England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
ON APPEAL FROM THE TRADE MARKS REGISTRY

		Royal Courts of Justice Strand, London. WC2A 2LL
		29th June 2005

Christopher Floyd QC

1. As its name suggests, Betafence Limited is a manufacturer and supplier of fencing. One of its most successful products is a wire fencing panel which it sells under the name Paladin. It consists essentially of parallel wires arranged in groups of seven and spaced out, with a single wire in between, the wires having reinforcing bends at points along their length. Until 1997 this fencing was the subject of a registered design. When the design expired Betafence (then called Tinsley Wire Limited) applied to register the shape of the fencing as a trade mark. Its application was rejected after opposition as being devoid of either inherent or acquired distinctive character.
2. In 2002 the company applied again to register the shape of the fencing. This time they filed two applications, numbers 2303706 ("706") and 2309201 ("201"). 706 looks like this


and was applied for in respect of "Wire Fencing" in class 6. 201 looks like this



and was also applied for in respect of "Wire Fencing" in class 6. 201 is self evidently the shape of Betafence's Paladin fence panel. It was indicated to be 3-dimensional, whereas 706 was not, but nothing was argued to turn on that. A further difference between the two, which can be seen on careful inspection, is that 201 has seven lines in the groups of parallel wires, whereas in the case of 706 there are only four.

3. Both applications met objections from the examiner. Subsequently, Mr Allan James, a Hearing Officer acting for the Comptroller General of Patents, Designs and Trade Marks ("the Registrar") issued a decision dated 23rd December 2004 refusing to allow either mark to proceed to registration. This is Betafence Limited's appeal from that decision.
4. The ground on which the Hearing Officer rejected the applications was that contained in Section 3(1)(b) of the Act which corresponds to Article 3(1)(b) of the Directive. Section 3( 1 )(b) provides as follows

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

...

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

...

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."

5. In short, the Hearing Officer concluded that both marks were inherently devoid of distinctive character and that the evidence of use adduced by the applicant (both prior to the hearing and pursuant to an opportunity he gave to supplement it subsequently) did not persuade him that the marks had acquired that character by use. He accordingly refused the applications.

The nature of an appeal to the Court from the Trade Marks Registry

6. It is appropriate first to set out the approach which the High Court, as an appellate tribunal, should take when hearing an appeal from the Trade Marks Registry. Under CPR 52.11(1):

"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 rehearing."

In the present case neither side suggested that the appeal should be anything other than a review of the Hearing Officer's decision.

7. In Reef Trade Mark [2003] RPC 5; [2003] EWCA Civ. 763 the Court of Appeal expanded on the nature of the review which the appellate tribunal conducts. The following points emerge from the judgment of Robert Walker LJ:-

(a) CPR 52.11(1) says nothing specific about the function of a review in appeals from the Trade Marks Registry: § 17.

(b) A party should not come to the appeal court simply in the hope that the impression formed by that court will be different from that of the Hearing Officer in the Registry: § 18.

(c) The vaguer the legal standard, and the greater the number of factors which the first instance tribunal has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere:§ 19.

(d) There is no single standard which is appropriate to every case. The most important variables include the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence: §26. A case like Biogen involving biotechnology, expert evidence and a lengthy trial before a very experienced Judge was very close to the top of the scale: §27.

(e) Hearing Officers are normally experienced in this field, and there is nothing in the CPR to diminish the degree of respect which has traditionally been shown to a Hearing Officer's specialised experience: § 28.

(f) Where, as in Reef, the Hearing Officer had to make 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, but without hearing oral evidence, an appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle: §28.

(g) The appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed. The duty to give reasons must not be turned into an intolerable burden: §29.

8. These principles clearly apply to findings of an experienced Hearing Officer in relation to distinctive character. In Bongrain SA 's Trade Mark Application [2004] EWCA (Civ) 1690; [2005] RPC 14 at paragraph [9], Jacob LJ said

''the Court should be slow to reverse the decision of the experienced Registrar on a question which consists largely of a value judgment, such as "distinctive character" .

These principles were not in dispute, so I propose to apply them here.

