England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand, London, WC2A 2LL
		15th May 2003

Mr Justice Patten :

Introduction

1. In 1993 Dyson Limited (formerly Dyson Appliances Limited) began the commercial manufacture of the Dual Cyclone vacuum cleaner. This is a bagless cleaner in which the dirt and dust is collected in a chamber forming part of the machine. Aside from the cyclonic technology itself, the most obvious feature of this type of vacuum cleaner, as sold in the United Kingdom, is that the collection bin or chamber is made from clear plastic, which enables the user to see the dirt and other waste material as it is vacuumed up. The evidence is that in some countries (most notably Germany) consumers prefer not to see the debris as it is collected, but the response in the United Kingdom to this facility has been enthusiastic. In 1993 Dyson's turnover in the UK in respect of cyclonic vacuum cleaners was £3m. In 1996 it was £60m.
2. On 10^th December 1996 Notetry Limited (a company owned by Mr James Dyson, who is the Chairman of Dyson Limited) applied to register a series of six trade marks in Class 9 in respect of

"Apparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods."

The application was assigned to Dyson Limited on 5^th February 2002. All six marks sought to represent the transparent bin or collection chamber. The first three were simply verbal descriptions of the bin, whereas the fourth, fifth and sixth marks comprised a verbal description which in terms referred to a picture of the bin as part of the two available versions of the cyclonic cleaner: one an upright cleaner; the other the cylinder model. The first four marks have been deleted from the application, and it has been pursued in respect of the following two marks:

"The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation."

[Diagram or picture not reproduced in HTML version - see original .rtf file to view diagram or picture]

"The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation."

3. The application was objected to by the Registrar of Trade Marks on the absolute grounds set out in ss.3(1)(a)-(c) of the Trade Marks Act 1994 ("the 1994 Act"). An earlier objection under s.3(2)(b) was waived by the Registrar after the applicant's Trade Mark Attorney had made submissions confirming that the essential feature of the marks consisted not of a shape, but rather of the transparent collecting bin. On 23^rd July 2002 the hearing officer (Mr Allan James) upheld each of the Registrar's objections and determined that the application was not saved by the proviso to s.3(1) on grounds of acquired distinctiveness. Dyson Limited appeals from that decision.

Review or Re-hearing

4. The right of appeal from a decision of the Registrar is conferred by s.76 of the 1994 Act. It lies against any decision of the Registrar under the Act and is not restricted to a point of law. This has led to discussion in a number of cases as to whether such an appeal should take the form of a re-hearing or be limited to a review of the Registrar's decision. The point may be of some potential importance in a case like the present, where acquired distinctiveness is a significant issue. I was told by Mr Tappin on behalf of the Registrar that in most appeals from decisions of the Registrar in ex parte proceedings to determine registrability under s.3, it is readily conceded that the appeal should be conducted on the basis of a re-hearing. But the Registrar wishes to have definitive guidance on the point, and I have therefore heard argument about it.
5. Section 3 of the 1994 Act sets out the absolute grounds for the refusal of registration of a trade mark. A mark which falls into one or more of the classes set out in s.3(1)(a)-(c) and is not saved by the proviso (acquired distinctiveness) shall not be registered. Section 3 is therefore concerned with the nature of the mark in question, looked at in relation to the policy considerations which underlie and dictate the criteria for registration. If an objection to registration is raised by the Registrar on one of the grounds, it has to be determined before the application can be advertised and proceed to registration, and therefore before it becomes at all necessary to consider the effect which the mark would have on the established rights of other traders.
6. An application for registration is made to the Registrar under s.32(1) of the 1994 Act. Section 37 imposes on the Registrar the duty of examining whether the application for registration satisfies the requirements of the Act. It is therefore the Registrar who must take any s.3 objections in limine and who must also decide whether the conditions of registrability are met. Section 37(3)-(5) of the 1994 Act provides that:

" (3) If it appears to the registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to amend the application.

(4) If the applicant fails to satisfy the registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse to accept the application.

(5) If it appears to the registrar that the requirements for registration are met, he shall accept the application."

7. Section 78 of the 1994 Act confers on the Secretary of State a rule-making power which extends to the regulation of the procedure for hearings before the Registrar. The current rules are the Trade Mark Rules 2000 (S.I. 2000 No. 136). Rule 54(1) requires the Registrar to conduct a hearing before making any decision under the Act, and rule 55(2) empowers her in any particular case to take oral evidence with cross-examination in lieu of, or in addition to, the evidence by way of statutory declaration or affidavit. These procedures were adopted in the present case. Under s.76(2) of the Act, an appeal lies either to an appointed person or to the Court. Section 76(3) also entitles the appointed person to refer the appeal to the Court, if he considers that it raises a point of general legal importance or if the Registrar or a party to the proceedings so requests.
8. The 2000 Rules do not seek to regulate appeals to the Court. They deal only with appeals to the appointed person and the timing of any applications for a reference by him to the Court. There is therefore nothing in the Rules which in any way qualifies the provisions of CPR Part 52, and in particular CPR 52.11(1). This provides that:

"Every appeal will be limited to a review of the decision of the lower court unless -

(a) a practice direction makes different provision for a particular category of appeal; or

(b) the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing."

Therefore the question whether the appeal should take the form of a review or a re-hearing is a matter for the Court to decide, when entertaining the appeal. The Registrar accepts, given the nature of ex parte proceedings in the Registry, that it may be appropriate for the appeal to be conducted by way of a re-hearing. But she submits that in this particular case, where the hearing officer heard oral evidence and gave a detailed and fully reasoned decision, there are no grounds for departing from the usual rule that the appeal will be by way of a review.

9. Mr Carr, for Dyson, contends for a re-hearing. He submits that the appeal will not be art.6 compliant if it is limited to a review. The hearing officer is not, he says, an independent tribunal (which is conceded) and it would be unjust for Dyson to be limited to a review of his decision, which, at least in relation to the issue of acquired distinctiveness, involved the assessment of a large amount of factual evidence. The correct approach is for the appeal to proceed by way of re-hearing, but with due weight being given to the decision of the Registrar, whose hearing officers have extensive experience in dealing with trade mark matters. This was the basis on which the appointed person (Mr Simon Thorley QC) agreed to proceed in Ghazilian's Trade Mark Application [2002] RPC 628.
10. It seems to me that the characterisation of the decision under appeal as administrative, or the proceedings as ex parte, cannot by themselves determine how the appeal should be conducted. Nor does the fact that the hearing officer is not an "independent and impartial tribunal", for the purposes of art.6 of the Convention, dictate the necessity for any appeal from his decision to the Court to take the form of a re-hearing. The jurisprudence of the European Court of Human Rights establishes that a right of appeal from the decision of a non-independent tribunal may be art.6 compliant even if limited to points of law. It is necessary in every case to identify the type of decision under review and the legislative or administrative framework in which the relevant civil right is created and operates. The adequacy of a limited right of appeal to an independent judicial tribunal has been considered by the English courts in a number of cases involving the exercise of administrative functions. In Runa Begum v. Tower Hamlets LBC [2003] 1 AER 739 the House of Lords held that a right of appeal to the County Court under s.204 of the Housing Act 1996 against a review by a local authority of the suitability of the accommodation it had offered to a potentially homeless person was sufficient to respect the applicant's Convention rights under art.6, notwithstanding that it was limited to points of law. This could, of course, include cases of procedural impropriety, bias, or where there was no evidence to support the reviewing officer's conclusions of fact. But it could not extend to the making of new and different findings of fact based on the same evidence or to taking a different view of the witnesses' credibility. These are matters for the fact-finding tribunal.
11. In his speech Lord Hoffmann drew a distinction between findings of fact made by central or local government officials, as part of the carrying out of the regulatory and administrative functions of the relevant authority, and evidential decisions made by a tribunal as part of a judicial or quasi-judicial determination of private rights. At paragraph 42 in his speech he said this:

"A finding of fact in this context seems to me very different from the findings of fact which have to be made by central or local government officials in the course of carrying out regulatory functions (such as licensing or granting planning permission) or administering schemes of social welfare such as Part VII. The rule of law rightly requires that certain decisions, of which the paradigm examples are findings of breaches of the criminal law and adjudications as to private rights, should be entrusted to the judicial branch of government. This basic principle does not yield to utilitarian arguments that it would be cheaper or more efficient to have these matters decided by administrators. Nor is the possibility of an appeal sufficient to compensate for lack of independence and impartiality on the part of the primary decision-maker (see De Cubber v. Belgium (1985) 7 EHRR 236)."

A right of appeal limited to points of law (and equivalent, therefore, to the more traditional type of judicial review) was held to be within the margin of appreciation allowed to Parliament and to suffice in that case.

12. In the present case the Court is concerned with a determination which undoubtedly does affect private rights. Although not an adjudication between contesting parties as such, the resolution of the Registrar's s.3 objections in favour of the applicant is a prerequisite to the enjoyment of the property right obtained by the registration of a trade mark under the 1994 Act. That is sufficient to require the ultimate determination of that issue to be decided by an independent judicial tribunal in the form of the appointed person or the Court, and it justifies the right to a full appeal rather than one limited to points of law. But the 1994 Act and the rules made under it grant a right of appeal of that kind. The question is whether Dyson and others whose applications have failed to overcome the Registrar's objections to registration have the right to require a re-hearing.
13. There is, of course, a short answer to the art.6 challenge as such. Given that the Court has the power under CPR Part 52.11(b) to order a re-hearing, there can be no challenge to the nature and scope of the right to appeal on Convention grounds. The Court as a public authority is obliged under s.6(1) of the Human Rights Act 1998 to exercise its powers so as to give effect to art.6. The only issue, therefore, in the present and other similar cases is whether it is required to exercise its power to proceed by way of re-hearing whenever it is faced with an appeal from an ex parte hearing. Once one is away from the area of decision-making which can properly be described as administrative and is dealing with civil rights of the kind that do justify proper adjudication by an independent judicial tribunal, then the most obvious argument in favour of a full re-hearing by the Court is that it will constitute the first determination of those rights by such a tribunal. However, that argument overlooks both the procedural safeguards laid down by the 2000 Rules and the expertise and experience of the hearing officers. It also fails to take into account the nature and scope of the issues which are likely to arise in most appeals of this kind and the need, in the interests of saving costs and Court time, for the form of appeal adopted to be proportional to what is required properly to deal with those issues. As already indicated, the rules provide for a full hearing before the hearing officer and, when appropriate, for oral evidence. Most commonly, the evidence will take the form of statutory declarations or affidavits, but the hearing officer will receive both oral and written submissions and consider the evidence in the light of them. It has not been suggested by Mr Carr that I should re-hear the oral evidence and it would serve no useful purpose to do so. As in most appeals where distinctiveness is in issue, the evidence takes the form of responses to survey questionnaires supported by more detailed evidence from various consumers. Evidence of this kind is unlikely to face a serious challenge to its truthfulness. The real issue (as here) is whether the responses provided by members of the public are (a) typical and (b) amount to a sufficient indication that the mark had when first used, or had acquired as a result of subsequent use, distinctiveness of the kind required for the purposes of registration as a trade mark. The hearing officer's conclusions on these issues can be adequately scrutinised on an appeal without the need for a re-hearing. A re-hearing (by contrast to a review) is only likely to lead to a significant expansion in the scope for judicial intervention when the ruling appealed against consists either of the exercise of a discretion or of findings of primary fact which are likely to depend on the credibility of individual witnesses heard by the tribunal below. The first of these two categories has no place in relation to s.3 appeals, and it is difficult to envisage a case in which findings of primary fact are likely to be in issue. If such cases exist, they are likely to be rare.
14. In these circumstances it seems to me that most (if not all) of the points which are likely to arise on a s.3 appeal will be capable of being raised and adjudicated upon in the context of an appeal by way of review. This is the accepted form of appeal from an inter partes hearing and it adequately recognises and respects the expertise of, and the procedures adopted by, the hearing officer. For these reasons I do not accept that art.6 compels the Court to conduct a re-hearing in the case of any appeal from an ex parte decision. The power is there and may be exercised in the rare cases when it is necessary in order to allow justice to be done. But in an ordinary case (of which this is one) a review should be the norm, and an appeal of this kind will enable any sustainable challenge to the hearing officer's treatment of the evidence to be adequately dealt with. In Bessant v. South Cone Incorporated [2002] EWCA Civ 763, Robert Walker LJ (at paragraph 28) described the approach of the Appellate Court in these terms:

"In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's experience . . . On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view 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."

Findings of fact can and will, therefore, be set aside (even absent an error of principle) if they are plainly wrong. In the present case the grounds of appeal are presented in the Notice of Appeal as involving errors of law. But even if this is too narrow a characterisation, none of the points raised requires me to take a fundamentally different view from the hearing officer about the credibility as such of the evidence. The real dispute is about its adequacy. It is unnecessary for me, therefore, to conduct the appeal by way of re-hearing.

