Masterfoods Ltd. v. Controller of Patents Designs and Trademarks [2003] IEHC 121 (30 April 2003)
THE HIGH COURT
2000 No. 557Sp &
2000 No. 558Sp
IN THE MATTER OF THE TRADEMARKS ACT, 1996
BETWEEN
MASTERFOODS LIMITED
Plaintiff
and
THE CONTROLLER OF PATENTS DESIGNS AND TRADEMARKS
Defendant
JUDGMENT of Mr Justice Kelly delivered on the 30th day of April, 2003.
Introduction
These are two appeals from decisions of the defendant. In each case he refused trademark registration to slogans proposed by the plaintiff.
The First Slogan
On the 12th December, 1994 the plaintiff applied pursuant to the provisions of the Trademarks Act, 1963 for registration of the slogan "TOP BREEDERS RECOMMEND IT" as a trademark in class 31 of the register of trademarks.
On the 24th July, 1996 the plaintiff gave notice to the defendant, pursuant to paragraph 9 of the third schedule to the Trademarks Act, 1996, (the Act) requesting that the regestrability of the mark be determined in accordance with the provisions of that Act.
On the 23rd November, 1998 the plaintiff amended its application so as to confine it to food for dogs included in class 31. An amended specification of the same date was furnished to the defendant.
On the 15th September, 2000 the defendant refused the plaintiff's application. Written grounds in support of that refusal were furnished by the defendant on the 2nd November, 2000.
The Second Slogan
On the 25th July, 1996 the plaintiff applied pursuant to the provisions of the Act for registration of the slogan "DEVELOPED BY VETS. TOP BREEDERS RECOMMEND IT" as a trademark in class 31 of the register of trademarks.
On the 3rd July, 1998 the plaintiff applied to amend the slogan so as to read "DEVELOPED WITH VETS. TOP BREEDERS RECOMMEND IT". This amendment was accepted by the defendant.
On the 15th September, 2000 the application for registration was refused with the reasons for such refusal being furnished on the 2nd November, 2000.
Issues
The two appeals were heard together because the issues which they raise are the same. They are (1) whether the defendant was correct in refusing to accept the plaintiff's applications for registration on the grounds that they were devoid of any distinctive character within the meaning of s.81(a) of the Act and (2) whether the defendant was also correct in refusing registration on the grounds that the slogans had not acquired distinctiveness through the use made of them by the plaintiff.
"TOP BREEDERS RECOMMEND IT"
The evidence which was before the defendant in respect of this slogan can be summarised as follows.
The slogan has been in use by the plaintiff since 1959 in respect of a range of pet foodstuffs but in particular in relation to "PEDIGREE CHUM" dog food. Goods sold under the slogan "TOP BREEDERS RECOMMEND IT" accounted for very considerable sums of money. In 1985 it was in excess of IR£4.7 million. By 1996 it had reached IR£12.8 million. The increase in the value of the sales over that period was mirrored by an increase in the amount spent on advertising. It ran from IR£92,000 in 1985 to IR£187,000 in 1996. No other trader in what can be described as the pet care market used a mark identical with or similar to the slogan "TOP BREEDERS RECOMMEND IT". Indeed it was asserted that the plaintiff had always been alert to protect the slogan and as evidence of this a decision of Mervyn Davies J. given in the Chancery Division in England in February, 1987 was exhibited before the defendant. At the time of that judgment the slogan "TOP BREEDERS RECOMMEND IT" had not been registered as a trademark. The defendant in that case was producing tinned dog food under the name "TOP BREED" and an interlocutory injunction was granted to restrain passing off.
Advertisements for goods bearing the mark "TOP BREEDERS RECOMMEND IT" appeared in numerous publications with substantial circulation in Ireland. I mention just a few. They were "Woman's Own", "Woman's Weekly", "Readers' Digest", "Cosmopolitan", "Good Housekeeping" and "Woman". Advertising was also placed in what was called the 'canine press' with samples from "Irish Kennel Club" publication and "Irish Dogs" magazines "Heel" magazine and "Irish Canine Press" being exhibited.
The slogan has been registered as a trademark in the United Kingdom under the Trademarks Act, 1994. That Act gives effect to the trademarks directive as does the Act.
"DEVELOPED BY VETS TOP BREEDERS RECOMMEND IT"
The evidence before the defendant concerning this slogan can be summarised as follows.
