David West Trading As Eastenders v Fuller Smith and Turner Plc: CA 31 Jan 2003

The appellant sought a declaration of invalidity as regards the defendant’s registered mark ‘ESB’. It was claimed to have come to be used as a general designation of certain kinds of beer.
Held: The Philips decision appeared to supercede the Bach Flower case insofar as it looked at the interrelationship of the two subsections 1(1) and 3(1)(a). Those subsections could not be read to create an additional test of distinctivess over and above subsections 3(1)(b) to 3(1)(d). Where a sign is not inherently distinctive, but became so by use, whether it was outside sections 3910(b) to 3(1)(d) remained that of the average consumer (Bach), and if it did pass that test, then it satisfied also 1(1) and 3(1)(a), and was registerable. A trade mark can be distinctive and simultaneously convey a description of the goods.


Mr Justice Pumfrey, Lord Justice Schiemann, Lady Justice Arden


Times 12-Feb-2003, [2003] FSR 44, [2003] EWCA Civ 429


Bailii, Bailii


Trade Marks Act 1995 1(1) 3(1)(a)


England and Wales


CitedKoninklijke Philips Electronics NV v Remington Consumer Products Ltd ECJ 18-Jun-2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the . .
CitedBach Flower Remedies Ltd v Healing Herbs Ltd CA 21-Oct-1999
The originator of ‘Bach Flower Remedies’ had distributed them widely, and encouraged the use of the term as a general descriptive remedies. After the plaintiff had registered the names as trade marks, the respondent challenged the registration, and . .

Cited by:

CitedDyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
CitedKoninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 07 June 2022; Ref: scu.179021