The issues in this appeal

9. Both the Hearing Officer in his Decision and the parties in their arguments in this Court approached the matter in two stages. The first stage involves deciding whether the marks have the inherent capacity to distinguish, absent any help they may have received from use. The second stage, only necessary in the event that the marks fail at the first stage, is to go on to consider whether the use made of the mark before the relevant date has caused the mark to have the capacity to distinguish - so called "acquired distinctiveness". The second stage is rendered necessary by the proviso to section 3(1). It is required because, as it has sometimes been put, a mark may be distinctive "by nature or by nurture".
10. Mr Wyand QC, who appeared on behalf of Betafence Limited, identified five main

areas where he said the Hearing Officer had erred in principle in refusing the applications. In summary these were that the Hearing Officer

(1) had set the bar for inherent distinctiveness too high;

(2) wrongly ignored evidence of fencing contractors and merchants in relation to acquired distinctiveness;

(3) wrongly held that the use required to establish distinctiveness had, in law, to be use "as a trade mark";

(4) wrongly held, in any case, that there had been no use of the signs as trade marks;

(5) wrongly held that even if 201 had the necessary acquired distinctiveness, 706 had not.

Mr Wyand's first ground relates to the inherent capacity of the marks to distinguish, whereas his second to fourth grounds relate to acquired distinctiveness. The fifth ground arises because, as the Hearing Officer found, there had been no use of the 706 mark at all. There is no appeal from that factual finding.

The appeal in relation to inherent distinctiveness

11. Marks which consist of the shape or appearance of articles present different problems in practice in the application of section 3(l)(b) than do word or device marks. But the European Court has pointed out that the principles to be applied are the same for all trade marks. That is obviously right: it is not possible to interpret the Directive as laying down a different standard of distinctiveness for different types of mark. As the ECJ said in Philips Electronics NV v Remington Consumer Products Ltd Case C299/99 [2003] RPC 2:

"47 First, it is clear from Art 2 of the Directive that a trade mark has distinctive character if it serves to distinguish, according to their origin, the goods or services in respect of which registration has been applied for. It is sufficient, as is clear from paragraph 30 of this judgment, for the trade mark to enable the public concerned to distinguish the product or service from others which have another commercial origin, and to conclude that all the goods or services bearing it have originated under the control of the proprietor of the trade mark to whom responsibility for their quality can be attributed.

48 Secondly, Art 2 of the Directive makes no distinction between different categories of trade marks. The criteria for assessing the distinctive character of three dimensional trade marks, such as that at issue in the main proceedings, are thus no different from those to be applied to other categories of trade mark.

49 In particular, the Directive in no way requires that the shape of the article in respect of which the sign is registered must include some capricious addition. Under Art 2 of the Directive, the shape in question must simply be capable of distinguishing the product of the proprietor of the trade mark from those of other undertakings and thus fulfil its essential purpose of guaranteeing the origin of the product."

12. How does one test whether a mark which consists of the shape or appearance of an article is inherently devoid of distinctive character? The ECJ has had to consider this question on a number of occasions. The fundamental principle, in line with that which applies to trade marks generally, is that a shape mark cannot comply with section 3(1)(b) unless it serves to distinguish goods or services according to their commercial origin. I have already set out paragraph [47] of the Philips case, which is to that effect. Similar statements can be found in other cases where shape marks were applied for: see Linde and others (motorised truck, torch and wrist watch) (joined cases C-53-55/01) [2003] RPC 45 at paragraph [40]; Henkel (dishwasher tablets) (joined cases C-456-457/01 P) [2005] ETMR 44 at paragraph [34] and Henkel (bottle shape) (case C-218/01) at paragraph [48] .
13. The sounding board for distinctiveness is the average consumer of the goods or services in question, who is taken to be reasonably well informed and reasonably observant and circumspect. What is important is the "presumed expectations" of such a consumer. This was made clear, for example, in Philips at paragraph [63]. It would appear that this formulation was originally borrowed from an ECJ judgment in a different field. In Gut Springenheide and Tusky [1998] ECR 1-4657 at paragraph [34], a case about misleading egg marketing, the Court said

"The answer to be given to the questions referred must therefore be that, in order to determine whether a statement or description designed to promote sales of eggs is liable to mislead the purchaser, in breach of Article 10(2)(e) of Regulation No 1907/90, the national court must take into account the presumed expectations which it evokes in an average consumer who is reasonably well-informed and reasonably observant and circumspect."

The words which 1 have emphasised in this extract serve to remind one that the relevant inquiry is into the impact of the particular mark on the average consumer of the goods in question, and not some wider or more generalised inquiry.