This slogan was first used in 1995 in Ireland. It was used in respect of a range of foodstuffs for pets but in particular the "PEDIGREE CHUM" range. The annual turnover of goods sold in Ireland under this slogan increased from IR£11 million in 1995 to a projected IR£16.25 million in 1998. The advertising spend likewise increased from IR£199,000 in 1995 to a projected IR£275,000 in 1998. Samples of advertising in the canine press demonstrated that goods bearing the slogan had been advertised in numerous such publications. Once again the decision of Mervyn Davis J. was referred to. It was alleged that no other trader in the pet care field used a mark identical to or similar to this slogan.
As in the case of the other slogan there was also an assertion to the effect that there can be few households in Ireland which have not heard of these slogans and associate them with "PEDIGREE CHUM".
Unusual Feature
An unusual aspect of the case is that the first of the slogans "TOP BREEDERS RECOMMEND IT" was the subject of an application for registration by the plaintiff's predecessor Mars GB Limited. That application was made under the provisions of the Trademarks Act, 1963 and was unsuccessful.
An appeal was taken to this court where the decision of the Controller was upheld by Geoghegan J. in an ex tempore judgment delivered on the 4th July, 1996. I have had placed before me a note of that judgment. It is clear that Geoghegan J. took the view that the slogan "TOP BREEDERS RECOMMEND IT" is a factual statement which could be used by any pet manufacturer and would be wrongly misappropriated if those words were registered. He took the view that it would be against the intention of the 1963 Act if they were permitted to be registered as a trademark.
Geoghegan J. gave express approval to paragraph 11 of the decision of the Controller which was as follows
"While the amount of use claimed is substantial, I do not believe that it can overcome the basic objection which I have outlined as regards the inherent unsuitability of the mark for registration in either part A or part B of the register. In coming to this conclusion, I am guided by the words of Whitford J. in the Have a Break case [1993] RPC 217 at 230 where he said "What you have got to consider is whether these are words that others might perfectly fairly want to use". I think it likely that a producer of animal feedstuffs other than the applicants would, as a legitimate marketing device, seek the endorsement of his product by persons known to those in interested circles as "TOP BREEDERS". In seeking to bring such endorsement to the notice of potential purchasers, he might, perfectly fairly, wish to use the words which go to make up the mark for which registration is sought. His freedom in this regard would, I believe, be unreasonably restricted were the proposed registration allowed".
Geoghegan J. commented that that approach was in line with what was said by Farwell L.J. in Re Crossfield and Sons [1910] 1 Ch 130 and by Finlay C.J. in the Miller High Life case. Geoghegan J. quoted the following passage from the judgment of Farwell L.J.
"The whole basis of the enactment is that the word or words to be registered must be distinctive i.e. adapted to distinguish the goods of the proprietor of the trademark from those of other persons; and this is obviously right and just, for a trademark is necessarily a monopoly, and although it is no doubt proper and not injurious to any honest man to allow a trader to monopolise a trademark in certain cases, it would be wrong to allow to any one man the monopoly of ordinary words, commonly used in the trade as simply descriptive of the nature of color or laudatory of the quality of the goods; e.g. cotton - blue - good. The question is not merely one between the applicants and the opponents who appear before the tribunal".
Geoghegan J. also quoted from Finlay C.J. in the Miller High Life case where that judge applied the test of whether the registration of the words would restrict the legitimate rights of other manufacturers to use the words in describing their product.
The plaintiffs here accept the correctness of the judgment of Geoghegan J. But they say that that was a decision given under the provisions of the Trademarks Act, 1963. That Act has now been repealed in its totality and has been replaced by a new regime. That is one which was brought about on foot of a European Union directive which had as its object the harmonisation of trademark law in the different Member States of the Union.
It is said that the Act has swept away in large measure the body of trademark law which existed prior to its enactment. The plaintiff contends that registration of a trademark no longer creates monopoly rights. Third parties are entitled to go on making normal use of words which are embodied in a trademark so long as they do so in accordance with honest practice. The plaintiff therefore contends that not merely is the judgment of Geoghegan J. redundant but so also is the body of case law which underpinned his decision.
The Act
The long title to the Act makes it clear that it was enacted to make new provision for registered trademarks and to implement Council Directive 89/104/EEC. The first recital of that directive makes it clear that it was introduced to approximate the laws of Member States related to trademarks because of the existence of disparities in the existing laws in such States which might impede the free movement of goods and services and might distort competition.
