What is the background to this case?

This case Go Outdoors Ltd v Skechers USA Inc II [2015] EWHC 1405 (Ch) concerns an appeal by GO Outdoors Limited (GOL), a specialist retailer of camping equipment, tents, outdoor clothing and footwear, against a decision of the UK Intellectual Property Office (IPO) to refuse registration of two trade mark applications that it had filed in June 2012 in respect of the marks GO WALKING and GO RUNNING:

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By the time of the hearing, the dispute focussed on the registrability of the marks in class 35 (namely in respect of retail services and electronic retail services connected with the sale of protective clothing for use in various sporting and outdoor pursuits activities).

Skechers USA Inc II (Skechers), opposed GOL’s trade mark applications based on sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994.

S.3(1)(b) provides that trade marks which are devoid of distinctive character shall not be registered, and s.3(1)(c) provides that trade marks which are descriptive (i.e. which consist exclusively of signs or indications which may serve, in trade, to designate 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) shall not be registered. The only exception to such restrictions is where, before the date for registration, the trade mark has acquired a distinctive character as a result of the use made of it.

The IPO was not convinced by Skechers’ attack based on s.3(1)(c) (that the trade marks were descriptive) and held that, prima facie, GO RUNNING and GO WALKING when used in relation to the retailing of running or walking shoes or clothing did not create a descriptive impression of the retailing service. However, the IPO upheld Skechers’ case under s.3(1)(b) and refused GOL’s trade mark applications on the basis that they were devoid of distinctive character, because it considered that the marks were a normal way of offering shoes and clothing for use when running or walking and that they did not contain any degree of originality, nor require any interpretation, and were not indicative of one particular undertaking.

On what basis did GOL bring an appeal against the decision of the Hearing Officer of the Intellectual Property Office (IPO)?

GOL appealed to the High Court to overturn the IPO’s decision in relation to s.3(1)(b), and Skechers cross-appealed, arguing that the applications should have been disallowed on the basis s.3(1)(c).

GOL argued that the IPO had made three errors in reaching its decision that the marks were not registrable pursuant to section 3(1)(b).

Firstly, it argued that the IPO had not applied the correct legal test when considering the inherent distinctiveness of the marks. Given that GO RUNNING and GO WALKING are slogans, the IPO had considered the European Court of Justice’s decision in Audi (which concerned the slogan VORSPRUNG DÜRCH TECHNIK).  GOL argued that the IPO had wrongly treated that case as deciding that slogans cannot be distinctive unless they have originality or resonance, when in fact there is no higher requirement for a slogan to be distinctive than there is for any other form of mark.

Secondly, it argued that the IPO’s decision in respect of s.3(1)(b) was inconsistent with its findings in relation to descriptiveness pursuant to s.3(1)(c).

Thirdly, it argued that the IPO failed to give proposer weight to the evidence submitted by GOL to show the use made of GO WALKING and GO RUNNING over the years.

What is the role of the High Court in appeals against an IPO decision?

The High Court made clear that the court’s role in an appeal is not to retry the case, but rather to review the judgment of the lower court to see if it is wrong. Where the judge has been called upon to make a value judgment or multi-factorial assessment, an appeal court must be especially cautious about interfering with the decision. The reason for this is that the assessment will have been based on evidence before the judge at trial but not before the appeal court.

There is authority from the House of Lords (as it was previously known) which indicates that ordinary courts should approach the decision of an expert tribunal with caution. Accordingly, in order to persuade the High Court to overturn the findings of the IPO, it will be necessary to demonstrate that there has been a clear error of law.

What did the High Court decide?

The Court did not accept that the IPO had made errors of law in reaching its finding in respect of a lack of distinctive character pursuant to s.3(1)(b).

In respect of the first ground of appeal, it held that the IPO had not applied the wrong test. In reaching its decision, the IPO had taken into account those paragraphs from Audi which made it clear that there was no additional requirement for slogans to be original or resonant, as compared to other marks. Whilst the IPO had addressed the question of whether GO WALKING and GO RUNNING exhibited the same characteristics as VORSPRUNG DÜRCH TECHNIK (which was held to exhibit originality and resonance and to require a measure of interpretation on the part of the public) and concluded that they did not, it did not stop there. It went on to consider whether the marks were, nevertheless, distinctive. It had not fallen into error in finally concluding that they were simply non-distinctive exhortations to “go walking” or “go running”, which did not contain any degree of originality, did not require any interpretation and were not indicative of any one particular undertaking.

On the second ground of appeal, the Court did not find there to be any inconsistency between the IPO’s treatment of sections 3(1)(b) and 3(1)(c) because the findings were in answer to very different questions. The question to be answered in relation to s.3(1)(b) was whether the public would recognise the marks GO RUNNING and GO WALKING as  indications of origin either because they were inherently distinctive or because they had acquired distinctiveness through use, whereas the question to be answered in relation to s.3(1)(c) was whether they were descriptive of the retail services for which GOL was seeking registration. The IPO found that the terms were not distinctive because the public would perceive them merely as internal signposting which showed where the goods were to be found, rather than as a badge of origin. This was not the same as a finding that the terms were descriptive of the relevant retail services.

Finally, the Court did not consider that the IPO could be criticised for failing to carry out a proper examination of the evidence. It held that the evidence had been properly referred to in the judgment and that there was nothing wrong with the conclusion that it did not show the kind of use which would cause the marks to acquire distinctiveness.

The Court also addressed the IPO’s decision in respect of s.3(1)(b), even though it was not strictly necessary to do so. In explaining its decision that the marks were not descriptive, the IPO indicated that the addition of the word “go” to “walking” and “running” altered their state from being a description of an activity to being an order/exhortation to carry out the activity. The Court held that the IPO’s decision on descriptiveness was clearly correct because the phrases GO RUNNING and GO WALKING did not describe the activity of shopping for outdoor clothes or shoes and did not comprise a sign or indication which might designate characteristics of that service.

What can prospective trade mark applicants learn from this decision?

It is clear from this decision that sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994 should not be treated as interchangeable and that they will be addressed separately by the IPO and the Court. Therefore, for absolute certainty it is always best to select a mark or brand name which is unrelated to the goods and services in question, and definitely not descriptive of the commercial activity or product in question.

If it becomes necessary for a trade mark applicant to prove distinctive character through use, this case provides some hints as to the types of evidence which will assist and those which will not. For example, the fact that the terms GO RUNNING and GO WALKING were displayed in large lettering on the outside of GOL’s stores was considered to indicate the range of goods available within the stores, rather than to act as a mark of origin. This acts as a helpful reminder to brand owners to ensure that their evidence of acquired distinctiveness is focussed and on point.