Go Outdoors Ltd v Skechers USA Inc II

For section 3(1)(b) of the Trade Marks Act 1994, a slogan is not subject to a stricter distinctiveness test merely because it is promotional. The relevant public must be able to perceive it as identifying commercial origin. Originality, resonance or a need for interpretation may assist that conclusion, but they are not mandatory requirements. Descriptiveness under section 3(1)(c) is a distinct inquiry and a sign may fail section 3(1)(b) without describing the retail service. Acquired distinctiveness requires evidence that the public actually perceives the sign as a trade mark. An appellate court should exercise particular caution before interfering with a specialist tribunal’s evaluative assessment.

GO Outdoors appealed from the decision of an Intellectual Property Office Hearing Officer refusing registration of the signs GO WALKING and GO RUNNING for specified goods and retail services. The opposition was based on sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994. The Hearing Officer rejected the descriptiveness objection but upheld the objection that the marks lacked inherent and acquired distinctiveness. GO Outdoors challenged those findings. Skechers served a respondent’s notice contending that the section 3(1)(c) objection should also have succeeded. The central issues were whether the Hearing Officer had applied the correct test for slogan distinctiveness, properly distinguished sections 3(1)(b) and 3(1)(c), and adequately assessed the evidence of use.

1. Appeal dismissed. The Hearing Officer’s refusal to register GO WALKING and GO RUNNING was upheld.
2. The appellate role was limited to reviewing whether the Hearing Officer’s decision was wrong. Particular caution was required because the decision involved a specialist tribunal’s value judgment and multi-factorial assessment.
3. The Hearing Officer did not impose an impermissibly strict requirement that a slogan possess originality or resonance. Those characteristics were relevant features identified in Audi AG v OHIM, but they were not mandatory requirements for distinctiveness. The Hearing Officer considered the broader question whether the signs would indicate commercial origin and was entitled to conclude that they were ordinary exhortations perceived as indicating the location or purpose of goods rather than their source.
4. There was no inconsistency between rejecting the section 3(1)(c) objection and upholding the section 3(1)(b) objection. Section 3(1)(c) asked whether the signs designated characteristics of the retail services. Section 3(1)(b) asked whether the public would recognise them as indications of origin. The signs could therefore be non-descriptive of the services while lacking distinctiveness.
5. The evidence of use did not demonstrate acquired distinctiveness. The Hearing Officer had considered the photographs, signage, advertising material and sales figures, but was entitled to find that the use mainly indicated the range or location of goods in the stores and was not shown to have educated the public to perceive the signs as trade marks.
6. Although unnecessary to the result, the court stated that the section 3(1)(c) finding was clearly correct: the phrases did not describe shopping for outdoor clothing or footwear and did not designate characteristics of the retail service.

1. High Court (Chancery Division) — appeal from the Intellectual Property Office Trade Mark Registry; appeal dismissed.