Trade Marks - Flowerbx Ltd v Flowers Box London Ltd
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Intellectual Property Enterprise Court (Recorder Amanda Michaels) Flowerbx Ltd v Flowers Box London Ltd [2026] EWHC 2233 (IPEC) (7 Sept 2026)
This was an action for infringement under s.10 (2) and s.10 (3) of the Trade Marks Act 1994 and a counterclaim for invalidity under s.47 (1) and/or revocation under s.46 (1). The trade mark in suit was UK trade mark no. 3,223,726, for the word mark FLOWERBX. The allegedly infringing signs included FLOWERSBOX, FLOWERS BOX and FLOWERS BOX LONDON in various formats. The action and counterclaim came on before Recorder Amanda Michaels, sitting as a judge of the High Court on 16 and 17 July 2026. By her judgment in Flowerbx Ltd v Flowers Box London Ltd [2026] EWHC 2233 (IPEC) which she handed down on 7 Sept 2026, the learned recorder found for the claimant on the claim and dismissed the counterclaim.
The Parties
The claimant company was Flowerbx Limited ("Flowerbx"). It was founded by Whitney Bromberg Hawkings who noticed an unmet demand for elegant and modern flowers of the kind generally used in the high-end fashion business available over the internet. Flowerbx started trading in 2015 by supplying flowers to consumers but it soon received orders from event promoters, shops and restaurants prompting it to adopt a business-to-business model. Some of Flowerbx's customers wanted flower vases which encouraged Flowerbx to develop a homeware business. Flowerbx applied to register FLOWERBX as a trade mark on 7 Apr 2017.The defendant was Flower Box London Ltd ("FBL"). FBL was incorporated in April 2017 to take over an online floristry business started by Lukasz Gajewski. The company supplied gift items such as fruit, alcoholic drinks, cakes, balloons and cuddly toys as well as flowers under the FLOWERS BOX, FLOWERS BOXLONDON and www.flowersbox.co.uk signs in plain text and various typographical styles.
The Dispute
Recorder Michaels mentioned instances of confusion between Flowerbx and FBL from 2019. On 3 Feb 2025, Flowerbx's in-house legal advisor wrote to FBL complaining of trade mark infringement and passing off and demanded undertakings to cease its infringements and to pay compensation. The letter prompted FBL to apply to register FLOWERSBOX and FLOWERS BOX LONDON as trade marks. Trade mark attorneys acting for FBL rejected Flowerbx's complaint and required it to surrender its FLOWERBX trade mark on the grounds that that mark had been registered in breach of s. 3 (1) (c) of the Trade Marks Act 1994 and/or that it should be revoked for non-use. Flowerbx's solicitors sent a letter before claim on 10 June 2025. FBL applied to register FLOWERSBOX and FLOWERS BOX LONDON with a gold device for goods in class 31. Flowerbx issued its claim form on 22 July 2025. FBL responded with a defence and counterclaim denying that its mark fell within s.3 (1) (c) and asserting that it had acquired a distinctive character as a result of the use made of it.
The issues
A case management conference took place on 9 Feb 2026. A list of issues was ordered to be tried. They included whether:
1) the claimant's FLOWERBX mark had an enhanced distinctive character;
1) the claimant's FLOWERBX mark had an enhanced distinctive character;
2) that mark should be declared invalid pursuant to s 3 (1) (c) of the Act (broadly, for descriptiveness); and whether
3) it had been infringed under ss 10 (2) and/or (3).
3) it had been infringed under ss 10 (2) and/or (3).
Miss Michaels also referred to the counterclaim for revocation of the mark for non-use in para [17] of her judgment. The issue was resolved by the parties' identifying the specified goods and services for UK trade mark no. 3,223,726 that were not in dispute. The recorder decided to try the issue of whether the mark fell within s.3 (1) (c) first, whether the mark had acquired a distinctive character next and, finally, whether the mark had been infringed.
Whether the Mark in Suit should be declared invalid
S.47 (1) of the Trade Marks Act 1994 provides:
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered."
S.3 (1) (c) further provides:
"The following shall not be registered—
...
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
.......
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
Whether the Mark fell within S.3 (1) (c)
The recorder's starting point was that in all legal proceedings relating to a registered trade mark, s.72 of the Act provides that the registration of a person as the proprietor of a trade mark is prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it. She reasoned that the burden falls on the defendant to satisfy the court that a reason or reasons for a declaration of invalidity exist. If that burden is discharged, the claimant has to satisfy the court that the mark has acquired distinctive character either at the filing date (thereby satisfying the proviso to s.3 (1)) or by the date of issue of the invalidity counterclaim which in this case was 9 Feb 2026.
