Two particular points for brand owners to take away from the decision:
- If faced with an invalidity challenge on the grounds of s3(1)(b) or (c) of the Trade Marks Act 1994 (“TMA”) i.e. the mark is devoid of distinctive character and/ or for example it designates a characteristic of the goods, you can assert acquired distinctiveness even if you are using your mark in a form different to the registered form, so long as the use does not differ in relation to the distinctive elements of the mark. This ruling in effect re-writes the statute, giving brand owners the same get out of jail free card for use of registered marks in an altered form as provided for explicitly in the statute in relation to revocation under s46(2) TMA.
- If you are trying to prove actual confusion in relation to a trade mark infringement action – think about obtaining consumer evidence. While it may not be accepted as positively proving actual confusion it can play an important role in preventing a defendant arguing that there was no evidence of actual confusion.
Other issues the case touches on include series marks, trade mark classification and specifications, the “without due cause” element of the 10(3)TMA, slogans and use of part of a mark, the list goes on.
The case is well worth a read.