Article 2 of the directive provides that any sign capable of distinguishing the goods or services of one undertaking from those of others is to be regarded as a trademark.
Article 3 sets out the grounds for a refusal or invalidity of a trademark. Eight such grounds are set forth but only two are relevant to this appeal. A trademark which is devoid of any distinctive character may not be registered. Neither may one which consists 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.
Not surprisingly the definition of a trademark which is contained in s.6 of the Act is almost identical to what is contained in article 2 of the directive. Similarly the two grounds which I have isolated from article 3 as justifying a refusal of registration are reproduced almost verbatim in s.8 of the Act which sets out the grounds for a refusal of registration.
Both of the relevant grounds for a refusal which I have identified and which are contained in article 3 of the directive and s.8 of the Act are subject to a proviso. It is that a trademark is not to be refused registration if it has in fact acquired a distinctive character as a result of the use made of it. This proviso is relied upon by the plaintiff as an alternative should the court be of the view that the slogans sought to be registered are devoid of distinctive character.
The Decisions Under Appeal
In each case registration was refused by the defendant because the slogans were considered to be devoid of any distinctive character within the meaning of s.8(1)(b) of the Act. Furthermore the defendant was not satisfied that the marks had acquired distinctiveness as a result of use.
The following reasons for arriving at the decisions in suit can be gleaned from the written decision in respect of each mark.
In the case of the slogan "TOP BREEDERS RECOMMEND IT" the defendant held that those words were four ordinary dictionary words which make up a slogan. The defendant accepted that a slogan might be registered as a Trade Mark but it had to be capable of performing the essential function of such, namely, to distinguish the goods or services of a particular undertaking and thus enable consumers to distinguish that undertaking's goods or services from those of its competitors. The slogan "TOP BREEDERS RECOMMEND IT" was held to be a statement of fact but one that could be validly made by other producers of dog food who wish to attract customers by claiming their product to be recommended by top breeders, The defendant held by reference to the decision of the Second Board of Appeal in the "BEAUTY IS NOT ABOUT LOOKING YOUNG BUT LOOKING GOOD" case, that the present slogan fell into the latter category of marks identified in that decision which are devoid of any distinctive character i.e. slogans that consist of common descriptive or desirable words or terms which competitors may wish to use to promote their products. The defendant also held that there was nothing imaginative or fanciful about the slogan.
The defendant was also of opinion that the evidence submitted in support of the case that the slogan had acquired distinctiveness through use was insufficient. Particular emphasis was placed upon the fact that the slogan had always been used in conjunction with another trade mark of the applicant within the same field of vision. There was no evidence of use of the slogan on its own. Although the defendant noted that the mark in suit was accepted for registration in the United Kingdom based on similar evidence of use, he regarded himself as not being bound by that decision and as he said had "chosen to be guided principally by the earlier decision of the Irish High Court". It is therefore clear that considerable weight was given by the defendant to the decision of Geoghegan J. to which I have alluded.
The reasoning in the case of the slogan "DEVELOPED WITH VETS. TOP BREEDERS RECOMMEND IT" is rather similar. The defendant accepted that the slogan might be registered as a trademark provided that it was capable of performing the essential functions of such a trademark. The first phrase was held to consist of three ordinary dictionary words, the word "vet" appearing in the Concise Oxford Dictionary as a colloquial term for veterinary surgeon. The defendant held this was a statement of fact in relation to the goods. The first phrase of the slogan was held to be a statement that could be validly made by other producers of the goods for which registration was sought. The second phrase, it was pointed out, consists of four ordinary dictionary words and is also a statement of fact. Again, it is one which could be validly made by other producers in the trade who wish to attract customers by claiming their products to be recommended by that group of people known as top breeders.
The defendant held that there was nothing imaginative or fanciful about either phrase in this slogan. The combination of words should be available to other producers in the trade to use in the honest promotion of their competing product. Accordingly each phrase was devoid of any distinctive character in relation to the goods.
Again the defendant held that there was no evidence before him to indicate that the mark proposed for registration had ever been used other than in conjunction with the Pedigree Chum trademark.
The defendant also held that the evidence submitted in support of the case that the slogan had acquired distinctiveness through use was insufficient. He was unable to accept that one and a half years use was sufficient. Again in this case considerable weight was given to the decision of Geoghegan J. and although the defendant was alive to the fact that variations of this mark were accepted for registration in the United Kingdom he chose to be guided principally by the earlier decision of the Irish High Court.
