTMs were applied for in bad faith, the UK comparable marks should be invalidated for the same reasons. 48.6. Pending further information and/or clarification, Tesco notes that Lidl has made yet further applications for the Wordless Mark in 2021, i.e., well after this dispute began. The said marks represent yet further attempts to evergreen the Wordless Mark in order to benefit from yet further fresh grace periods without any requirement to prove use. These applications, although they have not yet proceeded to registration, will be the subject of invalidation counterclaims should Lidl seek to introduce them here. They will in any event be opposed before the UK-IPO if they proceed to publication. At that point the UK-IPO will be invited to stay those oppositions pending the outcome of this Counterclaim. Meanwhile the fact of the 2021 evergreened applications stands as yet further evidence of bad faith regarding all prior applications for the Wordless Mark and the Additional Wordless Marks.”
“As to the applicable test itself: (a) The court must consider whether the claimant has a “realistic” as opposed to a “fanciful” prospect of success: Swain v Hillman[2001] 1 All ER 91 . A realistic claim is one that carries some degree of conviction: ED & F Man Liquid Products v Patel[2003] EWCA Civ 472 . But that should not be carried too far: in essence, the court is determining whether or not the claim is “bound to fail”: Altimo Holdings v Kyrgyz Mobil Tel Ltd[2012] 1WLR 1804 at [80] and [82]. (b) The court must not conduct a mini-trial: Three Rivers District Council v Governor and Company of the Bank of England (No 3)[2003] 2 AC 1 , in particular paragraph 95. Although the court should not automatically accept what the claimant says at face value, it will ordinarily do so unless its factual assertions are demonstrably unsupportable: ED & F Man Liquid Products v Patel; Okpabi and others v Royal Dutch Shell Plc and another[2021] UKSC 3 , at paragraph 110. The court should also allow for the possibility that further facts may emerge on discovery or at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5)[2001] EWCA Civ 550 ; Sutradhar v Natural Environmental Research Council[2006] 4 All ER 490 at [6]; and Okpabi at paragraphs 127-128.”
“…An abuse of process is of concern not merely to the parties but to the court. It is no longer the role of the court simply to provide a level playing-field and to referee whatever game the parties choose to play upon it. The court is concerned to ensure that judicial and court resources are appropriately and proportionately used in accordance with the requirements of justice.”
“44. At the heart of any assessment of whether a claim is Jameel abusive is an assessment of two things: (1) what is the value of what is legitimately sought to be obtained by the proceedings; and (2) what is the likely cost of achieving it? 45. It is clear from Sullivan that this cannot be a mechanical assessment. The Court cannot strike out a claim for£50 debt simply because, assessed against the costs of the claim, it is not ‘worth’ pursuing. Inherent in the value of any legitimate claim is the right to have a legal wrong redressed. The value of vindicating legal rights – as part of the rule of law – goes beyond the worth of the claim. The fair resolution of legal disputes benefits not only the individual litigants but society as a whole”
“(i) A person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly proved. The standard of proof is the balance of probabilities, but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith. … vi) Consideration must be given to the applicant’s intention. This is a subjective factor which must be determined by reference to the objective circumstances of the particular case.”
“… (3) The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law… (4) The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. (5) The date for assessment of bad faith is the time of filing the application: Lindt at [35]. (6) It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40]. (7) Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. (8) Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. (9) For that purpose it is necessary to examine the applicant’s intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41] – [42]. (10) Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant’s objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. (11) Bad faith can be established even in cases where no third party is specifically targeted, if the applicant’s intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Mağazacilik at [46].”
“Lack of intention to use is accordingly a factor which may be relevant to bad faith where there is no rationale for the application in accordance with the aims of the Regulation, and there are objective, consistent and relevant indicia of bad faith”
“I agree with Nugee J that an allegation of bad faith is “akin to an allegation of dishonesty”
“…that such a cautious approach is mandated in all cases where bad faith is alleged, and that the concept of justification by considering whether there is an arguable claim to legitimate protection of the applicant’s actual or potential business is a useful one.”
