Procter & Gamble Ltd v Registrar of Trade Marks
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE PETER GIBSON,LORD JUSTICE ROBERT WALKER,LORD JUSTICE TUCKEY |
| Judgment Date | 29 January 1999 |
| Judgment citation (vLex) | [1999] EWCA Civ J0129-12 |
| Court | Court of Appeal (Civil Division) |
| Date | 29 January 1999 |
| Docket Number | CHANF 97/1203/3 |
[1999] EWCA Civ J0129-12
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR JUSTICE CHADWICK)
Royal Courts of Justice
Strand
London W2A 2LL
Lord Justice Peter Gibson
Lord Justice Robert Walker
Lord Justice Tuckey
CHANF 97/1203/3
MR CHRISTOPHER MORCOM QC and MR JAMES GRAHAM (instructed by the legal department of Procter & Gamble) appeared on behalf of the Appellant.
MR DANIEL ALEXANDER (instructed by The Treasury Solicitor) appeared on behalf of the Respondent.
Lord Justice Robert Walker will give the first judgment.
This is an appeal from an order of Chadwick J made on 25 July 1997, dismissing an appeal under s. 76 of the Trade Marks Act 1994 ("the 1994 Act"). The appellant Procter & Gamble Ltd ("Procter & Gamble") contended that the Comptroller-General of Patents, Designs and Trade Marks ("the Registrar") was wrong to refuse three applications for registration of trade marks made by Procter & Gamble. The applications were refused following hearings before the Registrar's hearing officer, Ms Virginia Douglas, whose written decisions on the three applications were all given on 27 February 1996.
The statutory law as to registration of trade marks goes back to 1875 but it is common ground that the 1994 Act marks an important departure. Authorities decided by reference to earlier statutes—in particular the Trade Marks Act 1905 ("the 1905 Act" and the Trade Marks Act 1938 ("the 1938 Act")—may no longer be apposite. The 1994 Act is not a consolidating Act. It was passed in order to give effect to the Trade Marks Directive of the Council of what was then the European Economic Community (1989/1041 EEC). It must be construed in a manner consistent with its community origins and purposes.
Part I of the 1994 Act deals with registered trademarks. Section 1(1) defines 'trademark' as
"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."
Section 2 provides that a registered trade mark is a property right. Section 3 sets out the grounds on which registration must be refused. Subsection (1) alone is relevant to this appeal—
"(1)The following shall not be registered—
(a)signs which do not satisfy the requirements of section 1(1),
(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)trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bone fide and established practices of the trade:
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."
The applications by Procter & Gamble have been refused on the ground the subject-matter of each application is devoid of any distinctive character. A further objection under s. 3(1)(c) was not pursued.
Section 10 of the 1994 Act explains what amounts to infringement of a registered trade mark. Section 13 provides that an applicant for registration may disclaim the right to the exclusive use of any specified element of the mark, or agree to registration subject to a specified limitation. It is common ground that that may include a limitation as to colour. The Registrar himself may not under the 1994 Act take the initiative in imposing a disclaimer or limitation, as he could under the previous law.
The use in the 1994 Act of the word 'distinctive' is not new in trade mark legislation. It played a very important part in both the 1905 Act and the 1938 Act. But in those statutes it was defined. By contrast there is no definition of 'distinctive' in the 1994 Act, either in the same terms or in different terms. Mr Christopher Morcom QC (appearing with Mr James Graham for Procter & Gamble) has submitted that the hearing officer and the Judge both erred in construing 'distinctive' in accordance with the old law, and in particular in having regard to guidance given by Lord Parker in his speech in the well-known case of W and G du Cros' application (1913) 30 RPC 660, 672. But before going further into counsel's submissions I must summarise the facts as to Procter & Gamble's applications.
The procedure under the 1994 Act is conveniently summarised by Mr Geoffrey Hobbs QC in the Eurolamb case [1997] RPC 279, 288. That passage correctly states that the Registrar no longer has a discretion but has to make a judgment, yes or no. It is doubtful whether it helps to discuss the judgment which the Registrar has to make in terms of burden of proof.
Each of the applications was for registration of a three-dimensional bottle as a mark in class 3 (polishing, scouring and abrasive preparations; detergents and soaps; bleaching preparations). The subject-matter of each application can be described by reference to three elements (shape of bottle, label and colours) although it is common ground that the impact of all three component elements must be assessed together. The shape of all three bottles is the same and is in the words of the hearing officer,
"typical of the containers in which countless household preparations for cleaning floors, windows, kitchen and bathroom surfaces and the like are commonly sold. It may be that such shapes have evolved in order to prevent containers slipping out of soapy hands. The cap is of a kind commonly found on such containers and is of a size and shape which would enable it to serve as a measure for the liquid within."
The feature of the bottle shape to which she was referring was a horizontal corrugated effect just below the shoulders of the bottle.
The hearing officer's decisions then referred to the labels. The labels shown in the applications were unusual in that they deliberately did not include any legible wording or lettering. Some wording was "ghosted"—that is, the illustration faintly depicted where it would appear—but it was not part of the subject-matter of the applications. The hearing officer's decisions recorded the explanation given to her during the hearing,
"The object was to secure protection against "lookalikes", that is to say products which imitated the general appearance of the applicant's product in such a way that a purchaser might wrongly assume connection, either as to origin or to quality."
What the three labels did show was (in the first case) a chequerboard design suggesting a kitchen or bathroom floor, with three star devices suggesting sparkling cleanliness; (in the second case) kitchen units with a single star device; and (in the third case) a handbasin, part of a bath and bathroom tiles with three star devices.
The colours used were (for the floor label) a yellow bottle with a transparent top and a green, red, yellow and white label; (for the kitchen units label) a red or orange bottle with a blue top and a green, red, yellow and white label; and (for the bathroom label) a blue bottle with a darker blue top and a dark blue, red and white label. I say that the second bottle is red or orange because the application form TM 3 used the word 'orange' but the hearing officer described it as 'bright red' and the coloured picture in the appeal bundle is rose-red, not orange. However little turns on that beyond the fact that the hearing officer referred to the subject-matter of the applications using "bold primary colours" such as "are invariably used on containers for household cleaning preparations." Each application made clear that there was to be a limitation to the specified colours.
The 'ghosting' of the labels lies at the heart of this appeal. Procter & Gamble want to go beyond the registration of a particular name or device and to achieve registration for what is often (especially in the context of passing-off cases) referred to as "get-up". That is a convenient (though imprecise) expression for the characteristic style of a product which may be produced by the use of colouring, typography, materials, finishing and all the other elements—apart from the text itself—that go into modern commercial design. That is acknowledged by Mr Morcom in his written and oral submissions. Indeed it is what leads him to submit that this is an important case. Like many other leading manufacturers his clients do not welcome "lookalikes" and they would like to be able to curb them by registration under the 1994 Act rather than by the probably more arduous process of a passing-off action.
Procter and Gamble did not adduce evidence before the hearing officer that the "get-up" shown in the three applications has acquired any special distinctiveness as a result of use in the market. The proviso to s. 3(1) of the 1994 Act is not therefore in point. Whether or not the designs are "devoid of any distinctive character" must be decided by reference to the designs themselves, not by reference to any particular marketing experience (the distinction neatly epitomised as "nature" and "nurture" by Mr Geoffrey Hobbs QC in AD2000 Trade Mark [1997] RPC 168, 174). Mr...
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