The Criteria for Registration

15. The 1994 Act was introduced to implement Council Directive No. 89/104 of 21^st December 1988 ("the Directive"), which aims to approximate the laws of member states in relation to trade marks. Article 2 of the Directive identifies signs which may exist as a trade mark in the following terms:

"A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

The two central features of a trade mark are therefore that it should consist of a sign which can be represented graphically in the manner stated, and which is capable of distinguishing the commercial origin of goods or services so as to serve as a badge or guarantee of origin to the average consumer who encounters the mark. Article 3 then sets out the absolute grounds for refusing registration. For the purposes of this appeal I need only refer to the first three grounds, which are as follows:

"1. The following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

(b) trade marks which are devoid of any distinctive character;

(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, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;"

Article 3(3) qualifies art.3(1)(b) and (c) by allowing registration on the basis of acquired distinctiveness as follows:

"3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1 (b),(c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration."

16. The 1994 Act seeks to give effect to arts. 2 and 3 in ss.1(1) and 3(1), which provide as follows:

"1.-(1) In this Act a 'trade mark' means any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

…………….

3.-(1) The following shall not be registered -

(a) signs which do not satisfy the requirements of section 1(1),

(b) trade marks which are devoid of any distinctive character,

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, 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 (b), (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."

Section 3(1) reproduces the text of art.3 except for art.3(1)(a), but art.2 has been turned into a definition of "trade mark" encompassing both essential features of a mark. As in the Directive, distinctiveness is introduced as a ground of objection into s.3(1)(a) as well as s.3(1)(b). This has generated a considerable amount of controversy as to whether the test under s.3(1)(a) differs in any material way from that under s.3(1)(b) or in some way introduces a two-stage test. If one approaches the matter apart from authority, it looks as if the problem may have been caused by an over-zealous devotion to definition and an assumption that art.3(1)(a) was intended to embrace both the essential criteria of representation and distinctiveness. If art.3(1)(a) were to be treated as limited to signs which cannot be graphically represented in the manner described in art.2, then no question of duplication or inconsistency could arise. But the ECJ in Koninklijke Electronics NV v. Remington Consumer Products Limited [2002] ETMR 955 has accepted that art.3(1)(a) imports both limbs of art.2. Distinctiveness is, therefore, an issue under both art.3(1)(a) and art.3(1)(b).

17. In Philips the Court of Justice had to consider as part of the reference the question whether there is a category of marks which is not excluded from registration by art.3(1)(b), (c) and (d) and art.3(3), but which is nonetheless excluded by art.3(1)(a). In relation to art.3(1)(b) a positive conclusion could only be justified by postulating a different construction of the art.2 test of distinctiveness from that imposed by art.3(1)(b). The ECJ decided that there is no class of marks with a distinctive character (whether inherent or acquired) which is not capable of distinguishing the goods or services of one undertaking from those of another within the meaning of art.2. This acceptance that the tests laid down by art.2, art.3(1)(a) and (b) and art.3(3) are the same means that it is unnecessary to consider the Registrar's objection under s.3(1)(a) separately. It also confirms that where the distinctiveness is acquired, the mark will overcome any objections on grounds of lack of distinctiveness which might otherwise exist under s.3, even though s.3(1)(a) (and by incorporation s.1(1)) are not themselves expressly subject to the proviso. The imposition of a uniform standard of distinctiveness, whilst resolving any potential conflict between s.3(1)(a) and the remaining grounds of objection, does, however, emphasise the need for some care in specifying what the test is. The possession or acquisition of a "distinctive character" is no more than a shorthand for the art.2 definition repeated in s.1 of the 1994 Act. The mark must be capable of distinguishing the goods or services of the undertaking from those of another and, by so doing, be an effective badge of origin. The use of a negative formula in s.3(1)(a) and the phrase "devoid of any distinctive character" in s.3(1)(b) have raised obvious questions as to whether they are intended to set a lower threshold or to allow registration to proceed in the absence of a positive conclusion on distinctiveness in the s.1 sense. It was this very issue which led to the reference in Philips v. Remington which raised the question of the relationship between s.3(1)(a) and s.3(1)(b). But the confirmation that there is a single test or standard still leaves the difficulty, in any particular case, of assessing how individual or unique the sign must be, in order to be a distinctive indicator of origin. That will be fact and context specific, depending upon the type of sign in question and the product it relates to. What does, I think, emerge from Philips v. Remington is an acceptance that we need only answer a single question in relation to distinctiveness of origin, which is whether the sign is capable of distinguishing the goods of one undertaking from those of another in the mind of the consumer, and a positive conclusion (albeit at that level of identification) is required.

Inherent Distinctiveness

18. Although s.3 separates out, as grounds of objection, distinctiveness (s.3(1)(b)) and descriptiveness (s.3(1)(c)), the latter is a facet of the general question whether the mark is inherently distinctive of commercial origin. Marks which consist of nothing more than a description of some physical or factual characteristic of the goods are unlikely to be distinctive of origin for that reason. And to allow them to be registered as trade marks would confer on the manufacturer or service-provider in question a monopoly in the use of the particular language and design, which could legitimately apply to other similar products. Section 3(1)(c) therefore requires one to look at two separate but related aspects of descriptiveness: (i) whether the descriptive nature of the sign is such as effectively to rob it of commercial distinctiveness; and (ii) whether its use of ordinary descriptiveness (whether literal or graphic) is unfairly monopolistic.
19. Section 3(1)(c) therefore contains what Advocate General Ruiz-Jarabo Colombier described in his Opinion in Philips v. Remington as a partial legal definition of the concept of distinctive character. A sign which does no more than to describe the physical product or one of its characteristics is unlikely to be able to serve as an indicator of its commercial origin absent use. But the objection available under s.3(1)(c) cannot simply be subsumed into a single issue of distinctiveness, because it also seeks to give effect to the policy referred to above of keeping free terms and descriptions which ought to be available to other traders in the market. This policy argument was most clearly identified in the decision of the Court of Justice in Windsurfing Chiemsee Produktions [1999] ETMR 585, which concerned the use of the name of a Bavarian lake ("Chiemsee") as a trade mark for a range of sportswear. In its Judgment the Court of Justice said this:

"24. It should first of all be observed that Article 3(1)(c) of the Directive provides that registration is to be refused in respect of descriptive marks, that is to say marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for.

25. However, Article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

26. As regards, more particularly, signs or indications which may serve to designate the geographical origin of the categories of goods in relation to which registration of the mark is applied for, especially geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.

…………

28. In addition, Article 6(1)(b) of the Directive, to which the national court refers in its questions, does not run counter to what has been stated as to the objective of Article 3(1)(c), nor does it have a decisive bearing on the interpretation of that provision. Indeed, Article 6(1)(b), which aims, inter alia, to resolve the problems posed by registration of a mark consisting wholly or partly of a geographical name, does not confer on third parties the right to use the name as a trade mark but merely guarantees their right to use it descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices in industrial and commercial matters."