14. The ECJ has, however, recognised in a number of cases that the average consumer is not used to relying on the shape (')f goods as an indication of trade origin. In this respect the presumed expectations of the average consumer when faced with a mark consisting of the appearance of goods may well differ from those expectations in the case of a word or device. In Henkel (bottle shape) the Court said at paragraph [52]:

"the perception of the average consumer is not necessarily the same in the case of a three-dimensional trade mark, consisting of the packaging of a product, as it is in the case of a word or figurative mark which consists of a sign that is independent from the appearance of the goods it denotes. Average consumers are not in the habit of making assumptions about the origin of goods based on the shape of their packaging, in the absence of any graphic or word element, and it could therefore prove more difficult to establish a distinctive character in the case of such a three-dimensional trade mark than in the case of a word or figurative mark (see to that effect, Linde and Others, cited above, paragraph 48, and as regards a mark consisting of a colour, Case C104/01 Libertel [2003] ECR 1-3793, paragraph 65)."

15. The fact that the average consumer is not in the habit of relying on shape as an indication of origin is not just an economic observation: there are good reasons why the consumer should not do so. Consumers know that there are usually perfectly good reasons why an article has a shape: examples are that it fulfils a function, or it is aesthetically pleasing. There is usually no a priori reason why a consumer should assume that a shape is being used for the additional or alternative reason of indicating the commercial origin of the goods. In these circumstances it is usually unsafe to rely on the shape of an article as a guarantee of origin.
16. There is also a further consideration. In the case of word marks a factor in the analysis of inherent distinctiveness is often the proximity or otherwise of the relationship between the word and the class of goods for which it is to be registered: the further away the easier it will be for the Registrar to accept inherent distinctive character: "SOAP" for soap and "NORTH POLE" for bananas being examples of the two ends of the spectrum. However in the case of a mark consisting of the shape of the article for which it is to be registered, the relationship between the mark and the class of goods is always going to be as close as it could possibly be: such marks are not assisted by this consideration.
17. Thus when he is faced with an application to register the unused shape of an article as a trade mark, the Registrar needs to have some rational basis for deciding that this particular shape will be taken as an indication of origin. Such a basis may exist where it is clear that the sector in question is one where shapes are acknowledged by consumers to have trade mark significance (motor car shapes or grilles might be one example - there will be others). Unless this is so, every novel or unusual shape will be entitled to registration as a trade mark. The effect will be to create potentially perpetual monopolies in designs, which is contrary to the public interest: see per Jacob LJ in Bongrain SA's Trade Mark [2004] EWCA Civ 1690; [2005] RPC 14.
18. In Henkel (bottle shape) the Court said that

"a simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal given in Article 3(1)(b) of the Directive. In contrast, a trade mark which significantly departs from the norm or customs of the sector and thereby fulfils its essential origin function is not devoid of distinctive character".

Later the Court said:

"53. In view of the foregoing considerations, the answer to the second question must be that, for three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the product, their distinctive character within the meaning of Article 3(1)(b) of the Directive must be assessed by reference to the perception of the average consumer of such goods, who is reasonably well informed and reasonably observant and circumspect. Such a trade mark must enable such a consumer to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention."

Mr Wyand says that this paragraph really operates as a definition of what is meant by "a significant departure". This forms the main basis for his appeal on this branch of the case.

19. The Hearing Officer summarised the relevant law in paragraph 11 of his Decision in the present case in the following way:

"The requirement to avoid the prohibition under Section 3(1 )(b) is that the shape must enable the relevant public to distinguish the product concerned as originating from one undertaking and to distinguish it from the products of other undertakings without such consumers having to undertake an analytical or comparative examination of the shape, and without them having to pay particular attention. The shape must therefore be more than a simple departure from the norms and customs of the sector. It must represent a significant departure from such norms. Further, in assessing the extent to which the shape departs from such norms and the impact this is likely to have on the relevant public, one is required to bear in mind that average consumers are not in the habit of making assumptions about the origin of goods based upon their shape in the absence of any graphic or word elements."

He then went on to direct himself as to the approach to the identification of the average consumer. He cited a passage from Bjornekulla Fruktindustrier AB v Procordia Food AB Case C-371/02 [2004] RPC 45

"If the function of the trade mark as an indication of origin is of primary importance to the consumer or end user, it is also relevant to intermediaries who deal with the product commercially. As with consumers or end users, it will tend to influence their conduct in the market. In general, the perception of consumers or end users will playa decisive role. The whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it. Accordingly, the relevant classes of persons comprise principally consumers and end users. However, depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration."

20. Based on that guidance, the Hearing Officer said:

"For present purposes, I am therefore prepared to assume that the relevant public for wire fencing consists of the property owning general public, businesses, and public bodies, and those who may influence purchasing decisions, such as architects and designers."

