The Intellectual Property Enterprise Court has rejected a supermarket chain’s application for summary judgment on its claim that a trade mark it was accused of infringing was invalid.
A company claimed that the supermarket chain had infringed a trade mark it held. The mark was registered for goods and services including specified foods and drinks, and was described in the registration as a gold oval with embossed writing, with black and gold colours. It was common ground that the supermarket chain had sold goods bearing a sign identical to the mark, and that these were goods in respect of which the mark was registered.
The supermarket chain brought a counterclaim for a declaration of invalidity. It alleged that the registration of the mark did not conform to Sections 1(1) and 3(1) of the Trade Marks Act 1994, and that it should be declared invalid pursuant to Section 47(1) of the Act. It sought summary judgment on its counterclaim.
The Court considered a wealth of domestic and EU case law. It noted that Section 1(1) requires that a trade mark be a sign capable of being represented in a manner which enables the registrar and the public to determine the clear and precise subject matter of the protection afforded. It must also be capable of distinguishing between goods or services of different undertakings.
The supermarket chain argued that the mark lacked clarity and precision. Its arguments pointed to inconsistencies between the visual representation of the mark and the written description, such as the fact that other elements of the mark were embossed although the description referred only to the writing being embossed. It also alleged that the mark’s ambiguity led to a multitude of forms, such that it could not be satisfactorily identified.
However, the Court found that, although other parts of the mark were embossed, the embossing effect would be understood to be of principal significance in relation to the writing. An argument that this nonetheless left the mark ambiguous, due to uncertainty as to whether other parts of it should appear embossed or not, was rejected, the Court observing that that argument suggested that a written description must always describe what is shown in the visual representation in every particular. As there was no ambiguity, there were no alternative forms.
The supermarket chain pointed out that there was no true black on the mark. However, the Court considered that it would be understood that the references to black referred to the dark shadows used to create the embossed effect. The Court also found that the absence of precise colour hues did not mean that the mark had multiple forms.
The Court concluded that the mark, at the time it was registered, satisfied the requirements of Section 1(1) and had not been registered in breach of Section 3(1). It had therefore been validly registered.