"[91] The principles to be applied under art. 7 (1) (c) of the CTM Regulation were conveniently summarised by the CJEU in Agencja Wydawnicza Technopol sp z oo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P) [2011] ETMR 34 as follows:
'[33] A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7 (1) (c) of Regulation No 40/94 is - save where Article 7 (3) applies - devoid of any distinctive character as regards those goods or services (as regards Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ( OJ 1989 L 40, p. 1), see, by analogy, [2004] ECR I-1699, paragraph 19; as regards Article 7 of Regulation No 40/94, see Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm Wrigley Jr Co (C-191/01 P) [2004] 1 WLR 1728 [2003] ECR I-12447; [2004] E.T.M.R. 9; [2004] RPC 18, paragraph 30, and the order in (C-150/02 P) [2004] E.C.R. I-1461, paragraph 24).
...........
[36]. ... due account must be taken of the objective pursued by Article 7 (1) (c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7 (1) must be interpreted in the light of the general interest underlying it (see, inter alia, Henkel KGaA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-456/01 P) [2004] ECR I-5089; [2005] E.T.M.R. 44, paragraph 45, and Lego Juris v OHIM (C-48/09 P), paragraph 43).
[37] The general interest underlying Article 7 (1) (c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, OHIM v Wrigley, paragraph 31 and the case-law cited).
[38] With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7 (1) (c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes (OHIM v Wrigley, paragraph 32; Campina Melkunie, paragraph 38; and the order of 5 February 2010 in Mergel and Others v OHIM (C-80/09 P), paragraph 37).
[39] By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question ([1999] ECR I-2779, paragraph 35, and [2004] ECR I-1619, paragraph 58). It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration (Koninklijke KPN Nederland, paragraph 57).
...
[46] As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7 (1) (c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7 (1) (b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7 (1)(b) for reasons other than the fact that it may be descriptive (see, with regard to the identical provision laid down in Article 3 of Directive 89/104, Koninklijke KPN Nederland, paragraph 86, and Campina Melkunie, paragraph 19).
[47] There is therefore a measure of overlap between the scope of Article 7 (1) (b) of Regulation No 40/94 and the scope of Article 7 (1) (c) of that regulation (see, by analogy, Koninklijke KPN Nederland, paragraph 67), Article 7 (1) (b) being distinguished from Article 7 (1) (c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
[48] In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal.
[49] The situations specifically covered by Article 7 (1) (c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a 'characteristic' of the goods or services referred to in the application. By using, in Article 7 (1) (c) of Regulation No 40/94, the terms 'the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service', the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.
[50] The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7 (1) (c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7 (1) (c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland, paragraph 56).'
[92] In addition, a sign is caught by the exclusion from registration in art.7 (1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned: see OHIM v Wrigley [2003] ECR I-12447 at [32] and Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99 [2004] ECR I-1619; [2004] ETMR 57 at [97].
[93] Counsel for PCCW relied upon two other authorities. First, Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Celltech R&D Ltd (C-273/05 P) [2007] ECR I-2883; [2007] E.T.M.R. 52, in which the CJEU stated at [81]:
'In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning 'cell technology', was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7 (1) (c) of Regulation No 40/94.'
[94] Secondly, Europig SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-207/06) [2007] E.C.R. II-1961, in which the Court of First Instance (now General Court) said at [27]:
'It follows that, for a sign to be caught by the prohibition set out in [ art.7(1)(c)], there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there).'
[95] I do not see any real difference between these statements of principle and those in Technopol [2011] ETMR 34, in particular at [50], and if there is a real difference it is the latter that should be given effect to. Nevertheless, I am content to proceed on the basis urged upon me by counsel for PCCW, namely that Celltech [2007] ECR I-2883 emphasises the need for evidence except in clear cases and that Europig [2007] E.C.R. II-1961 emphasises the need for a sufficiently direct and specific relationship between the sign and the goods or services concerned."
Miss Michaels continued at para [27] of her judgment:
"[27] Applying those tests, in Starbucks Arnold J found that the mark, NOW, described a characteristic of the services on offer, i.e. the instant and immediate character of the service, and the mark was not saved by the inclusion in it of minimal, insignificant figurative elements. His judgment was approved on the s 3 (1)(c) point by the Court of Appeal [2013] EWCA Civ 1465; [2014] F.S.R. 20. Sir John Mummery said:
'[39] I will not repeat the lengthy passages. The position in short is that a sign which designates a characteristic of the relevant service is devoid of any distinctive character. Such signs are often referred to as descriptive, as they are easily recognised by the relevant class of persons as describing the service in respect of which registration is sought or made.
[40[ As the judge stated at [92] of his judgment
'[A] sign is caught by the exclusion from registration in Article 7 (1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned.'
