“[76] Third, contrary to the appellant’s assertions, the fact that in the present case the proof of use of the earlier trade mark was established only for the sale of products intended for a single customer does not a priori preclude the use being genuine (see, to that effect, order in La Mer Technology, paragraph 24), even though it follows from that situation that the mark was not present in a substantial part of the territory of Spain, in which it is protected. As OHIM has maintained, the territorial scope of the use is only one of several factors to be taken into account in the determination of whether it is genuine or not.”
“[30] The Court has also stated that the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not (see Sunrider [2006] E.C.R. I-4237 at [76]). [31] That interpretation may be applied by analogy to Community trade marks since, in requiring that the trade mark be put to genuine use, Directive 2008/95 and Regulation 207/2009 pursue the same objective. … [33] Account must nonetheless be taken, when applying by analogy to Community trade marks the case law cited in [29] of this judgment, of the difference between the territorial extent of the protection conferred on national trade marks and that of the protection afforded Community marks, a difference which is in any event apparent from the wording of the provisions relating to the requirement for genuine use which apply to those two types of marks respectively.”
“[36] It should, however, be observed that, as is apparent from the case law referred to in [30] of this judgment, the territorial scope of the use is not a separate condition for genuine use but one of the factors determining genuine use, which must be included in the overall analysis and examined at the same time as other such factors. In that regard, the phrase ‘in the Community’ is intended to define the geographical market serving as the reference point for all consideration of whether a Community trade mark has been put to genuine use. [37] It is therefore necessary, in order to reply to the questions raised, to ascertain what is encompassed by the phrase ‘genuine use in the Community’ for the purposes of art.15(1) of Regulation 207/2009.”
“[44] It follows from the foregoing considerations that the territorial borders of the Member States should be disregarded in the assessment of ‘genuine use in the Community’ within the meaning of art.15(1) of Regulation 207/2009.”
“[50] Whilst there is admittedly some justification for thinking that a Community trade mark should – because it enjoys more extensive territorial protection than a national trade mark – be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.”
“Article 15(1) of Regulation 207/2009 of26 February 2009 on the Community trade mark must be interpreted as meaning that the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’ within the meaning of that provision. A Community trade mark is put to ‘genuine use’ within the meaning of art.15(1) of Regulation 207/2009 when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity.”
“Bolsters, mattresses, beds, upholstered furniture, upholstered chairs, sofas, snugglers, chaises longues, storage stools and footstools, sofa beds, occasional tables”
“Bolsters, beds, upholstered furniture, upholstered chairs, sofas, snugglers, chaises longues, storage stools and footstools, sofa beds, occasional tables.”
“Textiles, textile articles, textile piece goods”
“Fabric lengths, cushions, throws, loose covers of sofas and chairs.”
“Retail services of a store specialising in household furniture.”
“Retail services of a general store specialising in household furniture (including home office furniture), appliances, apparatus, textiles and security”
“Upholstered furniture, upholstered chairs, sofas, snugglers and chaises longues, storage stools and footstools; beds” and in class 24: “Fabric lengths, loose covers of sofas and chairs and textile furnishing accessories.”
