Nichols Plc's Trade Mark Application (No.2241892)

JurisdictionEngland & Wales
CourtChancery Division
JudgeMr Justice Jacob
Judgment Date23 Jul 2002
Neutral Citation[2002] EWHC 1424 (Ch)
Docket NumberCase No: CH 2002 APP 120

[2002] EWHC 1424 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

The Honourable Mr Justice Jacob

Case No: CH 2002 APP 120

In the Matter of the Trade Marks Act 1994
And in the Matter of Trade Mark Application No 2,241,892 in the Name of Nichols Plc

Christopher Morcom QC (instructed by DLA) for the Appellant

Daniel Alexander (instructed by Treasury Solicitor) for the Respondent

Hearing dates: 13 June 2002

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 HON MR JUSTICE JACOB

Mr Justice Jacob

Mr Justice Jacob

1

This is an appeal from a decision dated 11 May 2001 of the UK Trade Marks Registry. As soon as I read the papers I realised this case involved a difficult question of principle and as such had to be referred to the European Court of Justice. The parties have asked me to state my reasons for making the reference but not to go so far as to provide my own provisional answer.

2

The appellant is a company called Nichols Plc. It has applications to register the word mark "Nichols" for ranges of goods in classes 29, 30, 32. The goods are various food and drink items such as might be supplied through vending machines. The applications were "bare" applications; that is to say they were unsupported by any evidence that the mark had acquired any distinctiveness by use. The appellants say such evidence is unnecessary, that the word "Nichols" should, without more, be registrable.

3

The United Kingdom Registry takes the view that the registration of names, and particularly of common surnames alone, should be considered carefully to ensure that unfair advantage is not given to the first applicant for such a name. It has a practice in relation to these, set out in a circular called PAC 6/00. This is annexed to this judgment. Broadly the position is that the commoner the name the less willing the Registry is to accept the application for registration without proof that it is has in fact become distinctive. The question also turns on the goods or services concerned—how many people having the name (or a similar name) might be affected by the registration is a material matter. Thus, in this case, an application in class 9 for vending machines was accepted without proof of use, the reasoning being that only a few people trade in such specialised goods. The Registry is particularly wary in the case of services commonly carried on by individuals. Thus, for instance, registration of "Smith" for "medical services", may well cause difficulty for many a Dr Smith or indeed Dr Schmidt. Ultimately this case poses the question of whether the registration of a common name as a trade mark is to be granted on a "first come first served" basis or whether there are wider, public interest, considerations involved.

4

Art. 2 of the Trade Marks Directive says that "a trade mark may consist of any sign … capable of distinguishing the goods or services of one undertaking from those of other undertakings."

5

Art. 3.1 then provides:

"1. The following shall not be registered, or if registered, shall be liable to be declared invalid:

(a) Signs which cannot constitute a trade mark;

(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 a rendering of the service, or other characteristics of the goods or service;

(d) Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade."

…….

(g) Trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographic origin of the goods or service."

The Directive permits registration of a mark falling within paragraph 1(b), (c) or (d) if it is distinctive in fact. Article 3(3) says:

"A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character".

The real question is whether a fairly common surname should be regarded as "devoid of any distinctive character" unless and until it has acquired a distinctive character following use.

6

The problem with a common surname particularly is that such a mark, until it has distinctiveness acquired by use, does not really indicate goods as coming from a particular undertaking. Until the mark is known and established, all that one can say is it indicates that the goods come from a member of a large class having that name. In the case of services the position is likely to be even sharper—any of a myriad of Dr Smith's could be the provider of a medical service.

7

Now this may not matter—after all even when first used the mark is some sort of indication of origin. The applicants may ask "what more would use establish?" The public would now recognise the name as a brand—but that is what they would do when they first saw the mark used. And they would be none the wiser as to which Nichols was actually the source. So use can make no real difference. A possible answer to this argument is this: that use showing the mark is regarded as a trade mark also shows that the mark has, by use, already foreclosed the position for others of the same or a similar name. In this connection it is worth remembering that laws of unfair competition, independently of rights given by trade mark registration, probably will protect a name which has become established as a trade mark.

8

It must also be borne mind that a registration confers a monopoly not merely of use of the word as registered for the goods or services of the registration. It extends to confusingly similar words and to similar goods (see Art. 5.(1)(b)). In the present case the registration would cover variants of the common surname Nichols, such as Nicholls and Nichol. There are nearly 500 listings under that name in the London telephone book alone. If the mark applied for had been Smith, then the problem would be all the larger—there are over...

To continue reading

Request your trial
3 cases
  • Evegate Publishing Ltd v Newsquest Media (Southern) Ltd
    • United Kingdom
    • Chancery Division
    • 10 July 2013
    ...ambit and is in accordance with honest practices in commercial matters. 212 As Jacob J stated in Nichols Plc's Trade Mark Application [2002] EWHC 1424 (Ch) [2003] R.P.C. 16: "The problem with saying "registration will not harm the public: if a third party wants to use the mark d......
  • Courts (Singapore) Pte Ltd v Big Box Corporation Pte Ltd
    • Singapore
    • High Court (Singapore)
    • 5 April 2018
    ...Kline Beecham plc [1999] FSR 491 (refd) Nichols plc v Registrar of Trade Marks [2005] RPC 12 (refd) Nichols plc's Trade Mark Application [2003] RPC 16 (refd) Nutricia International BV v Société des Produits Nestlé SA [2009] SGIPOS 6 (refd) Polo/Lauren Co LP v United States Polo Association ......
  • Decision Nº O/005/04 from Intellectual Property Office - (Trade market), 7 January 2004
    • United Kingdom
    • Intellectual Property Office (United Kingdom)
    • 7 January 2004
    ...character through use is currently the subject of a reference to the European Court of Justice in Nichols plc’s trade Mark application [2002] EWHC 1424(Ch). The matter arose there in the context of registrability on absolute grounds. As the opponents’ marks here have achieved registration I......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT