Dyson Ltd. v The Registrar of Trade Marks

An appeal from a trade mark registration decision under section 3 of the Trade Marks Act 1994 will ordinarily proceed by way of review. A rehearing remains available where the interests of justice require it.

Sections 3(1)(a) and 3(1)(b) apply a single test of distinctiveness: whether the sign is capable of distinguishing the goods of one undertaking from those of another. Under section 3(1)(c), a sign which is a physical feature of the goods must designate a characteristic of the goods themselves, not merely a component. Novelty alone does not create registrability. A product feature must convey trade mark significance, rather than merely indicate function or a new type of product. Acquired distinctiveness requires recognition as a badge or guarantee of origin.

Dyson appealed against a hearing officer’s refusal to register two marks representing a transparent collection bin forming part of a vacuum cleaner. The Registrar had objected under sections 3(1)(a)–(c) of the Trade Marks Act 1994. The hearing officer rejected the application and found that acquired distinctiveness had not been established.

The appeal raised issues concerning the proper appellate approach, the relationship between sections 3(1)(a) and 3(1)(b), descriptiveness, inherent distinctiveness, and acquired distinctiveness. The court dismissed the challenges to inherent distinctiveness, but referred a question concerning the possible effect of a de facto monopoly on acquired distinctiveness to the Court of Justice.

1. Appeal procedure. The appeal was ordinarily to be dealt with by way of review under CPR 52.11. Article 6 did not require a rehearing in every appeal from an ex parte decision. A rehearing could be ordered where justice required it, but review was the norm in ordinary section 3 appeals. The expertise of hearing officers and the nature of the evidence justified restraint, subject to intervention for a material error of principle or plainly wrong findings.
2. Single distinctiveness test. The effect of the decisions in Koninklijke Electronics NV v Remington Consumer Products Limited and Philips v Remington was that sections 1(1), 3(1)(a) and 3(1)(b) imposed the same standard. The question was whether the sign could distinguish the goods of one undertaking from those of another and operate as a badge of origin.
3. Descriptiveness and functionality. Functionality could be relevant to distinctiveness, but section 3(1)(c) required the relevant function to be a characteristic of the goods themselves. The transparent bin indicated that the cleaner was bagless. It therefore designated the kind of goods, rather than their commercial origin. Its novelty did not prevent the sign from being descriptive or justify a monopoly over transparent materials which other manufacturers might need to use.
4. Inherent distinctiveness. The assessment was made by reference to the presumed expectations of the average consumer at the relevant date, disregarding prior education by the proprietor. The evidence showed that consumers regarded the bin as an unusual and useful feature, but did not establish that they perceived it, by its nature and appearance, as indicating a single commercial origin. The marks were consequently excluded under sections 3(1)(b) and 3(1)(c).
5. Acquired distinctiveness. Acquired distinctiveness required an overall assessment of whether a significant proportion of the relevant public identified the goods as originating from one undertaking because of the mark. The evidence showed association between clear bins, bagless cleaners and Dyson, but the court questioned whether association resulting from a period of sole supply, without use of the feature as a trade mark, was sufficient. That issue was referred to the Court of Justice.

1. High Court (Chancery Division): appeal from the hearing officer’s decision refusing registration under sections 3(1)(a)–(c) of the Trade Marks Act 1994. The appeal was conducted by way of review. The court upheld the refusal on inherent distinctiveness and referred a question concerning acquired distinctiveness.