“[73] The most recent judgment of the CJEU to which we were referred is Agencja Wydawnicza Technopol sp z oo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P) [2011] E.T.M.R. 34 . A number of points emerge from that judgment. [74] The court first identified the underlying interest protected by art.7(1)(c) as: ‘…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…’ ([37]). [75] Secondly, in order to come within art.7(1)(c) it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes ([38]). [76] Thirdly, it is irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration. Article 7(1)(c) does not depend for its application on the sign at issue being the usual means of referring to the goods or their characteristics ([39] and [40]). [77] Fourthly, the context of the list of specific terms in art.7(1)(c) (quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service) shows that those terms are all regarded as ‘characteristics’ of the goods. The list is not exhaustive, as the reference to ‘other characteristics’ shows ([49]). [78] Fifthly, and importantly, the court said this at [50]: ‘The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 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 Article 7(1)(c) of Regulation No 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 … ” . [79] Thus it is the presumed perception of the average consumer which is relevant. It is not of course enough if the connection between the signs and a characteristic of the goods does not dawn immediately on the average consumer. If it requires any thought or explanation it is not ‘easily recognisable’. [80] Thus, in Agencja Wydawnicza Technopol [2011] E.T.M.R. 34, the applicant was seeking to register the numeral “1000” in relation, for example, to puzzles. The General Court had held: ‘26. In that regard, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign ‘1000’ and some of the characteristics of the goods concerned. The sign ‘1000’ alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since … the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate. ‘…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…’ ([37]). ‘The fact that the legislature chose to use the word ‘characteristic’ highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 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 Article 7(1)(c) of Regulation No 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 … ” . ‘26. In that regard, it should be noted that, as is apparent from paragraphs 18 and 19 of the contested decision, there is from the point of view of the relevant public a direct and specific link between the sign ‘1000’ and some of the characteristics of the goods concerned. The sign ‘1000’ alludes to a quantity and will immediately be perceived by the relevant public, without further thought, as a description of the characteristics of the goods in question, in particular the number of pages and works, amount of data, or the number of puzzles in a collection, or the ranking of items referred to in them. That conclusion cannot be invalidated by the fact that the mark applied for is composed only of figures, since … the missing information may be readily identified by the relevant public, the association between the figure and those characteristics of the goods in question being immediate. 27. In particular, as the Board of Appeal stated in paragraphs 18 and 19 of the contested decision, brochures, periodicals and magazines frequently publish ranking lists and collections, with the preference then being for round numbers in order to indicate content, the Board of Appeal referring in particular in that regard to the example of the publication ‘1000 Fragen und Antworten’ (‘1000 Questions and Answers’). This strengthens the descriptive relationship that exists from the point of view of the average consumer between the goods in question and the [sign ‘1000’]. The court considered that, in that context, the average consumer would perceive 1000 as an indication of the number of puzzles, and for that reason it was unregistrable.” [81] Other cases make it clear that it is enough if at least one of the possible meanings designates a characteristic of the goods: see, e.g. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm Wrigley Jr Co (“DOUBLEMINT”) (C-191/01 P) [[2003] E.C.R. I-12447; [2004] R.P.C. 18 at [32]. [82] It is nevertheless the case that signs which are candidate trade marks lie on a continuum between the entirely generic, through the descriptive to the inherently distinctive. Not every word which alludes to or is suggestive of some aspect of the goods or services is necessarily unregistrable. It is of course trite that it is not an objection to registration that the word has a dictionary meaning, or is an ordinary English word. The objection bites on relationships between the word and the characteristics of the goods or services for which it is sought to be registered which the average consumer will immediately perceive. [83] I have found helpful and agree with the analysis of the Advocate General in his opinion in DOUBLEMINT [2003] E.C.R. I-12447at [61]–[64]. He draws attention to the fact that that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it and suggests three considerations which may determine on which side of the line the indication lies. Although the entire passage repays reading, I will summarise his three points as: (i) how factual and objective is the relationship between an indication and the product or one of its characteristics? (ii) how readily is the message of the indication conveyed? and (iii) how significant or central to the product is the characteristic? Asking these questions will assist a fact-finding tribunal to determine whether it is likely that a particular indication may be used in trade to designate a characteristic of goods.”
“[22] Of the goods covered, some are exclusively for babies or young children. Thus it is for diaper bags, booties, baby clothing, layettes and soft toys. As regards the other goods, namely books, stationery, cards, plates, cups, hats, shoes and mobiles, all those categories of goods include those which, because of their shape, their size, or their look, are specifically intended for use by babies or young children. [23] Admittedly, the immediate meaning of the sign in question designates a place in which that category of persons may be. However, that meaning must be analysed in relation to the goods covered in the trade mark application (see paragraph 17 above). In that perspective, the word sign in question is perfectly appropriate to designate goods capable of being used in a nursery and, therefore, for use by babies or young children. Since the goods in question are all capable of being intended, exclusively or potentially, for those users, the relevant public will easily establish a direct and specific link between the sign and the goods in question. The fact, relied upon by the applicant, that the goods covered can obviously be used outside a nursery does not undermine that conclusion, since, for the average consumer, that possibility does not affect his understanding of the intended purpose of the goods in question. … [25] It follows from the foregoing that the Board of Appeal correctly held that the sign in question is descriptive of the intended purpose of the goods, and, by extension, of the category of end users, namely babies and young children (paragraph 10 of the contested decision).”