He concluded in paragraph 14:

"I would not have thought that such consumers would be in the habit of making assumptions about the origin of fencing based on its shape, and there is nothing in the evidence the applicant has filed (see below) which changes my view about that. The shapes applied for create a visual impression which is reminiscent of palisade fencing. Creating a similar effect with wire fences may well have created a departure from the norm for that type of fence, but it does not create a departure from the norms and customs of the sector such as to cause average consumers of the sort in question to look upon the shape of the fence as a means of designating the origin of the goods, without being educated to this perception. I therefore find that the marks in question are prima facie debarred from registration by Section 3(1)(b) of the Act."

21. Mr Wyand's principal submission was that the Hearing Officer must have placed too high an obstacle in the way of the applicant. He accepts, of course, that it is not the case that any novel fencing design can secure registration simply on showing some departure from the design norms: the departure must be significant. He submits that the right way to test whether the departure is significant is to ask whether, following paragraph 53 of Henkel (bottle shape), consumers are enabled to distinguish the product concerned from other products without conducting an analytical or comparative examination and without paying particular attention. Mr Wyand fortifies this submission by saying that if you look at the norms and customs of this particular sector you see that the majority of fencing comprises evenly spaced vertical wires: by contrast the effect created by the banding of the wires in Paladin is strikingly different, and consumers would have no difficulty in picking out this product from amongst a range of others. In this respect the case is quite unlike Henkel (dishwasher tablets) where the consumer would have to look very carefully at the different dishwasher tablets to determine the differences relied upon.
22. A very similar argument was recently unsuccessfully advanced to the Court of Appeal in Bongrain SA's Trade Mark Application [2004] EWCA Civ 1690 [2005] RPC 14, a case concerned with an unusual shape of cheese. Jacob LJ (with whom Potter and Longmore LJJ agreed) said this:

"[counsel] supported his "striking and unusual is enough" argument by reference to a single sentence in [39] of Henkel (detergent tablet). This I set out again:

"Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, IS not devoid of any distinctive character ... "

Later he said

"As regards the sentence quoted from Henkel (detergent tablets) .. .I do not read the Court as saying - almost as an incidental matter - that a fancy shape is ipso facto enough for registration. [counsel] suggests we read "thereby" as "therefore". I think the Court is saying no more than that fancy shapes - those which depart significantly from the norm - may fulfil the essential function, not that they must."

23. The Court of Appeal did not, it seems, have paragraph [53] of Henkel (bottle shape) cited to them. Thus they did not have to consider Mr Wyand's refinement on the argument, namely that although a departure from the norm is not enough per se, a departure from the norm which is sufficiently great to allow the consumer to distinguish the product without having to perform an analytical or comparative evaluation, is. Nevertheless I reject that argument as well. Paragraph [53] of Henkel (bottle shape) does not, in my judgment, lead to the conclusion that provided (a) a proposed shape mark is different from the norm of the sector and (b) purchasers can distinguish goods shaped as shown in the mark applied for from other goods without detailed evaluation, then it follows that the mark does not offend against section 3(1)(b) and can be registered. Such a test conveniently by-passes any consideration of whether the mark connotes commercial origin, the essential function of any trade mark.
24. A novel and unusual shape in a given sector will almost always allow the consumer to pick that shape out from amongst a range of others without difficulty. So here it would be possible for the consumer to pick out Paladin from a range of samples of fencing on the basis of its different design. But what is required is more than this: even paragraph [53] of Henkel (bottle shape) speaks of distinguishing the product from those of other undertakings. That means that the consumer must conclude not just that the panel is different, but that the difference signifies that the goods come from a given commercial undertaking.
25. There was no material before the Hearing Officer to suggest that the fencing sector was one in which the average consumer had been led to expect that particular designs of fencing denoted commercial origin. Indeed he had positive evidence of how competitors sold their fencing panels and none used appearance as a trade mark: see paragraph 22 of his decision. He was entitled to conclude, prima facie, that fencing designs were perceived by the average consumer as fencing designs and no more, and that a new and unusual and unused shape of fencing would, again, be perceived simply as such. The mere fact that the average consumer can distinguish the applicant's shaped product from other products in the market place does not show that he or she would rely on the product's shape, seen in another context, to indicate that the goods carne from the same commercial source.
26. I can find no trace of error in the Hearing Officer's decision on inherent distinctiveness. This part of his decision is no doubt concise; but Mr Wyand who appeared before him at the Registry, had not advanced the inherent distinctiveness case before him in as much detail as he did before me. Nevertheless, even with the advantage of the more expanded argument, I am in no doubt that the Hearing Officer's decision on this aspect of the case was entirely correct.