The plaintiff submits that the defendant was wrong in law in the decision which he reached and the reasoning by which he reached it in respect of each of the slogans.
Monopoly Rights
It is quite clear that very considerable reliance was placed by the defendant upon the earlier decision of this court given by Geoghegan J. to which I have referred. He took the view that in each case the slogans consisted of statements of fact which other traders might wish to use and therefore could not be regarded as distinctive. He was concerned (as was Geoghegan J.) to make certain that the plaintiff would not acquire any monopoly rights on these words.
The plaintiff argues that whilst that was a perfectly correct conclusion to come to under the term of the Trademarks Act, 1963 a fundamental change has been brought about by the provisions of the 1996 Act, the directive which underpins it and the jurisprudence which has developed on foot of it. This jurisprudence has developed subsequent to the decisions under appeal.
Whilst the defendant accepts that changes in the law have occurred they do not, it is submitted, have the wide ranging effects alleged by the plaintiff. Neither do they disturb the underlying philosophy or policy of not registering a mark which is incapable of distinguishing a trader's goods and are merely commonplace descriptions.
The plaintiff contends that the thinking which underpins the 1963 Act and the law of trademarks as exemplified in the decision of Geoghegan J. to the effect that a trademark applicant should not be given a monopoly over words which another trader might fairly wish to use has been entirely set aside by the directive and the subsequent decisions of the European Court. The plaintiff points out that article 6 of the directive (which is given effect to in Ireland by s.15 of the 1996 Act) provides that registration of a trademark does not entitle the proprietor to prohibit a third party from using in the course of trade indications concerning "the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of service or other characteristics of goods or services" provided that such use is in accordance with honest practices in industrial and commercial matters. This, it is said, represents a major change which has been confirmed by the European Court of Justice in Proctor & Gamble Company v. OHIM [2001] ECR 1-625. This case has come to be known as the BABY-DRY case.
In my view the plaintiff is correct in its assertion that a major change to traditional trademark law has been brought about by the directive, the Act and subsequent jurisprudence.
In the BABY-DRY case the European Court of Justice accepted - in the context of the equivalent provisions in the community trademark regulation (the terms of which are virtually identical to those of the directive) - the argument of the appellant that
"… the judgment delivered by the Court of First Instance was based on an outdated view of trademarks, according to which registration of a trademark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so that any signs or indications which are descriptive and need to be left free for trade use are by definition not capable of constituting trademarks.
Rather, the modern view underlying Regulation no. 40/94 excludes monopoly rights in signs or indications constituting trademarks, so that third parties are entitled to go on making normal use of them. Similarly, there is no category of signs or indications which can be deemed incapable of constituting trademarks in the abstract. The descriptiveness of a sign or an indication, like generic character, is only one aspect of the ground for refusing to register a sign or an indication for not being distinctive, and both notions - distinctiveness and not being solely descriptive - must be considered in the round to determine whether the sign or indication filed is capable of identifying the goods concerned as originating from a particular undertaking".
The above quotation is taken from the judgment of the court under the heading "Arguments of the Parties".
The findings of the court insofar as they are relevant read as follows
"35. Under article 7(1) of Regulation no. 40/94, trademarks are not to be registered if they are devoid of distinctive character (subparagraph (b)). Or if they consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service (subparagraph (c)).
36. Under article 12 of Regulation no. 40/94 the rights conferred by the trademark do not entitle the proprietor to prohibit a third party from using, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or the time of rendering the service, or other characteristics of the goods or service provided he uses them in accordance with honest practices in industrial or commercial matters.
37. It is clear from these two provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trademarks is, as both Proctor & Gamble and the OHIM acknowledge, to prevent registration as trademarks 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 fulfill 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 trademark 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 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 present 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 trademarks 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 trademark.
41. It is true that Article 7(2) of Regulation 40/94 states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. That provision, which was rightly cited at paragraph 24 of the contested judgment, implies that, if a combination of words is purely descriptive in one of the languages used in trade within the Community, that is sufficient to render it ineligible for registration as a Community trademark".
Paragraphs 37 and 38 make it clear that the European Court of Justice is of the view that it is only where the proposed trademark amounts to no more than the usual way of designating the relevant goods or their characteristics that it can be said to be devoid of distinctive character.