In the later case of Procter and Gamble v. OHIM [2002] ETMR 22 the Court of Justice had to consider arts.7(1) and 12 of Council Regulation 40/94, which are identical to arts.3 and 6 of the Directive, in relation to "BABY-DRY" as a community trade mark in respect of babies' nappies. In its Judgment it returned to the question of the purpose of the provisions dealing with descriptiveness:

"37. It is clear from those two provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is, as both Procter & Gamble and the OHIM acknowledge, to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function.

38. That interpretation is the only interpretation which is also compatible with Article 4 of Regulation No 40/94, which provides that a Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

39. The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are thus only those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications and, in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

40. As regards trade marks composed of words, such as the mark at issue here, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark."

This has been said by some commentators to represent a swing away from the Windsurfing principles of free use of names and descriptive terms, leaving it to art.6 of the Directive (s.11 of the 1994 Act) to provide a defence to the use of such terms in the course of honest trade, and thus setting a low threshold test of distinctiveness for the purposes of s.3(1)(c). But in his Opinion in OHIM v. Wm. Wrigley Jr. Company ("DOUBLEMINT") Advocate General Jacobs has rejected that:

"94. It may be feared that the approach in question is liable to shift the balance of power in favour of a trade mark owner with monopolistic ambitions who may assert, or threaten to assert, his rights against an alleged 'infringer' who merely seeks to use descriptive terms descriptively and honestly. In the real world, a defence under Article 12(b) might be worth rather less than its ostensible value in law.

95. That danger cannot be ignored. A trade mark owner wishing to monopolise not only his trade mark but the area around it may threaten unmeritorious proceedings against a competitor, who may capitulate rather than incur the costs of litigation as well as risk an adverse outcome.

96. However, for the reasons already given, I do not think that the BABY-DRY case, properly understood, does shift the balance in the way that has been suggested. And the danger mentioned will be obviated if the criterion of 'perceptible difference' in paragraph 40 of the BABY-DRY judgment is applied as I have suggested above, so that a mark is accepted for registration only when it is apparent to both traders and consumers that as a whole it is not suitable, in the ordinary language of trade, as a designation of characteristics of the product in question."

I therefore propose, at least initially, to consider the s.3(1)(c) objections independently of the more general question whether the mark is distinctive of origin under s.3(a) and 3(1)(b).

20. In a clear and detailed decision (to which I would like to pay a special tribute) the hearing officer, after analysing the evidence, went first to consider the objection under s.3(1)(c). This was that the transparent bin serves to designate the kind and intended purpose of the goods in question. The Registrar identified these as being "bagless vacuum cleaners with a collecting chamber that is visible in use, in order that the user can easily see when it is full". Mr Carr's argument, both before the hearing officer and before me, was that the transparent collection chamber was in December 1996 (the date of the application) very unusual, if not unique in the industry. It was so peculiar and eye-catching that it could and did (when first seen) serve as an indicator of origin rather than merely as a feature of the goods. Whilst accepting that the transparency of the bin itself is in one sense functional (i.e. by indicating when the collection bin is full), Dyson contends that this function is not an indicator of the nature or intended purpose of the goods in question. The goods in question are not the bin but the vacuum cleaner itself, of which the transparent bin forms part. Insofar as the transparency of the bin enables the user to see whether it is full, that does not of itself inform the user about the kind or intended purpose of the cleaner, as opposed to the bin itself. The intended purpose of the cleaner is the removal of dirt.
21. The first and most fundamental challenge made by Dyson to the objection as formulated by the Registrar is that it seeks to introduce via s.3(1)(c) an objection based on functionality which is only open to the Registrar under s.3(2)(b) of the 1994 Act in relation to a mark consisting of a shape. That objection was originally taken, but was subsequently waived on confirmation that the application was not based on the shape of the bin. Mr Carr says that the Registrar was wrong to confuse a functionality objection with a lack of distinctiveness objection. In the alternative, he contends that the functional aspect of the sign is insufficient to rob it of origin significance and that the application does not therefore relate to a sign which exists exclusively to designate the kind or intended purpose of the goods.
22. The hearing officer rejected Mr Carr's central submission that functionality and distinctiveness are unrelated for purposes of an objection under s.3(1)(c). His conclusions on this point are set out in paragraph 56 of his decision, where he says this:

"It seems to me that the fact that a feature (shape or otherwise) is functional is very relevant to the question whether it has any distinctive character in a trade mark sense. If consumers attach a merely functional significance to a feature they will not normally accept it as an indication of the trade origin of the goods. In this regard, I can see no reason why the average consumer's reaction should be presumed to depend upon whether or not the functional sign in question is exclusively a shape."

If the matter rested there, I would have no difficulty in accepting this. When the sign to be registered consists of some physical part of the goods themselves, then the question whether the mark is distinctive of origin in the mind of the average consumer must involve an enquiry into whether the consumer will see it as merely a functional part of, in this case, the cleaner, rather than an indicator of the source of manufacture. But s.3(1)(c) (like s.3(2) in the case of shape marks) operates as a specific objection to registration, albeit one which may, if satisfied, also conclude the position on distinctiveness under s.3(1)(b). For functionality to be an admissible objection under s.3(1)(c) the relevant function must therefore constitute a "characteristic" of the goods within the meaning of that sub-section. There are really two parts to this question: the first is whether a function of the sign can be such a "characteristic" at all. If so, the second is whether the actual function identified has to be a characteristic of the goods (i.e. the cleaner) themselves or whether it can relate to some component part.

23. The hearing officer accepted, in the light of the decision of the ECJ in Philips v. Remington, that "goods" in s.3(2) referred to the goods which were the subject matter of the application (in this case, the cleaner itself). But he declined to extend this reasoning to objections under s.3(1)(c), because that sub-section refers to signs which designate "characteristics" of goods or services, unlike s.3(2)(a), which refers to a shape which results from "the nature of the goods themselves". In paragraph 59 of his decision he said this:

"I do not believe that this reasoning can be transported to section 3(1)(c) of the Act for the very obvious reason that this provision extends to designations of characteristics of the goods whereas section 3(2)(a) does not. So, for example, the primary purpose of a motor car may be to provide transportation, but the words 'fuel injection', 'air con', 'leather upholstery' and 'fold down rear seats' are nevertheless often used to designate essential characteristics of the vehicle, and not merely of its engine, ventilation system or seats."