The appeal in relation to acquired distinctiveness

27. The applicant's evidence of acquired distinctiveness consisted of evidence of the extent of sales of the Paladin fencing products before the relevant date and the manner in which it and competitive panels were promoted, two statements from representatives of industry associations and a survey. All this evidence related to use of the 201 shape, none of it to 706.
28. Sales of fencing in the shape of the 201 mark, i.e. their Paladin panel, were undoubtedly substantial, reaching £2 million per annum in 1999 and had been sold since 1988, and thus for many years before the date of the application. These sales amounted, at least at one point, to some 40% of the market for rigid panel fencing for boundary security, a market which is distinguished in the evidence from fencing sold in rolls and high security fencing.
29. The Hearing Officer carefully reviewed the evidence of promotion of the applicant's products. He noted that one brochure promoting this panel said:

" .... the most popular Weldmesh fence panel due to its innovative and unique appearance and is regularly specified where an aesthetically pleasing appearance is essential. The panels feature pressed 'V' forms containing 4mm diameter wires for the full panel width for strength, rigidity and sophisticated good looks whilst providing a cost-effective anti-intruder barrier."

In paragraph 27 the Hearing Officer concluded:

"27. The 201 mark has therefore been promoted on the basis of its functional and aesthetic appeal. There is nothing in the brochure which identifies one of the purposes of the design in question as being a means to distinguish the goods of a particular undertaking. The way in which the 20 I mark is depicted in the brochure promoting the Sentinel Paladin fencing system is not materially different to the ways in which the Bekaert Group's other fences are shown in the individual brochures in which they are promoted. In each case there is a photographic representation of the fencing system shown in a typical installation, together with a line drawing of the fence in question, usually within a red rectangle".

30. The Hearing Officer then turned to the evidence of the effect which this use had had on the perceptions of the average consumer. The main evidence here was a survey. The survey asked (a) whether the recipients recognised the fencing panel in the attached picture (b) what it was and (c) who made it. Written questionnaires were sent out to the recipients. Of 66 questionnaires which were returned, 24 were from fencing contractors and 10 from merchants. The remainder were from "end users" which, on the basis of the applicant's evidence, appeared to be mainly architects and specifiers rather than the ultimate owners of the fencing. The vast majority of the respondents recognised the panel as a Paladin fence and mentioned the applicant as the supplier.
31. The applicant's evidence also established that merchants and fencing contractors played no part in the selection process of fence panels, and therefore did not form part of the relevant buying public. So far as advisers were concerned the Hearing Officer regarded them as part of the relevant public, because of their advisory role, but in accordance with the Bjornekulla case, recognised that it was the ultimate end user whose views were likely to be decisive. So in paragraph 34 he said:

"This suggests that the list provided by the applicant to his Trade Mark Attorney would have contained only a small number of ultimate customers for the applicant's products - the group whose perception of the 201 mark is of primary significance to the question of whether that mark has acquired a distinctive character through use. It appears to me that this finding is sufficient, of itself, to conclude that the survey does not establish that the 201 mark has come to distinguish the wire fencing of a particular undertaking in the perception of a significant proportion of the relevant class of persons."

32. What the Hearing Officer was left with was evidence that a significant proportion of the trade would recognise the shape of fencing and would know where to get it from, but an almost complete lack of any evidence from end users. These members of the trade were either the irrelevant fencing contractors and merchants, or the advisors whose role was subsidiary to the ultimate consumer. As to the architects he said in paragraph 41 :

"I do not regard the survey as establishing that the trade, and more particularly the relevant members of the trade, such as architects and designers, use the shape of the 201 mark to influence the ultimate consumer's purchasing decision by reference to the preferred commercial source for the goods. What the survey shows is product recognition by the trade."