“23. The distinctive character of a registered trade mark may be the result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service at issue as originating from a given undertaking… 24. It follows that the use of the wordless logo mark with the superimposed word sign “Specsavers”, even if, ultimately it amounts to a use as a part of a registered trade mark or in conjunction with it, may be considered to be a genuine use of the wordless logo mark as such to the extent that that mark as it was registered, namely without a part of it being hidden by the superimposed word sign “Specsavers”, always refers in that form to the goods of the Specsavers group covered by the registration, which is to be determined by the referring court.”
“The factual issue is whether the Wordless logo mark is distinctive of Specsavers through use of the Shaded logo marks; or in other words, whether the average consumer recognises the Wordless logo mark when he sees the Shaded logo mark. The legal issue is whether the use of the Shaded logo mark therefore constitutes use of the Wordless logo mark”
“…Specsavers have established that much of the use they have made of the Shaded logo mark, including, in particular, its use on signage, does also constitute use of the Wordless logo mark, for the evidence in this case shows that it has been such that the Wordless logo mark has served and does serve to identify the goods and services of Specsavers, and that the average consumer has perceived and does perceive the Wordless logo mark as indicative of the origin of the goods and services supplied by Specsavers. In short, much of that use has been such that the differences between the Shaded logo mark and the Wordless logo mark have not changed the distinctive character of the Wordless logo mark; and the Wordless logo mark has itself been seen as a trade mark and not simply as background. It follows that Specsavers have established that they have made genuine use of the Wordless logo mark”
“41. The concept of bad faith thus relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices… 42. It is for the applicant for a declaration of invalidity…to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise… 43. Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark.”
“…it must be stated there is no provision in the legislation relating to EU trade marks which prohibits the refiling of an application for registration of a trade mark and that, consequently, such a filing cannot, in itself, establish that there was bad faith on the part of the trade mark applicant, unless it is coupled with other relevant evidence which is put forward by the applicant for a declaration of invalidity or EUIPO”
“As regards the second argument, relating to the use of the mark MONOPOLY in connection with games, the Board of Appeal was right in finding…that whether or not the applicant could have actually proved such use was irrelevant, as it is the intention of the applicant for a mark which is to be evaluated”
“69. The Board of Appeal’s reasoning, as summarised in [59]-[64] above, unambiguously shows that it is not the fact that an EU trade mark is re-filed that was found to be indicative of bad faith on the part of the applicant, but the fact that the information in the case file showed that the applicant had intentionally sought to circumvent a fundamental rule of EU trade mark law, namely that relating to proof of use, in order to derive an advantage therefrom to the detriment of the balance of the EU trade mark system established by the EU legislature.”
“Lidl intends to rely on survey evidence in respect of its own activities, reputation, and Marks. The Survey is focused and complies with the Court’s guidance in such matters. It has been conducted in an open manner and the results in full disclosed to Tesco at an early stage, contained in an annex to Lidl’s Reply. Lidl seeks the Court’s permission to adduce evidence of that survey at Trial.”
“What do you think this image is? (Please type your answer in the box below, providing as much detail as occurs to you)” (“The First Question”). The participant was then required to click on a forward button. ii) “As a reminder, please take a look at the image below before answering the question that follows.”
“Now, please imagine that this image was used as a company’s brand…Which company would you expect it to be? (Please type your answer in the box below)” (“The Second Question”). The participant was then required to click on a forward button. iii) “As a reminder, please take a look at the image below before answering the question that follows.”
“Thinking about the household grocery shopping, which of the following statements best applies to you? - I am the sole grocery shopper in my household - I am in part responsible for grocery shopping in my household - I am not responsible at all for grocery shopping in my household”
“i) if a survey is to have any validity at all, the way in which the interviewees are selected must be established as being done by a method such that a relevant cross-section of the public is interviewed; ii) any survey must be of a size which is sufficient to produce some relevant result viewed on a statistical basis; iii) the party relying on the survey must give the fullest possible disclosure of exactly how many surveys they have carried out, exactly how those surveys were conducted and the totality of the number of persons involved, because otherwise it is impossible to draw any reliable inference from answers given by a few respondents; iv) the questions asked must not be leading; and must not direct the person answering the question into a field of speculation upon which that person would never have embarked had the question not been put; v) exact answers and not some sort of abbreviation or digest of the exact answer must be recorded; vi) the totality of all answers given to all surveys should be disclosed; and vii) the instructions given to interviewers must also be disclosed.”