That approach seems to be further fortified later in the judgment where the court said
"42. In order to assess whether a word combination such as BABY-DRY is capable of distinctiveness, it is therefore necessary to put oneself in the shoes of an English-speaking consumer. From that point of view, and given that the goods concerned in this case are babies' nappies, the determination to be made depends on whether the word combination in question may be viewed as a normal way of referring to the goods or of representing the essential characteristics in common parlance".
If one applies that test in the instant case I am of opinion that the result is adverse to the defendant. The slogans "TOP BREEDERS RECOMMEND IT or DEVELOPED WITH VETS, TOP BREEDERS RECOMMEND IT" cannot be viewed as a normal way of referring to pet food. Neither do they represent the essential characteristics of pet food as a matter of every day common speech. The evidence is that no other manufacturer of pet food uses those slogans.
The plaintiff contends that the slogans here are similar to ones such as "LET YOUR FINGERS DO THE WALKING" which has been accepted for registration as a trademark in respect of telephone directories and "DON'T LEAVE HOME WITHOUT IT" which has been accepted for registration in respect of American Express credit or charge cards. These two examples were cited to the defendant but he distinguished them on the basis that it is possible for competitors of Golden Pages and American Express to find other combinations of words to convey the same idea or notion. It does not appear to me that he was correct in his determination having regard to the decision of the European Court in the BABY-DRY case. In determining whether or not to refuse to register a trademark worries or concerns about the impact on competitors do not appear to me to be appropriate matters for consideration having regard to this jurisprudence. Furthermore having regard to the provisions of s.15 of the 1996 Act it now seems clear that rivals of the plaintiff cannot be prevented from using the words in suit for descriptive or informative purposes rather than as a means of brand identification.
The approach of the European Court of Justice in the BABY-DRY has been followed by the Court of First Instance in Erpo Mobelwerk GmbH v. OHIM [2001] II ECR 1259. In that case the OHIM Board of Appeal refused an application to register as a trademark in respect of furniture the mark "DAS PRINZIP DER BEQUEMLICHKEIT". This phrase has been translated as "PRINCIPLE OF COMFORT". The grounds of refusal was that the slogan was devoid of any distinctive character in respect of furniture. The Court of First Instance said at paragraph 46 of its judgment as follows
"The dismissal, on the basis of article 7(1)(b) of Regulation no. 40/94, of the appeal brought before the Board of Appeal would have been justified only if it had been demonstrated that the combination of the words DAS PRINZIP DER … (the principle of) alone with a term designating a characteristic of the goods or services concerned is commonly used in business communications and, in particular, in advertising. The contested decision does not contain any finding to that effect and neither in its written pleadings nor at the hearing has the office asserted that such a usage exists".
In the present case there was no evidence that the slogans in suit are either commonly or at all used in advertising or otherwise by rival traders. If rival traders wish to do so in the future then they can avail themselves of the provisions of s.15 of the Act. The effect of that section is that registration of the proposed marks will not give the plaintiff monopoly rights in respect of the words used. All of this of course would be different if evidence had been adduced before the defendant to suggest that the slogans in question were actually used in common parlance in respect of pet food. If so then the defendant might well have reached a decision that the slogans were devoid of any distinctive character. However there was no such evidence. If anything there was evidence to the effect that the plaintiff had been active in the protection of the slogans even to the point of bringing proceedings in order to protect them.
In these circumstances I am of the view that insofar as the defendant's decision is inconsistent with the judgment of the European Court of Justice in the BABY-DRY case it cannot stand. I am furthermore of the view that insofar as it relied upon the earlier jurisprudence culminating in the decision of Geoghegan J. concerning one of the marks in suit the law has changed and that line of reasoning is no longer applicable.
The BABY DRY case quite clearly brought about considerable change in trademark law. Subsequent decisions to which reference was made in the course of argument do not appear to me to have altered or diluted the approach adopted by the European Court of Justice in it. Reliance was placed by the defendant on the judgment of the European Court of Justice of the 18th June, 2002 in the Phillips Electronics case. That was a reference for a preliminary ruling which was made to the European Court by the Court of Appeal in England. I do not read the judgment of the European Court as altering in any way the position which it took in the BABY DRY case.
An interesting analysis of the impact of the BABY DRY case on the registrability of descriptive trademarks is contained in an article published in the European Intellectual Property Law Review in 2002 authored by Tim Pfeiffer (2002) EIPR 373. That author considers the impact of the case and makes an assessment of how judicial bodies have acted and reacted both before and after it. He also attempts an evaluation of the implications of the decision on the test for distinctiveness. The article is confirmatory of the correctness of the submissions made by the plaintiff.