33. Mr Wyand attacks the approach of the Hearing Officer to the evidence. He says firstly that the Hearing Officer should not have rejected the evidence of the merchants and fencing contractors. I do not agree, as they do not play any part in the purchasing decision, and their ability to recognise the product cannot therefore contribute to the perception of the average consumer. Mr Wyand postulated the case of a consumer who comes to a merchant with a picture of a Paladin fence, not knowing who makes it. The merchant recognises it and is able to order a Paladin fence for the customer. I am not really sure what this is supposed to show. There is no evidence that it actually happened, so it cannot have formed any part of the education of the relevant consumer that the fence shape indicates origin. Also, it is necessary to remember that we are concerned to ask whether the use of the mark has made the shape distinctive to the average consumer. It is clear from Mr Wyand's example that the relevant consumer who sees the fence in place is simply prompted to ask for a fence of that design: he has no idea whether it signifies a fence from a single commercial source.
34. Mr Wyand also referred to the passage from the brochure, set out earlier in this judgment, which refers to the "unique" design. This, he says, is telling the public that the design cannot be purchased from any other source, and is educating them as to the origin significance of the design. I do not think that this single, and in advertising, somewhat overused word in this one brochure is likely to have had the effect contended for by Mr Wyand. Besides, the Hearing Officer was plainly aware of it. It clearly did not alter his overall view that the evidence did not demonstrate acquired distinctiveness amongst the relevant class of persons.
35. Mr Wyand also drew attention to the difficulties the applicant faced in obtaining evidence from the relevant classes of purchaser. I can understand these difficulties, but neither I nor the Hearing Officer would be justified in speculating about what that evidence would have shown if it had been possible to obtain it. Moreover those trade witnesses who were contacted could have given evidence about how sales in his industry were made. The impression I have is that sales are made by reference to the manufacturer's name and the sub-mark (such as Paladin), usually by choosing from a brochure. If this is wrong and there is a practice of using the appearance to designate origin, I would have expected the trade witness to have been able to say so.
36. I would accordingly uphold the Hearing Officer's decision that the mark was not saved from its prima facie lack of distinctive character by the evidence of the applicant's use. This was in any case a classic example of a value judgment by the Hearing Officer, based on his appreciation of the evidence. Even if I were persuaded that I might have reached a different view, which I am not, I would not be entitled to interfere and substitute my own judgment.
37. I should add that the Hearing Officer's decision contains a discussion of whether there is a further requirement that, in order to show distinctiveness under the proviso, it is necessary that the use relied upon be use "as a trade mark". This requirement is said to arise out of what is said at paragraph [64] of the judgment of the Court in Philips:

"the identification, by the relevant class of persons, of the product as originating from a given undertaking must be as a result of use of the mark as a trade mark"

38. Mr Wyand argued that the use demonstrated was use as a trade mark, and if not, then it was enough if the result of the use was public recognition of the product as coming from the applicant by reason of its shape. But as I have held that, in the Court's words, the evidence does not establish identification by the relevant class of persons of the product as originating from a given undertaking, these questions do not arise. However in case the matter goes any further I should shortly state my opinion on them.
39. As to the first question, there was no direct evidence before the Hearing Officer that the applicant had taken any active steps to promote their fence design as a trade mark. Instead the evidence showed that they had promoted their fencing on the basis of its function and its aesthetically pleasing shape. Mr Wyand relied on the "unique" point in the brochure, but I do not think that converts the use into a trade mark use.
40. The second question is a question of law. There is undoubtedly a lack of clarity in precisely what was meant in Philips by the requirement for use as a trade mark, and Mr Tappin for the Registrar accepted as much. As I have said, Mr Wyand argues that all that is necessary is to show public recognition of the product as coming from the applicant by reason of the shape. Both Patten J in Dyson [2003] EWHC 1062, [2003] RPC 47 at [45] and Jacob J (as he was) in Unilever [2003] EWHC 2709, [2003] RPC 35 at [42-3] and [54] thought that more was needed. The basis for a contrary view emerges from the Advocate General's opinion in Nestle v Mars: Case C-353/03 at [27] to [33], where she states, but this time in the context of a word mark, that any use which gives rise to the acquisition of distinctiveness falls to be considered. Even without this further fuel to the debate, Patten and Jacob n referred the question to the ECJ, but Unilever settled before the reference was decided and the reference in Dyson has been stayed pending a decision of the CFI in an appeal by Dyson against a decision by OHIM. Had it been necessary, I would have referred the question as well. Like Patten and Jacob n, I suspect the true position is that, in the case of a shape mark, mere sales of goods of that appearance are unlikely to teach the public that the goods are made by no one else, and that the mark is therefore a guarantee of origin. Something more than mere sales is necessary. Tempted though I am to seek clarification, this is not a case in which it is necessary to do so.
41. As there was no evidence of any use of 706, that application must fail as well. It is not impossible that use of one mark could aid the acquired distinctiveness of another, but that question is academic in this case.

Conclusion

42. It follows that the appeal will be dismissed, as the objection under section 3(1 )(b) is made out, and the mark is not saved by the proviso. I will hear counsel about the form of order.