That is not the distinction I would make. The "goods" referred to in s.3(2)(a) and s.3(1)(c) are those in respect of which the sign in question cannot, for the reason stated, be registered as a trade mark. The word "goods" seems to me to mean the same in s.3(1) and s.3(2) as it does in s.1(1). The only difference between s.3(1)(c) and s.3(2)(a) lies in the subject matter of the objection, but in each case it is based on the sign reproducing a physical attribute of the goods in question and not merely that of a component. Therefore, to be descriptive of a "characteristic" of the goods, the sign must refer to, or designate, some distinctive trait or quality of the goods themselves, and the real issue is whether the function which the sign describes can properly be regarded as a characteristic of the goods.

24. The principal function, as such, attributed to the transparent plastic collection bin by the Registrar was its ability to warn the user when the bin was full. I do not regard this as a characteristic of the machine itself, but rather a subsidiary feature or facility which is relevant (as already indicated) to a consideration of distinctiveness under s.3(1)(b). The more important objection under s.3(1)(c) is the one which rests on the transparent bin being an indicator that the cleaner is bagless. The hearing officer decided that the transparent surface of the collection chamber was an indication which may serve to designate the kind of goods in question (i.e. a bagless cleaner) and I agree with him. As he records in his decision, the evidence of Mr Dyson is that the clear bin served two purposes: it allowed customers to see the dirt being collected, and this in turn helped the customer to see how the cleaner was working. An essential aspect of this is that the cleaner is designed to operate without a bag. Given, therefore, that the transparent bin does indicate to the customer that he is buying a bagless cleaner, the question is whether that is all that the mark serves to do: i.e. does it consist "exclusively" of such a sign.
25. The minimum degree of distinctiveness necessary to avoid this objection is not spelt out in s.3(1)(c) beyond the use of the word "exclusively". In Philips v. Remington [1999] RPC 809 at page 817, Aldous LJ spoke of the need for some capricious addition in order to take the mark out of the realms of pure descriptiveness. In the "BABY-DRY" case, one of the objections was that the words were exclusively descriptive within the meaning of art.7(1)(c) of Regulation 40/94 (which is in identical terms to s.3(1)(c) of the 1994 Act and art.3(1)(c) of the Directive). But the Court of Justice held that any perceptible difference between the combination of words submitted for registration and the term as used in common parlance may suffice. It remains to be seen whether a more conservative view will be adopted in DOUBLEMINT in the light of the Advocate General's Opinion. His own view, expressed in paragraph 77, is that:

"77. However, the degree of difference necessary to constitute an additional element in a trade mark, so that it no longer consists exclusively of terms which may serve in trade to designate characteristics of the relevant products, must in my view be greater than that which renders two marks similar rather than identical. Advocate General Ruiz-Jarabo's reference to 'important components of the form or meaning' thus seems to me an appropriate formulation, and his further developments both helpful and apposite. From a slightly different point of view, I would suggest that the difference the addition of at least one element, or the subtraction of some significant element must be such that it is apparent to both traders and consumers that the mark as a whole is not suitable, in the ordinary language of trade, as a designation of characteristics of the product in question."

26. One aspect of the transparent bin referred to by a number of the witnesses was its novelty. It is, I think, accepted that no other manufacturer of a vacuum cleaner had, as of the date of the application, sought to produce a cleaner with a transparent part like this, and Mr Dyson spoke in his evidence of the initial reluctance of manufacturers to accept the design. But the hearing officer took the view that the novelty of this feature of the goods did not prevent it from being wholly descriptive of a bagless type of cleaner, and a number of manufacturers of other types of bagless cleaners now use transparent bins as a feature of their products. Whatever may be the position under s.3(1)(b), it seems to me that the hearing officer was right to reject novelty in itself as sufficient to prevent the clear bin from being merely descriptive of the kind of cleaner it forms part of. It is not the function of a trade mark to create a monopoly in new developments in technology. To avoid an objection under s.3(1)(c), the mark must (as already indicated) do more than merely describe the new product in terms which are, and ought to be, freely available to other would-be traders in the same or similar fields. Perhaps the most obvious example (in the present context) are the words "vacuum cleaner" themselves. Although once a new product, these words accurately describe how the machine works, and ought not to satisfy the s.3(1)(c) test. Novelty would not affect that. One can therefore pose the same question in relation to the new development of a bagless cleaner. Should Dyson be able to register a monopoly in the use of the clear bin which is a feature of a bagless cleaner, simply because it was first in the field and the design was therefore new?
27. It will be readily apparent that what makes this an unusual application is that the trade mark is essentially a physical part of the goods themselves. In dealing with an invented sign used to describe goods, it is obviously easier to draw a distinction between the sign and the goods it relates to, and the aim of most manufacturers or traders is to devise a mark which both closely describes their product, yet retains the necessary degree of inventiveness to avoid the charge of monopolising the only obvious means of describing that type of goods. WELD-MESH is perhaps a classic example of such a mark and BABY-DRY another. Both are examples of how it may be possible to rearrange ordinary descriptive words which relate to the product, yet cannot be said to be a normal or usual way of referring to it. "DOUBLEMINT", on the other hand, looks unlikely to satisfy this test.
28. These cases serve to affirm the extraordinary flexibility and inventiveness of language. But they do not greatly assist when it comes to considering marks like the present. We are not concerned here with ellipsis or lexical invention, but with whether the product (or a striking feature of it) can also be the producer's mark. The mark in this case is also different from a shape, which should, to be registered, be an invented design aiming to provide a distinctive or unique badge for the product it will promote. The mark I have to consider owes nothing to its shape and rests entirely on the fact that it is made from clear as opposed to opaque or coloured plastic.
29. Mr Carr drew my attention to the recent decision of the Court of Appeal in David West v. Fuller Smith & Turner Plc [2003] EWHC Civ 48, which concerned the validity of the trade mark "E.S.B." registered in respect of beer. The mark was challenged under both s.3(1)(b) and s.3(1)(c) on the grounds that it comprised three common letters, devoid of any distinctive character, which other traders would wish to use in the course of their own business. It was also said that the abbreviation was a common description for a recognised category of beers: i.e. extra strong bitter. The case therefore raised in part the question of monopolistic use which the Court of Justice in Windsurfing had held to be part of the rationale behind s.3(1)(c).
30. In his Judgment Pumfrey J considered the purpose of s.3(1)(c) in these terms:

"21. The real discussion in this case therefore turned on the objection under section 3(1)(c) and to a lesser extent that under section 3(1)(d). The scope of the objection under section 3(1)(c) has been extensively discussed in the ECJ, and before turning to the cases I should briefly mention the matter of infringement. The rationale of the objection under section 3(1)(c) (and a fortiori section 3(1)(b)) is that individual traders should not be able to monopolise as trade marks terms which all traders should be allowed to use. But the defences available to an allegation of infringement are also, in part, designed to protect traders who make use of descriptive terms, geographical designations and the like. The question which has concerned the ECJ is whether the availability of these defences should affect the approach which is taken to the registrability of these marks.

