Go Outdoors Ltd v Skechers USA Inc. II
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Rose,Mrs Justice Rose DBE |
| Judgment Date | 19 May 2015 |
| Neutral Citation | [2015] EWHC 1405 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: CH/2014/0331 |
| Date | 19 May 2015 |
[2015] EWHC 1405 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION (APPEAL FROM THE UNITED KINGDON INTELLECTUAL PROPERTY OFFICE, TRADE MARK REGISTRY)
The Rolls Building,
Fetter Lane,
London, EC4A 1NL
Mrs Justice Rose
Case No: CH/2014/0331
Simon Malynicz (instructed by DLA Piper) for the Applicant Jeremy Reed (instructed by D Young & Co) for the Respondent
Hearing date: 23 April 2015
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
The Applicant ('GO Outdoors') appeals against the decision dated 7 May 2014 of Mr George Salthouse, a Hearing Officer of the Intellectual Property Office ('the Decision'). In the Decision Mr Salthouse upheld one of the grounds on which the Respondent ('Skechers') opposed the proposed registration of two trade marks by GO Outdoors and rejected another ground of opposition. He therefore refused registration of the marks. GO Outdoors appeals against that refusal. Skechers have served a Respondent's notice arguing that his order should be upheld on the additional ground of opposition that he dismissed.
GO Outdoors is the United Kingdom's largest specialist retailer of camping equipment, tents, outdoor clothing and footwear. It was established in 1998 and now has 49 outlets across the country with about 1,500 employees. In the year to January 2014, it achieved total sales of over £170 million including sales online. Its shops are generally of the 'superstore' kind comprising large retail spaces. Skechers is a US based footwear manufacturer.
On 19 June 2012, GO Outdoors applied for two series trade marks, No 2625133 for GO WALKING and No 2625150 for GO RUNNING. Both applications relate to the words in non-stylised form and in one stylised form in a particular font like this:
GO WALKING GO Walking
GO RUNNING GO Running
The classes in respect of which the Hearing Officer considered the marks were Classes 18 (rucksacks and bags) and 35 (retail services connected with the sale of a wide range of clothes, accessories and other goods) for the GO WALKING and Class 35 in respect of the GO RUNNING mark. There is no dispute that these were marks which GO Outdoors had been using over many years in signage outside and inside its stores as well as in marketing literature and radio and TV advertising throughout the UK. On 18 February 2012, following publication of the two trade marks, Skechers brought an opposition based on section 3(1)(b) and (c) of the Trade Marks Act 1994. By the time of the hearing before the Hearing Officer, the objection was focused on the registration in respect of part of Class 35, namely
"Retail services connected with the sale of protective clothing for use in sporting and outdoor pursuits activities, insulated/protective gloves, clothing, footwear, headgear, thermal clothing, jackets, trousers, over trousers, breeches, sweatshirts, knitwear, shirts, balaclavas, mitts, gloves, thermal underwear, socks, gaiters, boots, sporting articles for wear adapted for use in a specific sport of outdoor pursuits (other than helmets)
Electronic shopping retail services connected with the sale of protective clothing for use in sporting and outdoor pursuits activities, insulated/protective gloves, clothing, footwear, headgear, thermal clothing, jackets, trousers, over trousers, breeches, sweatshirts, knit wear, shirts, balaclavas, mitts, gloves, thermal underwear, socks, gaiters, boots, sporting articles for wear adapted for use in a specific sport of outdoor pursuits (other than helmets)"
The legislation and case law on its interpretation
Sections 3(1)(b) and (c) of the Trade Marks Act 1994 read as follows so far as relevant:
"The following shall not be registered —
(a) ………
(b) trade marks which are devoid of any distinctive character,
(c) trade marks 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,
(d) ……..
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."
Section 3(1)(c) raises the question whether a trade mark is descriptive or not. If a trade mark is descriptive then it cannot be registered. Section 3(1)(b) raises the issue whether a trade mark is distinctive or not; it must be distinctive in order to be registered. Much of the case law on the application of these two tests is from the Court of Justice of the European Union in respect of the parallel provisions of the Trade Mark Regulation, Council Regulation (EC) 40/94 on the Community Trade Mark, 1 ( Official Journal L11 14 January 1994 p 1). Article 7 of the Trade Mark Regulation provides:
"7 (1). The following shall not be registered:
(a) …
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist 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;
…
(2) Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.
(3) Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it."
The relationship between the distinctiveness test and the descriptiveness test was considered in Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) [2011] ECR I-1541 (' Technopol'). The Court of Justice stated there (para [46]) that if signs are descriptive for the purposes of article 7(1)(c) of Regulation 40/94 they are also necessarily devoid of any distinctive character for the purposes of article 7(1)(b) of that Regulation. But article 7(1)(b) goes wider than article 7(1)(c) because a sign may fail to be distinctive for some reason other than by being descriptive. The Technopol case also considered the purpose of the descriptiveness test in article 7(1)(c). In that case Technopol wanted to register the sign '1000' as a Community trade mark in respect of the class of goods 'brochures, periodicals including periodicals containing crossword puzzles and rebus puzzles, newspapers'. The examiner refused the registration on the basis of article 7(1)(b) and (c) on the grounds that the sign did not have any distinctive character and that it was a description of the contents or other features of the goods concerned. The Court stated that when examining the parties' arguments, due account must be taken of the objective pursued by article 7(1)(c) and that each ground of refusal must be interpreted in the light of the general interest underlying it. As to what general interest underlies article 7(1)(c) the Court said (citations omitted):
"37. The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services … .
38 With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes (…).
39 By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question (…). It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration (…).
40 It follows from the foregoing that the application of Article 7(1)(c) of Regulation No 40/94 does not require the sign at issue to be the usual means of designation."
The Court then considered the overlap between (b) and (c) and stated that it was important to limit the application of (c) to the situations specifically covered by that ground:
"50 The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland, paragraph 56)."
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Decision Nº O/106/16 from Intellectual Property Office - (Trade market), 2 March 2016
...requirements for a sign to be able to function as a trade mark (see, e.g. the recent case of Go Outdoors Ltd v Sketchers USA Inc 11 [2015] EWHC 1405 (Ch) at para [24]); - The mark required a degree of ‘mental agility or unpacking’ in order for its meaning to be discerned; - In any event, a ......
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No Go - The UK High Court Finds That Trade Mark Applications For GO RUNNING And GO WALKING Lack Distinctive Character
...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 ......