Lack of Imagination
In respect of each of the slogans in suit the defendant took the view that there was nothing imaginative or fanciful about them.
The plaintiff contends that the decision of the defendant in this regard has also been overtaken by a number of recent decisions of the European Court of First Instance which make it clear that a trademark cannot be held to lack distinctiveness merely because it lacks imagination or any element of originality. A number of cases are relied upon and I will consider them in turn. The first is the EASYBANK case [2001] ECR II 1259.
In this case the court held that the OHIM Board of Appeal was wrong to regard the trademark EASYBANK as lacking any distinctive character in respect of on-line banking services. The court said
"39. Insofar as, in the contested decision (paragraphs 27 and 18), the Board of Appeal further refers to the fact that the term EASYBANK, as a combination of current terms and in the absence of particular additional elements conferring upon it a distinctive character … is devoid … of any additional element of imagination and is neither unusual nor striking it is sufficient to point out that the absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking.
40. Far from setting up those latter terms as criteria for distinctiveness, article 7(1)(b) of Regulation no. 40/94 requires the examiner and, in appropriate cases, the Board of Appeal to examine - in the context of an a priori examination apart from any actual use of the sign for the purpose of article 7(3) of Regulation no. 40/94 - whether there appears to be no possibility that the sign in question may be capable of distinguishing, in the eyes of the public to which it is addressed, the products or services referred to from those of a different origin, where that public will be called upon to make its choice in commerce.
41. In this case the Board of Appeal did not carry out that examination.
42. Therefore this plea must also be accepted".
Reliance was also placed upon the Court of First Instance decision in the Principle of Comfort case. The Board of Appeal had held that that slogan was devoid of distinctive character on the grounds that it was not original in the context of furniture. The court said as follows in the course of its decision
"39. Article 7(1)(b) of Regulation no. 40/94 provides that trademarks which are devoid of any distinctive character are not to be registered.
40. The distinctive character of a sign must be assessed in relation to the goods or services in respect of which registration is sought.
41. In the present case, the Board of Appeal observed in paragraph 30 of the contested decision, that the word combination at issue is devoid of any distinctive character since it is understood by the customers targeted only as a reference to the kind and the quality … of the goods in question and not as a mark referring to the origin characterising the company of production. The Board of Appeal thus essentially deduced lack of distinctive character from the descriptiveness of the phrase claimed.
42. It was held above that the registration of DAS PRINZIP DER BEQUEMLICHKEIT could not be refused on the basis of article 7(1)(c) of Regulation no. 40/94. Consequently, the Board of Appeal's substantive reasoning in relation to article 7(1)(b) of Regulation no. 40/94 must be rejected, insofar as it based on the error found above.
43. Furthermore, the Board of Appeal again noted, in paragraph 30 of the contested decision, that DAS PRINZIP DER BEQUEMLICHKEIT was characterised by the lack of any additional element of imagination. In addition, the Office submitted in its response that, in order to be able to serve as marks, slogans must possess an additional element … of originality and that the term at issue had no such originality.
44. In that regard, it is clear from the case law of the Court of First Instance that lack of distinctiveness cannot be found because of lack of imagination or of an additional element of originality … Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign.
45. To the extent that the Board of Appeal, in paragraph 31 of the contested decision, again points out the lack of any conceptual tension which would create surprise and so make a striking impression, it must be stated that that point is really only a paraphrase of the Board of Appeal's finding of no additional element of imagination.
46. The dismissal, on the basis of Article 7(1)(b) of Regulation 40/94 of the appeal brought before the Board of Appeal would have been justified only if it had been demonstrated that the combination of the words Das Prinzip der … (the principle of) alone with a term designating a characteristic of the goods or services concerned is commonly used in business communications and, in particular, in advertising. The contested decision does not contain any finding to that effect and neither does its written pleadings nor at the hearing has the Office asserted that such a usage exists".
In my view the defendant was wrong to reject the slogans in question for registration on the basis that they lacked any fanciful or imaginative element having regard to the above.
Distinctiveness Acquired Through Use
In the light of the views which I have already expressed it is, strictly speaking, not necessary to consider this aspect of the matter but for the sake of completeness I propose to do so.
It is contended that the plaintiff is entitled to rely upon the extensive use of the slogans (as put in evidence before the defendant) so as to show that they have through such use acquired distinctiveness. Earlier in the judgment I summarised the evidence in this regard.