[41] The basic aim of such exclusions from registration is obvious: to prevent an undue monopoly in the course of trade of a designation that may be used descriptively of a service or of any of its characteristics. It is in the general public interest that undertakings should be able to describe freely any characteristic of their own service, irrespective of how commercially significant that characteristic may be."
"The alteration of a descriptive word or a combination of descriptive words to form a 'neologism' may take a mark out of the ambit of s 3 (1) (c), depending upon the impact on the mark as a whole, in effect whether there is a perceptible difference between the combination and the mere sum of its parts. The distinctive character of the mark must be assessed by reference to the goods or services in the challenged registration and the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect. The issue is how the average consumer would perceive the mark in context: will the mark actually be recognised by the relevant class of persons as a description of one of the characteristics of the challenged goods/services?"
The recorder heard evidence of Flowerbx's sales, marketing and publicity. She concluded that its business had grown and achieved media coverage in the national press and on social media at a level easily sufficient to have enhanced the distinctive character of the mark. As a result, she was satisfied that as at the date of the counterclaim a significant proportion of the relevant class of persons, both the general public and businesses, had come to identify the claimant's goods and services as originating from the claimant by use of the mark. The mark had by that date acquired at least a medium level of distinctive character as a designation of origin. It followed that the invalidity counterclaim failed, and the mark would not be declared invalid.
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
Relying on para [27] of Lord Justice Arnold's judgment in Match Group, the recorder noted that in undertaking a global assessment of a likelihood of confusion, it is usual to consider a standard summary of the relevant principles:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
She added that the likelihood of confusion is to be assessed in the context in which the complained-of sign has been used; see Specsavers v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 at [87]. In addition, as Mr Justice Arnold said in Interflora v Marks & Spencer [2013] EWHC 1291 (Ch); [2013] FSR 33 at [224], the question of a likelihood of confusion "...is not a binary question: is the average consumer confused or is the average consumer not confused? Rather, it requires an assessment of whether it is likely that there is, or will be, confusion, applying the standard of perspicacity of the average consumer. It is clear from the case law that this does not mean likely in the sense of more probable than not. Rather, it means sufficiently likely to warrant the court's intervention. The fact that many consumers of whom the average consumer is representative would not be confused does not mean that the question whether there is a likelihood of confusion is to be answered in the negative if a significant number would be confused."
There was no dispute about the identity of the defendant's goods/services to those in the specification of the mark. As to the similarity of the mark in suit to FBL's signs, the recorder referred to para [35] of Lord Justice Arnold's judgment in TVIS Ltd v Howserv Services Ltd [2024] EWCA Civ 1103, [2024] FSR 34:
"[35]..., while it is conventional for first instance tribunals in trade mark cases to articulate their assessment of the degree of visual and aural similarity between signs and trade marks using words such as 'high', 'medium' or 'low', there is no legal requirement for tribunals to do so. All that is required is for the tribunal to assess the nature and extent of any similarities. This is because what matters is not the verbal label that is applied to the assessment, but whether the similarities in conjunction with the other factors which must be taken into account lead to a likelihood of confusion. It is possible for there to be no likelihood of confusion despite a relatively high degree of visual and aural similarity. Equally it is possible for there to be a likelihood of confusion despite a relatively low degree of visual and aural similarity. It depends on the other factors that are in play."
The learned recorder found a high degree of visual, aural and conceptual similarity between the signs FLOWERSBOX, FLOWERS BOX and FLOWERS BOX LONDON and the mark in suit. There was also evidence of actual confusion. She concluded at para [70] that the enhanced distinctive character of the mark, the close and confusing similarity between it and FLOWERS BOX, the identity of the goods and the moderate degree of attention paid by the average consumer all pointed towards a likelihood of confusion. The claim under s.10 (2) therefore succeeded.
(i) The trade mark must have a reputation in the UK;
'"The case law of the Court of Justice establishes that infringement under section 10 (3) requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the trade mark is registered, or a serious likelihood that such a change will occur in the future."
Flowerbx argued that s that FBL's use of the signs took unfair advantage of the reputation in the mark, resulting in a transfer of the reputation in the mark to the defendant and its goods and services. FBL disputed reputation as at 2019, similarity of the mark and signs, link, unfair advantage, tarnishment and due cause.
She explained the purpose of s.3 (1) (c) in para [25] of her judgment:
"Section 3 (1) (c) is intended to prevent traders from registering words that other traders might legitimately want to use in the course of their business and so will justify the invalidation of a mark only if it consists exclusively of a sign which may serve to designate the kind, quality, intended purpose of or other characteristic of the goods. Overall, a mark may be distinctive, or it may contain elements which are distinctive."