22. The defences to the action for infringement, so far as relevant, provided by section 11 of the 1994 Act which is derived from Article 6 of the Directive, are as follows.

'(2) A registered trade mark is not infringed by -

(a) the use by a person of his own name or address,

(b) the use of indications concerning 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, or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

provided the use is in accordance with honest practices in industrial or commercial matters.

23. Section 3(1)(c) thus finds its echo in section 11(2)(b). Although the desirability of allowing marks with a substantial descriptive component on to the register and requiring traders to establish in legal proceedings that the nature of their use of such marks is such as to provide them with a defence is disputable, it is now the law that the existence of the defence is material to the scope of the prohibition on registration contained in sub-section 3(1)(c)."

After considering the apparent differences in approach between the decision of the Court of Justice in Windsurfing Chiemsee and in the BABY-DRY case (set out earlier in this Judgment) Pumfrey J refers to the decision of the Court of First Instance in the DOUBLEMINT case as illustrative of the way in which the BABY-DRY approach operates:

"26. The DOUBLEMINT case is of course a case on its own facts, but it is important in providing a concrete example of the approach taken by the Court of Justice to Article 3(1)(c) of the Directive, and thus of the correct approach to section 3(1)(c). The basic message is that section 3(1)(c) does not present a high hurdle for the applicant to surmount."

31. In the light of the Advocate General's view that the Judgment of the Court of First Instance in DOUBLEMINT cannot stand, it may in due course be necessary to reassess precisely how high that hurdle is set. This view is confirmed by the recent Judgment of the Court of Justice in Libertel Groep BV v. Benelux-Merkenbureau (published on 6^th May 2003) in which the Court has expressly rejected the argument that a review of the absolute grounds of objection under art.3 should be conducted on a minimal basis, leaving it to art.6 (s.11 of the 1994 Act) to determine the matter substantively. The view of the Court of Justice, as expressed in paragraphs 58 and 59 of its Judgment, was that:

"58. Article 6 of the Directive concerns the limits on the effects of a trade mark once it has been registered. The Commission's argument amounts to proposing that there should be a minimal review of the grounds for refusal in Article 3 of the Directive at the time when the application for registration is considered, on the basis that the risk that operators might appropriate certain signs which ought to remain available is neutralised by the limits which Article 6 imposes at the stage when advantage is taken of the effects of the registered mark. That approach is, essentially, tantamount to withdrawing the assessment of the grounds of refusal in Article 3 of the Directive from the competent authority at the time when the mark is registered, in order to transfer it to the courts with responsibility for ensuring that the rights conferred by the trade mark can actually be exercised.

59. That approach is incompatible with the scheme of the Directive, which is founded on review prior to registration, not an a posteriori review. There is nothing in the Directive to suggest that Article 6 leads to such a conclusion. On the contrary, the large number and detailed nature of the obstacles to registration set out in Articles 2 and 3 of the Directive, and the wide range of remedies available in the event of refusal, indicate that the examination carried out at the time of the application for registration must not be a minimal one. It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. As the Court has already held, for reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered (Case C-39/97 Canon [1998] ECR I-5507, paragraph 21)."

32. Whatever may be the position in relation to literal marks, Dyson must establish that the clear bin is not simply descriptive of the machine being a bagless cleaner. Mr Carr said that what was needed was for the mark to convey a mixed message. As recognised by the Court of Appeal in West v. Fullers, some marks (e.g. WELD-MESH) may be both descriptive and distinctive. The two are not, of course, mutually exclusive, but they do qualify each other in the sense that, for a mark to be distinctive of origin in the s.3(1)(b) sense, it cannot be purely ("exclusively") descriptive. And if it is purely descriptive in terms which ought to be freely available to other traders, it is likely to infringe the other aspect of s.3(1)(c), comprising the public interest in the free use of descriptive signs.
33. The principal difficulty for Dyson, as I see it, in relation to s.3(1)(c), is that a mark comprising a physical working part of the product is not prima facie more than that component part. The clear bin was designed to inform consumers that the machine was bagless and, as part of that function, to indicate that the machine was working and when the bin was full. Although it is true that the bin does not have to be made of clear plastic, that is, on proper analysis, irrelevant. The fact is that a decision was made to produce it in clear plastic for the reasons indicated. All these functions are descriptive of what the bin, or the machine as a whole, is or does. They say nothing about the machine's commercial origin. The fact that it is a new type of cleaner does not of itself serve to associate it with any particular trader or manufacturer. Therefore unless it can be shown in some other way that the clear bin also conveyed to the average consumer an indication of a single origin for all vacuum cleaners displaying this feature, then the objection under s.3(1)(c) is made out.
34. To meet this point, reliance is placed on the evidence of Professor John Drane. He gives examples of the use made of transparent materials as part of a development in design, and the immediate appeal to potential customers which the innovative use of new materials can produce. But this evidence does not really go beyond showing that customers may be attracted by unusual designs in the products they buy. I have no difficulty in accepting that. But it does not of itself indicate that the customer treats the novel design as an indication that it is produced by a particular manufacturer. The reason for purchase may simply be the desire to have the new design, regardless of its commercial origin.
35. Dyson also relies on the evidence of various customers who were identified by means of a survey. Those who provided witness statements and gave evidence were selected out of the members of the public who responded positively to two surveys asking whether they were aware of a domestic vacuum cleaner with a clear or transparent collection bin, and, if so, whether they knew who manufactured it. From those who answered "Dyson" to the second question (707 out of 1509 in the first survey and 602 out of 1005 in the second) 42 witnesses were selected and interviewed, and 41 gave witness statements. They were told that their evidence was to be used to support Dyson's trade mark application. The surveys were carried out in 1999 and the witness statements made in 2000. About 28 of the 41 witnesses claimed to have been aware of the Dyson cleaner in 1996. This evidence was primarily relied upon by Mr Carr in support of his case about acquired distinctiveness. But I mention it at this stage so far as it relates to the objections under s.3(1)(b) and 3(1)(c).
36. Very few of the witnesses claimed any knowledge of or association with a Dyson cleaner in or before 1996, unaffected by the advertising which caused them to link the clear bin with Dyson. As a result of that, many would now assume that a cleaner with a clear bin was a Dyson model, although some are aware of other manufacturers who also produce bagless machines with clear bins. A number of witnesses said that, when they first saw the machine, they were struck by the unusual appearance of the clear bin (some described it as "space age"), but there is very little first-hand evidence at all which indicates that, on first seeing the cleaners (unaided by prior advertising or similar information) customers looked upon the clear bin as an indicator of the commercial origin of the machine. The closest that one comes to it is in a witness statement like that of Mr Alexander Smith, who said that he first saw the Dyson cleaner advertised in 1996 and that his first impression was that it was an innovative product and that the clear bin was the outstanding feature which distinguished it from other vacuum cleaners.
37. None of this evidence, properly analysed, seems to me to support a case that the clear bin, apart from being descriptive in the sense discussed earlier, also was distinctive of origin. Most consumers sampled spoke of the striking and unusual appearance created by the transparent bin and of why they found that a useful feature. But this is not enough. Mr Carr criticises the hearing officer for not asking himself in terms whether the clear bin was exclusively descriptive, but it seems to me evident from paragraph 76 of his decision that he did indeed ask himself that question and that that was his view. He regarded the essential feature of the two marks to be the transparent bin and that this served to identify the cleaner as bagless. There is no real evidence to indicate that anyone regarded the bin in 1996 as anything but a novel feature of a vacuum cleaner. They did not make the link between that and any particular source of manufacture, except insofar as they were informed of that link by Dyson's own advertising campaign.
38. At this point it is therefore convenient to consider the additional arguments relevant to the objection under s.3(1)(b). For the clear bin to convey the mixed message contended for by Mr Carr, it must also be capable of distinguishing the origin of the goods. As I have already tried to explain, it is always going to be difficult to avoid a charge of mere descriptiveness, when the sign comprises part of the goods or the goods themselves, rather than an invented word, phrase or design. The test for inherent distinctiveness consists of an assessment of the mark's ability to differentiate the commercial origin of the goods to which it relates in the minds of consumers as at the date of registration. It falls to be made on the basis of the presumed intention of the average consumer. For this purpose any prior education of the public has to be discounted or ignored. The mark must, by its very nature and appearance, be capable of informing the consumer that it has what is often described as trade mark significance. This was the view expressed by Laddie J in Yakult Honsha KK's Trade Mark Application [2001] RPC 756, which concerned a bottle with a novel and unusual shape, and it is supported by the reasoning of the Court of First Instance in Henkel KGAA v. OHIM [2002] ETMR 278. At paragraph 46 of its Judgment the test is set out in these terms:

"A mark which enables the goods or services in respect of which registration of the mark has been sought to be distinguished as to their origin is to be considered as having distinctive character. It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28)."

39. The difficulty often encountered in obtaining the registration of highly descriptive signs as trade marks seems to me to be no more than a recognition of the problem of establishing a knowledge and understanding on the part of the consumers, in relation to any particular class of product, that the practice in that trade is to differentiate origin by a mark of that kind. The point is well illustrated by two examples referred to during this appeal. The first is registration of a colour. Mr James accepted in his decision (paragraph 67) that a single colour could be registered as a trade mark, if it was very unusual and peculiar in a particular trade and was recognised by traders and consumers alike that it served as a badge of origin for that class of goods. In Wm. Wrigley Jr. Company's Application [1999] ETMR 214, the Third Board of Appeal of the OHIM rejected an application to register a specific shade of light green as a Community trade mark for chewing gum. The Board regarded the colour as lacking any distinctive character, but recognised that in some exceptional cases the link might be made:

"20. As regards Article 7(1)(b) of the CTMR, a trade mark which is devoid of any distinctive character, namely one that is not capable of distinguishing the goods of one undertaking from those of another, cannot be registered. The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user, i.e. that all goods and services bearing it have originated from under the control of a single undertaking responsible for its quality (see inter alia the judgment of the Court of Justice of September 29, 1998 in the Case C-39/97, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc., paragraph 28). A trade mark must, therefore, be distinctive and be capable of serving as an indication of origin (see the seventh recital of the CTMR). It must have the inherent property of distinguishing the goods claimed by their origin from an undertaking. In assessing those properties, both the customary use of trade marks as indications of origin in the industry concerned and the views of the relevant consumer must be taken into consideration.

21. A colour per se normally lacks those properties. Consumers are not accustomed to making an assumption about the origin of goods on the basis of their colour or the colour of their packaging, in the absence of a graphic or textual element, because a colour per se is not normally used as a means of identification in practice. That rule may not apply in the case of, first, very specific goods for very specific clientele and, secondly, a colour exhibiting a shade which is extremely unusual and peculiar in the relevant trade (see Decision of the Board in ORANGE, paragraph 16).

22. In the present case, those properties are absent as regards both the goods claimed and the shade claimed."

40. This restrictive approach to the acceptance of signs consisting of a colour per se as being distinctive of origin has been confirmed by the Court of Justice's decision in the Libertel case. In paragraphs 65 and 66 of its Judgment, the Court said this:

"65. The perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods it denotes. While the public is accustomed to perceiving word or figurative marks instantly as signs identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration of the sign is sought. Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.

66. In the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific."

41. The other example concerned the badging of cars. In Daimler Chrysler AG v. OHIM the Court of First Instance held that the distinctive shape of the grille of a jeep manufactured by the applicant could serve as a trade mark. Their reasoning is contained in the following two paragraphs:

"39. Thirdly, with regard to the applicant's contention that the Board of Appeal was wrong to take the view that the public is not accustomed to seeing the mark in question as a badge indicating the origin of the goods (paragraph 15 of the contested decision), it must be borne in mind that, when assessing the distinctiveness of a trade mark, consideration must be given to all the relevant factors in the specific circumstances of the case. It cannot be ruled out that these might include the fact that the public's perception of the mark claimed might be influenced by the nature of the sign and of the goods covered by that mark. …………

42. Grilles have become an essential part of the look of vehicles and a means of differentiating between existing models on the market made by the various manufacturers. They are therefore one of the features that are inherently helpful in visually identifying a model or range, or even all vehicles made by the same vehicle manufacturer, as compared to other models."

Mr Carr submitted that a distinctive grille of this kind was no different from the transparent collection bin. Both were unique at the time they were first presented to the public. But for the clear bin to serve as a trade mark, Dyson must establish not only that the bin was a striking feature of the goods, but also that it functioned as a guarantee of origin in relation to the sales of vacuum cleaners. The evidence does not do this. In the case of motor cars, badging by means of a distinctive grille or radiator has long been a feature of the trade, and the public has come to recognise it as such.

42. I am therefore satisfied that Mr James was right to find that the two marks are excluded from registration both under s.3(1)(b) and under s.3(1)(c). Because Dyson has failed to establish inherent distinctiveness, it is unnecessary for me to decide whether the application could properly have been refused under s.3(1)(c) on the additional ground that it sought to obtain a monopoly in the use of a material which ought to be freely available to other manufacturers of bagless cleaners. But my own view would have been that registration was not justifiable on that ground also. If other manufacturers are (as has happened) able to produce bagless machines, I cannot see why they should be impeded from displaying that fact by the use of transparent materials as part of the machine. Originality is not enough in itself to justify such a monopoly.

