Data Marketing & Secretarial Ltd & Anor v S & S Enterprises Ltd

For invalidity under art 3(1)(c) of the Trade Mark Directive, the question is whether the average consumer would immediately perceive the sign, without further thought, as describing the goods or a characteristic of them. The test is distinct from, although it may resemble, likelihood of confusion. A mere possibility of association or allusion is insufficient.

Third-party use deprives an inherently distinctive mark of distinctive character only where it reached consumers so that the mark could no longer function as a badge of origin. Knowledge of third-party use does not alone establish bad faith where the applicant reasonably believes that it has the superior or authorised right to use the mark.

The claimants owned and exclusively licensed the UK registered word mark JUMPSTAR for battery-related goods. The defendants admitted use of the mark but counterclaimed for invalidity under arts 3(1)(b), 3(1)(c) and 3(2)(d) of the Trade Mark Directive. They also relied on art 6(1)(b) and challenged a fax as an actionable threat under Trade Marks Act 1994, s 21.

The issues were whether JUMPSTAR was descriptive of battery chargers, whether third-party use had deprived it of distinctive character, whether the application was made in bad faith, whether the art 6(1)(b) defence applied, and whether the defendants were persons aggrieved by the threat.

1. Descriptiveness. The correct inquiry under art 3(1)(c) was whether the average consumer, considering a battery charger bearing JUMPSTAR with the appropriate degree of attention, would immediately misperceive it as JUMPSTART, without further thought. The statutory test required a sufficiently direct and specific relationship between the sign and the goods or their characteristics. It was not enough that the mark might allude to jump-starting.
2. The evidence of clerical mistakes, alleged customer confusion and the defendants’ own impressions did not establish the required immediate perception. The claim under art 3(1)(c) failed.
3. Distinctive character. The defendants had to show pre-application use by third parties in the United Kingdom which had reached consumers so that JUMPSTAR could no longer function as a badge of origin. The evidence was insufficient. Awareness that goods could be obtained from more than one UK supplier would not necessarily prevent the mark from denoting a single source outside the United Kingdom.
4. Bad faith. Knowledge that others used the mark for the same goods did not alone constitute bad faith. The relevant state of mind was assessed at the filing date by reference to objective circumstances. The claimant’s belief that it had an exclusive right to use JUMPSTAR in the United Kingdom was genuine and objectively reasonable. The bad-faith ground failed.
5. The art 6(1)(b) defence failed because it stood or fell with the descriptive-characteristic argument. The claimants had a defence to the threats counterclaim because the threatened acts constituted infringement. Alternatively, SSEL was a person aggrieved, since damage would be inferred where a threat was directed to the defendant.
6. The Trade Mark was validly registered and had been infringed. The claimants had issued no actionable threat of infringement.