West (t/a Eastenders) v Fuller Smith & Turner Plc

A trade mark may possess distinctive character even though it also conveys a descriptive meaning. Sections 1(1) and 3(1)(a) of the Trade Marks Act 1994 impose no distinctiveness requirement separate from sections 3(1)(b)–(d).

For partial revocation through non-use, the court must identify the use actually made and formulate a fair specification reflecting the particular trade and the description which the average consumer would give that use. A specification need not be confined to the narrowest product variant, but it should not preserve protection for a commercially distinct and identifiable category in which the mark has not been used.

Fuller Smith & Turner Plc registered “E.S.B.” for beers. David West challenged the registration under the absolute grounds in section 3(1)(b)–(d) of the Trade Marks Act 1994, contending that the initials were descriptive or customary for extra special or extra strong bitter. He also sought partial revocation because the mark had been used only for bitter.

A deputy judge of the Chancery Division rejected the invalidity challenge but revoked the registration for all goods except bitter beers, with effect from 21 September 1995. West appealed against the rejection of invalidity. Fullers cross-appealed against partial revocation. The central questions were whether the initials possessed distinctive character and how the specification should fairly reflect the proven use.

1. Appeal and cross-appeal dismissed. Pumfrey J delivered the principal judgment. Arden LJ agreed and gave additional reasons on distinctiveness. Schiemann LJ agreed with both judgments.

2. The initials “E.S.B.” were not devoid of distinctive character. A weak mark does not cease to be distinctive merely because a stronger mark would make a greater impact. The deputy judge was entitled to find that, by the registration date, the average consumer understood the initials as identifying Fullers’ beer. A mark may convey trade origin while simultaneously describing characteristics of the goods.

3. Section 3(1)(c) of the Trade Marks Act 1994 does not create a high threshold for registration. The words “exclusively” and “devoid of any” must be given effect. Indirect, ambiguous or suggestive connotations do not necessarily make a mark exclusively descriptive. The availability of the descriptive-use defence under section 11 is material to the scope of the prohibition. The finding of distinctive character therefore defeated the section 3(1)(c) challenge, although the initials had a descriptive connotation for some consumers.

4. The principal ground in Healing Herbs Ltd v Bach Flower Remedies Ltd [2000] RPC 513 could not stand with the subsequent decision in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, Case C-299/99. Sections 1(1) and 3(1)(a) impose no distinctiveness requirement separate from sections 3(1)(b)–(d) and the acquired-distinctiveness provisions. The Bach decision remained unaffected concerning the average-consumer test and the usefulness of survey evidence.

5. The section 3(1)(d) issue required a multifactorial assessment of the evidence about customary language and trade practice. Appellate caution was appropriate. No error was shown in the finding that customary use of “Extra Special/Strong Bitter” did not justify inferring customary use of the initials.

6. For partial revocation under section 46(5), the court must identify the actual use, examine the nature of the trade and choose a fair description from the standpoint of the reasonably informed average consumer. The deputy judge had applied that approach. His findings that lager and bitter were commercially distinct, attracted largely separate consumers and commonly bore different marks justified restricting the specification to “bitter beer”.

1. Court of Appeal (Civil Division): The appeal and cross-appeal were dismissed by [2003] EWCA Civ 48.
2. High Court, Chancery Division: Mr Christopher Floyd QC, sitting as a deputy judge, rejected the challenge to the validity of the mark but revoked it for all goods except bitter beers. No citation is stated.