“Contemporary sofa, custom made sofa, bespoke sofa, luxury sofa or designer sofa, whatever style of sofa you require we can create it. Why? Because our sofa’s are handmade in our sofa workshop to your precise specifications and budget” “Why not come and visit our sofa workshop for yourself, and remember if there is nothing that takes your fancy then we can design and handcraft the sofa of your dreams!”
“… only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it initially had descriptive character for the purposes of Article 7(1)(c) (see, to that effect,Case C-25/05 P Storck v OHIM, paragraph 83).”
“[49] It is clear from the case law that, in order to have the registration of a trade mark accepted under art.7(3) of Regulation 207/2009, the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the European Union where it was devoid of any such character under art.7(1)(b) of the Regulation (Ford Motor Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (OPTIONS) (T-91/99) [2000] E.C.R. II-1925; [2000]E.T.M.R. 554 at [27]). The part of the Community referred to in art.7(2) may be comprised of a single Member State (Storck KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-25/05 P) [2006] E.C.R. I-5719 at [83]). Consequently, distinctiveness acquired through use must be demonstrated in all the Member States in which the existence of the ground for refusal had been established (see, to that effect, Bovemij Verzekeringen NV v Benelux-Merkenbureau (C-108/05) [2006] E.C.R.I-7605; [2007] E.T.M.R. 29at [28]). [50] In the present case, the Board of Appeal found, in para.18 of the contested decision, that the relevant consumers were European English-speakers. Next, it considers, in para.33 of the contested decision, that the applicant ought to have demonstrated that the word sign at issue had acquired distinctiveness not only in the English-speaking countries of the European Union, but also in all the other countries where basic English words could be understood, that it is to say in all the countries of the European Union. [51] The applicant challenges only that last assertion and claims that the public consisting of European English-speakers cannot include persons with a very rudimentary knowledge of English. [52] Even if the Board of Appeal construed the concept of “European English-speakers” too broadly, it is clear, and the applicant has, moreover, never claimed the contrary, that the relevant public does not only consist of nationals of the United Kingdom and Ireland whose mother tongue is English. [53] It is settled case law that a word sign consisting of English words the combination of which is grammatically correct may have a meaning not only for a public who are native English speakers, but also for a public which has sufficient knowledge of the English language (see NEW LOOK (T-435/07) at [20] and the case law cited). As noted in [26] above, the General Court has previously confirmed that a basic understanding of the English language by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact (NEW LOOK (T-435/07) at [23]). As pointed out in the same paragraph, this also applies to Malta, where English is one of the official languages, and to Cyprus. [54] With regard to all of those countries, the applicant never furnished the slightest proof that the mark applied for had become distinctive through use. In particular, the letters and statements mentioned in [46] above, and the evidence of use submitted to OHIM concern only the United Kingdom, Ireland and Germany. [55] Consequently the applicant’s second plea must be dismissed.” [55] Consequently the applicant’s second plea must be dismissed.”
“[33] There is much CJEU learning on the interpretation and application of art.9(1)(b) . In Specsavers International Healthcare Ltd v Asda Stores Ltd[2012] EWCA Civ 24 ; [2012] E.T.M.R. 17; [2012]F.S.R. 19 at [52] Kitchin LJ approved the following summary of the principles to be derived from the court’s jurisprudence: a. the likelihood of confusion must be appreciated globally, taking account of all relevant factors; b. the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; c. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; d. the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; e. nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; f. and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; g. a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; h. there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; i. mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; j. the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and k. if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion. [34] In making the global comparison the sign is to be considered in the context in which it is used. Kitchin LJ made this point in Specsavers [2012] F.S.R. 19 at [87]: “In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.” [35] The reference in sub-para.(d) of the citation from Specsavers [2012] F.S.R.19 in [33] above to the assessment by the average consumer of the “visual, aural and conceptual similarities” derives from, amongst other places, the judgment of the CJEU in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) [1999] E.C.R. I-3819; [2000] F.S.R. 77 at [27]: “In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.” “In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.” “In order to assess the degree of similarity between the marks concerned, the national court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed.”
“[36] Mr Silverleaf also referred us to the discussion of the attributes of the average consumer in Interflora Inc v Marks & Spencer Plc (“Interflora III”)[2014] EWCA Civ 1403 ; [2015] F.S.R. 10 at [107]–[130]. In that case it was argued on behalf of the defendant that the judge had been wrong to ask himself whether a “significant proportion of members of the public” would be confused. The average consumer, it was suggested, was either confused or he was not. In the course of dealing with that question the court approved the following propositions of materiality here: (i) the average consumer in any context is a hypothetical person or “legal construct”: a person who has been created to strike the right balance between various competing interests including, on the one hand, the need to protect consumers and, on the other hand, the promotion of free trade in an openly competitive market, and also to provide a standard, defined in EU law, which national courts may then apply. (ii) the average consumer test is not a statistical test. The national court must exercise its own judgment, in accordance with the principle of proportionality and the principles explained by the Court of Justice, to determine the perceptions of the average consumer in any given case in light of all the relevant circumstances. (iii) in a case concerning ordinary goods or services, the court may be able to put itself in the position of the average consumer without requiring evidence from consumers, still less expert evidence or a consumer survey. In such a case, the judge can make up his or her own mind about the particular issue he or she has to decide in the absence of evidence and using his or her own common sense and experience of the world.”
“[37] In relation to what the court described as the crucial question, namely whether the average consumer, as a hypothetical person, necessarily has a single reaction and so precludes a consideration of the perceptions of a proportion of the relevant public the court in Interflora[2014] EWCA Civ 1403 identified the following propositions: (i) the average consumer test provides the court with a perspective from which to assess the particular question it has to decide, for example whether a statement is liable to mislead purchasers. (ii) a national court may be able to assess this question without the benefit of a survey or expert evidence. (iii) a national court may nevertheless decide, in accordance with its own national law, that it is necessary to have recourse to an expert’s opinion or a survey for the purpose of assisting it to decide whether the statement is misleading or not. (iv) absent any provision of EU law dealing with the issue, it is then for the national court to determine, in accordance with its own national law, the percentage of consumers misled by the statement that, in its view, is sufficiently significant in order to justify banning its use.”
“[129] As we have seen, the average consumer does not stand alone for it is from the perspective of this person that the court must consider the particular issue it is called upon to determine. In deciding a question of infringement of a trade mark, and determining whether a sign has affected or is liable to affect one of the functions of the mark in a claim under art.5(1)(a) of the Directive (or art.9(1)(a) of the Regulation), whether there is a likelihood of confusion or association under art.5(1)(b) (or art.9(1)(b) ), or whether there is a link between the mark and the sign under art.5(2) (or art.9(1)(c) ), the national court is required to make a qualitative assessment. It follows that it must make that assessment from the perspective of the average consumer and in accordance with the guidance given by the Court of Justice. Of course the court must ultimately give a binary answer to the question before it, that is to say, in the case of art.5(1)(b) of the Directive, whether or not, as a result of the accused use, there exists a likelihood of confusion on the part of the public. But in light of the foregoing discussion we do not accept that a finding of infringement is precluded by a finding that many consumers, of whom the average consumer is representative, would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court concludes that a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court then we believe it may properly find infringement.”
“In answering this question we consider the judge was entitled to have regard to the effect of the advertisements upon a significant section of the relevant class of consumers, and he was not barred from finding infringement by a determination that the majority of consumers were not confused.”
“These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.”