Acquired distinctiveness

43. The inability of Dyson to establish inherent distinctiveness on the part of the clear bin is not fatal to its trade mark application. It can still establish a right to proceed to registration on the basis of acquired distinctiveness under the proviso to s.3(1) of the 1994 Act, and this is capable of overriding all the objections on grounds of descriptiveness and the free use of the sign which are encompassed in s.3(1)(c). Acquired distinctiveness also falls to be assessed as at the date of the application for registration in 1996. Its advantage is that it allows the assessment of distinctiveness of origin on the part of consumers to take into account knowledge and experience gained from use, but it is still necessary to conclude that by the relevant date the mark has (to use the words of the proviso) acquired a distinctive character. The hearing officer took this to mean that it has by then actually attained in the minds of the public what Laddie J in the Yakult case described as trade mark significance. The point was concisely made by the Court of Justice in its Judgment in Windsurfing Chiemsee in the following passages:

"49. In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

…………

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, identify 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 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."

Mr James emphasised in his decision (paragraph 89) that the identification referred to in paragraphs 49 and 52 of the Windsurfing Judgment must amount to more than the consumers being reminded of Dyson or wondering whether or not Dyson might be the producer. The mark relied upon must produce a concrete expectation that the goods emanate from Dyson and no-one else.

44. After a careful and detailed review of the evidence, Mr James expressed his conclusions on acquired distinctiveness in the following passages:

"114. I was left with the impression that the witnesses' association of the transparent collection bin with Dyson in 1996 was as a result of their association of that feature with bagless cyclonic vacuum cleaners, and their association of that type of vacuum cleaner with Dyson. There has been numerous instances in the past where the name of a new type product becomes temporarily associated in the minds of some of the public with the first undertaking to bring that product to the market. The English courts have been slow to accept that this sort of association amounts to recognition of the sign in a trade mark sense: see, for example, McCain International v. Country Fair Foods [1981] RPC 69. The same reasoning can apply where the sign in question is not the name of the new product but a means of visually distinguishing it from the pre-existing technology. I believe that the witnesses' association of the transparent collection bin with Dyson's cyclonic bagless vacuum cleaners falls into this category.

…………

116. As I noted earlier, the ECJ has confirmed that the matter must be judged on the basis of the presumed expectations of an average consumer of the goods concerned who is reasonably well informed, observant and circumspect. In my view, such a consumer would recognise that a feature which identifies a new type of vacuum cleaner, and which is functional, is not a trade mark that identifies the goods of a particular undertaking. At the very least such a consumer would not regard such a sign as a trade mark until the proprietor had taken steps to educate the consumer to that perception, and that would be very unlikely to occur before the product had been on the market for a lengthy period.

117. In this connection, it is highly relevant that vacuum cleaners bearing the marks had only been on the market for some three years and eight months prior to the relevant date, and the applicant is unable to point to any promotion of the transparent collection bin as a trade mark during that period. As the ECJ stated in the Windsurfing case, the expectation that the goods originate from a particular undertaking must be "because of the trade mark". It is difficult to see how that could be the case where there has been no use of the signs applied for as trade marks prior to the relevant date."

Mr Carr criticises paragraph 114 as being old law. He says that the existence of a temporary de facto monopoly is a prerequisite for acquired distinctiveness and not an illegitimate foundation. It can and often will provide the conditions under which the average consumer will come to recognise the mark as distinctive of a particular manufacturer. I accept that argument so far as it goes, but it is still necessary to show by the relevant date that the public has come to recognise the mark as a guarantee of origin. Where, at the relevant date, there is still only one manufacturer of the particular type of goods, and therefore only one user of the mark, it must be seriously arguable that the test of distinctiveness as a trade mark can only be applied by discounting the links between the mark and the goods which exist solely because of the monopoly of position and the association it produces.

45. In its decision in Philips v. Remington the Court Of Justice had to consider a shape mark which had been associated with its manufacturer's product through a long period of sole use. At paragraph 65 it said:

"65. In the light of those considerations, the answer to the third question must be that, where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods may be sufficient to give the sign a distinctive character for the purposes of Article 3(3) of the Directive in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates that shape with that trader and no other undertaking or believes that goods of that shape come from that trader. However, it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark."

Many of the witnesses who were able to give evidence of their reaction to seeing the clear bin in 1996 said that it was different, unique, and that they have continued to associate cleaners with clear bins with Dyson, even after other companies have produced machines with the same features. Mr Smith (whose evidence I have referred to earlier) said that he would still, even now, regard a clear bin as an indication that it was a Dyson cleaner. That was the response of a number of witnesses. The hearing officer treated this evidence as establishing an association between the clear bin and Dyson, as part of a two-stage process described in paragraph 114 of his decision, which I have quoted above. This seems to me to be a fair summary of the evidence. The strong impression given by the witnesses is that they came to recognise the clear bins as an indication that they were looking at a bagless cleaner, and were informed by advertising, and the lack of any rival products, that this was a Dyson cleaner. That link remained with many of them throughout the period of Dyson's de facto monopoly and in some cases beyond. By 1996, however, the clear bin had not been actively promoted by Dyson as a trade mark, and Mr Carr cannot and does not rely on that. His case is that what counts is not what the trade mark owner has done, but what the public perceive in relation to the mark applied for. But he accepts that the result of the process of use must be to confer on the mark the status of a badge or guarantee of origin. The difficulty lies in establishing during the monopoly period what more is required, beyond association of the product with the actual manufacturer, for it to achieve trade mark status. This is particularly important, bearing in mind that the mark in the present case will have the effect of reserving to Dyson the right to use clear plastic as an exclusive indicator of origin beyond the period during which it was the sole producer of bagless cleaners. My own inclination is to assume, as Jacob J did in Société de Produits Nestlé SA v. Unilever Plc [2002] EWHC 2709 (Ch), that the mark has to be used, up to the relevant date, as a trade mark. Without this, it is difficult to see how the clear bin could have come to be regarded in the minds of the public as a guarantee that the machine was a Dyson product and was made by no-one else. On that basis I would have dismissed the appeal on acquired distinctiveness. But it may be that the test laid down in Philips v. Remington does envisage circumstances in which a de facto monopoly leading to the recognition of the goods as those of a particular trader, even absent actual promotion of the sign as a trade mark, may nonetheless produce the necessary degree of distinctiveness. I therefore intend to refer this question to the Court of Justice for its guidance.