Trade Marks - NAH Holdings Ltd v KBF Enterprises Ltd
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Intellectual Property Enterproise Court (HH Judge Hacon) NAH Holdings Ltd and another KBF Enterprises Ltd and another [2022] EWHC 323 (IPEC) (16 Feb 2022)
The latest definition of a trade mark is
"any sign which is capable-
"any sign which is capable-
(a) of being represented in the register in a manner which enables the registrar and other competent authorities and thepublic to determine the clear and precise subject matter of the protection afforded to the proprietor,and
(b) of distinguishing goods or services of one undertaking from those of other undertakings" (see s.1 (1) of the Trade Marks Act 1994 as amended).
One of the grounds for refusing registration of a sign as a trade mark is that it does not satisfy the requirements of that section.
Unsurprisingly there are very few cases on that point but one in which it was raised was NAH Holdings Ltd and another v KBF Enterprises Ltd and another [2022] EWHC 323. This was an action for trade mark infringement under s.10 (2) of the Act that came on before Judge Hacon on 16 Feb 2022. It had been brought by the proprietor of the trade marks UK00002626042 and UK00916905317. Both registrations were for "SLIM SAUCE" for "Sauce for food, pasta sauce, zero calorie sauce". The defendants had used the sign "SLIM SAUCES" for basically slim sauces. The claimants sought summary judgment on the ground that th defendants were out of time in serving a defence.
One of the grounds for refusing registration of a sign as a trade mark is that it does not satisfy the requirements of that section.
Unsurprisingly there are very few cases on that point but one in which it was raised was NAH Holdings Ltd and another v KBF Enterprises Ltd and another [2022] EWHC 323. This was an action for trade mark infringement under s.10 (2) of the Act that came on before Judge Hacon on 16 Feb 2022. It had been brought by the proprietor of the trade marks UK00002626042 and UK00916905317. Both registrations were for "SLIM SAUCE" for "Sauce for food, pasta sauce, zero calorie sauce". The defendants had used the sign "SLIM SAUCES" for basically slim sauces. The claimants sought summary judgment on the ground that th defendants were out of time in serving a defence.
Save for the obvious point that it serving a pleading out of time is not one of the grounds for summary judgment the main defence was that the marks in suit did not satisfy the requirements of s.1(1) of the Act. His Honour considered that point at para [22] of his judgment:
"The principal issue raised under s.3 (1) (b) and (c) of the 1994 Act is whether the SLIM SAUCES trade marks are devoid of any distinctive character. The claimants say that I can dismiss such a possibility without evidence. I certainly believe it to be unlikely that their case under either s.3 (1) (b) or s.3 (1) (c) will succeed. But I am not prepared to say without evidence that there is no real prospect of the defendants succeeding under either head of the Counterclaim. There is just enough doubt for me to believe the prospect is better than fanciful, though not by much."
"The principal issue raised under s.3 (1) (b) and (c) of the 1994 Act is whether the SLIM SAUCES trade marks are devoid of any distinctive character. The claimants say that I can dismiss such a possibility without evidence. I certainly believe it to be unlikely that their case under either s.3 (1) (b) or s.3 (1) (c) will succeed. But I am not prepared to say without evidence that there is no real prospect of the defendants succeeding under either head of the Counterclaim. There is just enough doubt for me to believe the prospect is better than fanciful, though not by much."
The learned judge was reluctant to do more than let the claim go forward. The rules Para 5.1 (4) of PD Part 24 provides for the possibility of a conditional order. He invited the parties to make written submissions on the point.
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