Reliance is placed upon the decision of the European Court of Justice in the Windsurfing case [1999] ECR I 2779.
At issue in that case was whether or not the geographic name Chiemsee had acquired sufficient distinctiveness through use so as to make it a fit subject to be registered as a trademark. In the course of its decision the European Court of Justice said
"44. The first point to note is that Article 3(3) of the Directive provides that a sign may, through use, acquire a distinctive character which it initially lacked and thus be registered as a trademark. It is therefore through the use made of it that the sign acquires the distinctive character which is a prerequisite for its registration.
45. Article 3(3) therefore constitutes a major exception to the rule laid down in Articles 3(1)(b), (c) and (d), whereby registration is to be refused in relation to trademarks which are devoid of any distinctive character, descriptive marks, and marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
46. Secondly, just as distinctive character is one of the general conditions for registering a trademark under Article 3(1)(b), distinctive character acquired through use means that the mark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods or other undertakings.
47. It follows that a geographic name may be registered as a trademark if, following the use which has been made of it, it has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Where that is the case, the geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trademark.
48. Windsurfing Chiemsee and the Commission are therefore right to assert that Article 3(3) does not permit any differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings.
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.
50. In that connection, regard must be had in particular to the specific nature of the geographical name in question. Indeed, where a geographical name is very well know, it can acquire distinctive character under Article 3(3) of the Directive only if there has been long standing and intensive use of the mark by the undertaking applying for registration. A fortiori, where a name is already familiar as an indication of geographical origin in relation to a certain category of goods, an undertaking applying for registration of the name in respect of goods in that category must show that the use of the mark - both long standing and intensive - is particularly well established".
Although this case ante-dated the decision of the European Court in the BABY DRY case the approach adopted in the paragraphs just quoted and in particular paragraph 48 seems to me to be consistent with the approach in BABY DRY.
Turning then to the evidence in the present case, in the light of what I have just quoted the following appears to be the position. Neither of the slogans are used by any other traders in the pet food market. They have however been used by the plaintiffs on advertising and packaging. In respect of the second of the slogans it is of course accepted that that use did not commence until 1995.
I am of opinion that when no other traders are using the mark and having regard to the level of sales which has been achieved in respect of product carrying the slogans, coupled with the amount of the advertising spend, these slogans have now become identified with the Pedigree Chum product.
The defendant commented that the slogans always appeared in the same field of vision as the PEDIGREE CHUM mark itself. In my view the plaintiff is correct when it contends that this strengthens rather than weakens its case that the slogans are associated with the plaintiff's product. Because these slogans have always appeared in combination with the trademark PEDIGREE CHUM they are it seems to me more likely to be associated by consumers with the Pedigree Chum product.
I think there is considerable force in the point made during the course of argument that if the defendant were correct in his decision on this aspect of the matter it would necessarily result in a whole range of slogans which are registered as trademarks having to be regarded as being improperly registered. The slogan "NO MORE TEARS" on Johnson and Johnson's baby shampoo product would not, on the defendant's line of reasoning in the present case, have been registrable as a trademark. That slogan has been used in conjunction with the Johnson's baby brand and has always appeared in the same field of vision as the 'Johnson's Baby Shampoo' logo. Likewise the slogan "TASTE OF THE EXOTIC" which has been registered as a trademark in conjunction with the 'Bounty' confectionary trademark would likewise be improperly registered.
In my view therefore, even if I am wrong in the opinion which I have expressed in the earlier part of the judgment, the defendant ought to have registered the slogans as ones which had acquired distinctiveness through use.
Conclusion
As is clear from the foregoing I have come to the conclusion that these appeals ought to be allowed.
My decision in this regard has a happy coincidence in the context of the Trademarks Directive which sought to approximate and harmonise the laws of Member States relating to trademarks. The trademark "TOP BREEDERS RECOMMEND IT" has been registered as a trademark in the United Kingdom as of the 31st October, 1994. That fact is by no means determinative of the issues in this case but the conclusion which I have reached results in there being no disparity between the way in which the slogan is treated in two adjoining jurisdictions which have to apply the same legal principles.
The order of the court will be that these appeals will be allowed. In allowing them I sympathise with the position of the defendant in that the bulk of the case law relied upon by the plaintiffs did not exist at the time of the his decisions. These cases and in particular the BABY DRY case have in my view changed the legal landscape from what it was at the time of the decisions under appeal.