“In cases where acquired distinctiveness of a mark is in issue a survey may accurately identify that proportion of the relevant public which recognises the mark as a badge of trade origin. It will then be for the fact finding tribunal, with the aid of such a survey, to decide whether a significant proportion of the relevant public identify goods as originating from a particular undertaking because of the mark: see Windsurfing Chiemsee Produktions-und- Vertriebs GmbH v Boots-und-Segelzubehor (C-108/97) [1999] E.C.R. I-2799; [1999] E.T.M.R. 585 at [52], [53].”
“That is not to say that there can never be evidence called in a case of trade mark infringement. The court may need to be informed of shopping habits; of the market in which certain goods or services are supplied; the means by which goods or services are marketed and so on. In addition I must make it clear, however, that different considerations may come into play where: i) evidence is called consisting of the spontaneous reactions of members of the relevant public to the allegedly infringing sign or advertisement; ii) evidence from consumers is called in order to amplify the results of a reliable survey; iii) the goods or services in question are not goods or services supplied to ordinary consumers and are unlikely to be within the judge’s experience; iv) the issue is whether a registered mark has acquired distinctiveness; or v) where the cause of action is in passing off, which requires a different legal question to be answered.”
“the court must evaluate the results of whatever material is placed before it. Only if the court is satisfied that the evidence is likely to be of real value should permission be given. The reliability of the survey is likely to play an important part in that evaluation. Even then the court must be satisfied that the value justifies the cost.”
“With the benefit of hindsight, perhaps I did not make my message clear enough in Interflora 1. Let me say it again, but more loudly. A judge should not let in evidence of this kind unless the party seeking to call that evidence satisfied him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost.”
“(1) for a trade mark to possess distinctive character, it must serve to identify the goods and services, in respect of which registration is applied for, as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings; (2) the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration is applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect; (3) the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others; (4) in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been,(iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character; (5) with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark; the expression “use of the mark as a trade mark” refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking; (6) a trade mark may acquire a distinctive character in consequence of the use of that mark as part of or in conjunction with another trade mark (which may itself be a registered trade mark)…”
“(1) on the question as to how to determine whether a mark has acquired a distinctive character through use, the competent authority for registering trademarks must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking; (2) that evidence must relate to use of the mark as a trade mark, that is to say for the purposes of such identification by the relevant class of persons; (3) in the context of that assessment, the following items may, inter alia, be taken into consideration: the market share held by the mark in question; 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, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations; (4) 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 or services as originating from a particular undertaking because of the trade mark in question, it must in any event hold that the requirement laid down in art.3(3) of Directive 2008/95 for the mark not to be excluded from registration or declared invalid is satisfied; (5) the law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired though use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment; (6) if the competent authority finds it necessary to resort to such a survey, it must determine the percentage of consumers that would be sufficiently significant; (7) the circumstances in which the requirement concerning the acquisition of a distinctive character through use, under art.3(3) of Directive 2008/95, may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages; (8) in an overall assessment of the evidence that the mark has acquired a distinctive character through use, it may indeed appear, inter alia, that the perception of the relevant public is not necessarily the same for each of the categories of marks and that, accordingly, it could prove more difficult to establish the distinctive character, including distinctiveness acquired through use, of trade marks in certain categories than that of those in other categories; (9) the difficulties in establishing distinctive character which may be associated with certain categories of marks because of their nature—difficulties which it is legitimate to take into account—do not justify laying down stricter criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law on other categories of marks; (10) it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use and that, even with regard to contourless colour marks, and even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be theonly decisive criterion to support theconclusion that a distinctive character has been acquired through use”
“33.…The reasoning in Interflora 1 applies equally to both types of survey of consumers in relation to trade marks. However, although the test is the same, the result of applying the test may vary depending on the subject matter of the survey. In the case of a survey as to confusion, the question whether the survey is likely to be of real value may readily be answered in the negative in a case where the goods or services in question are ordinary consumer goods or services and the judge feels that there will be no real difficulty in the court determining the issue of confusion without a survey. Conversely, in the case of a survey as to acquired distinctiveness, the court may feel that it is not able to determine such a dispute based on its own experience and/or the court may feel the need to guard against an idiosyncratic decision. A further possible distinction between a confusion survey and a distinctiveness survey is that the former may involve a prediction as to the likelihood of something happening whereas a distinctiveness survey addresses the issue of whether something has happened. 34 Further, I consider that whether the survey in question relates to distinctiveness or confusion, the court must consider whether it is likely that the survey will be held at trial to be a valid survey. If the court considers that the survey is unlikely to meet that requirement then, as a robust gatekeeper, the court must rule that such a survey may not be admitted at the trial. This may not be an easy question for the court, particularly where the court has a conflict of expert evidence on the validity of the survey. There is no suggestion that the court should allow cross-examination of the competing experts and the court will have to do the best it can to decide, on the documents alone, the likelihood of the survey being held valid at a trial. That seems to have been the approach adopted by the Court of Appeal in Zeebox.”
“…It may have been assumed in Interflora 1 that most surveys would not pass the “likely to be of value” test so that robust gatekeeping at the interlocutory stage would save the parties the expense of the matter being considered at a trial. Of course, if that assumption is not appropriate in a particular case, because the gatekeeping judge nonetheless allows a party to rely on a survey at a trial, then the interlocutory stage will increase the costs of the litigation. Further, it seems to have been assumed that the cost of the gatekeeping function would be comparatively modest by comparison with the cost of dealing with survey evidence at the trial. That will not always be so.”
“The surveys were conducted under artificial circumstances. This is, of course, one of the underlying reasons why survey evidence of this kind is treated with special caution. However, the survey should be designed so that the artificiality of the survey situation does not introduce factors which would not be present in normal use of the disputed mark. Passing off is, after all, as Mr Roberts submitted, a real world cause of action and the circumstances of the real world need to be present, so far as possible, in the survey’s circumstances.”
“…it is likely that there will be difficulty in assessing whether Enterprise’s green logo has acquired distinctive character through use. Although the green logo is a traditional trade mark, some (possibly most) of its use has been as part of or in conjunction with another trade mark and the survey is designed to assist with the question whether the green logo, by itself, has acquired distinctiveness as identifying the goods or services of Enterprise.”
“…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).”
“…I agree with the judge that it is legitimate for a tribunal, when assessing whether the applicant has proved that 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, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Further, if in any case it is shown that consumers have come to rely upon the mark as an indication of origin then this will establish that the mark has acquired distinctiveness.”
“Do the surveys demonstrate distinctiveness anyway? Counsel for the defendants submitted that, even taken entirely at face value, all that the 2015 and Q1-Q3 of the 2016 surveys established was recognition of Pantone 2587C on the part of the GPs and pharmacists and association of it with Seretide in the sense explained by Kitchin L.J. I accept this submission. All the surveys show is that GPs and pharmacists recognised the colour as a feature of Seretide inhalers. They do not prove that GPs or pharmacists would assume that another inhaler bearing that shade of purple (let alone a different shade capable of being described as purple) emanated from the same trade origin, let alone an inhaler of a different design bearing different word marks. As I have already noted, this is particularly true of the 2015 surveys when there was no other such inhaler on the market. Even in March-April 2016 the AirFluSal Forspiro had not been on the market for very long, and many of the respondents might not have encountered it. Sirdupla/Aloflute had been on the market for longer, but as noted above there is no evidence as to the extent of its market penetration by then.”