"Section 3 (1) (c) is intended to prevent traders from registering words that other traders might legitimately want to use in the course of their business and so will justify the invalidation of a mark only if it consists exclusively of a sign which may serve to designate the kind, quality, intended purpose of or other characteristic of the goods. Overall, a mark may be distinctive, or it may contain elements which are distinctive."
She referred to paras [91] to [95] of Mr Justice Arnold's judgment in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch); [2013] FSR 29:
"[91] The principles to be applied under art. 7 (1) (c) of the CTM Regulation were conveniently summarised by the CJEU in Agencja Wydawnicza Technopol sp z oo v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-51/10 P) [2011] ETMR 34 as follows:
'[33] A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7 (1) (c) of Regulation No 40/94 is - save where Article 7 (3) applies - devoid of any distinctive character as regards those goods or services (as regards Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ( OJ 1989 L 40, p. 1), see, by analogy, [2004] ECR I-1699, paragraph 19; as regards Article 7 of Regulation No 40/94, see Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm Wrigley Jr Co (C-191/01 P) [2004] 1 WLR 1728 [2003] ECR I-12447; [2004] E.T.M.R. 9; [2004] RPC 18, paragraph 30, and the order in (C-150/02 P) [2004] E.C.R. I-1461, paragraph 24).
...........
[36]. ... due account must be taken of the objective pursued by Article 7 (1) (c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7 (1) must be interpreted in the light of the general interest underlying it (see, inter alia, Henkel KGaA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-456/01 P) [2004] ECR I-5089; [2005] E.T.M.R. 44, paragraph 45, and Lego Juris v OHIM (C-48/09 P), paragraph 43).
[37] The general interest underlying Article 7 (1) (c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, OHIM v Wrigley, paragraph 31 and the case-law cited).
[38] With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7 (1) (c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes (OHIM v Wrigley, paragraph 32; Campina Melkunie, paragraph 38; and the order of 5 February 2010 in Mergel and Others v OHIM (C-80/09 P), paragraph 37).
[39] By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question ([1999] ECR I-2779, paragraph 35, and [2004] ECR I-1619, paragraph 58). It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration (Koninklijke KPN Nederland, paragraph 57).
...
[46] As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7 (1) (c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7 (1) (b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7 (1)(b) for reasons other than the fact that it may be descriptive (see, with regard to the identical provision laid down in Article 3 of Directive 89/104, Koninklijke KPN Nederland, paragraph 86, and Campina Melkunie, paragraph 19).
[47] There is therefore a measure of overlap between the scope of Article 7 (1) (b) of Regulation No 40/94 and the scope of Article 7 (1) (c) of that regulation (see, by analogy, Koninklijke KPN Nederland, paragraph 67), Article 7 (1) (b) being distinguished from Article 7 (1) (c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
[48] In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal.
[49] The situations specifically covered by Article 7 (1) (c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a 'characteristic' of the goods or services referred to in the application. By using, in Article 7 (1) (c) of Regulation No 40/94, the terms 'the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service', the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.
[50] The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7 (1) (c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7 (1) (c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland, paragraph 56).'
[92] In addition, a sign is caught by the exclusion from registration in art.7 (1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned: see OHIM v Wrigley [2003] ECR I-12447 at [32] and Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99 [2004] ECR I-1619; [2004] ETMR 57 at [97].
[93] Counsel for PCCW relied upon two other authorities. First, Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Celltech R&D Ltd (C-273/05 P) [2007] ECR I-2883; [2007] E.T.M.R. 52, in which the CJEU stated at [81]:
'In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning 'cell technology', was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7 (1) (c) of Regulation No 40/94.'
[94] Secondly, Europig SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-207/06) [2007] E.C.R. II-1961, in which the Court of First Instance (now General Court) said at [27]:
'It follows that, for a sign to be caught by the prohibition set out in [ art.7(1)(c)], there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there).'
[95] I do not see any real difference between these statements of principle and those in Technopol [2011] ETMR 34, in particular at [50], and if there is a real difference it is the latter that should be given effect to. Nevertheless, I am content to proceed on the basis urged upon me by counsel for PCCW, namely that Celltech [2007] ECR I-2883 emphasises the need for evidence except in clear cases and that Europig [2007] E.C.R. II-1961 emphasises the need for a sufficiently direct and specific relationship between the sign and the goods or services concerned."
"[27] Applying those tests, in Starbucks Arnold J found that the mark, NOW, described a characteristic of the services on offer, i.e. the instant and immediate character of the service, and the mark was not saved by the inclusion in it of minimal, insignificant figurative elements. His judgment was approved on the s 3 (1)(c) point by the Court of Appeal [2013] EWCA Civ 1465; [2014] F.S.R. 20. Sir John Mummery said:
'[39] I will not repeat the lengthy passages. The position in short is that a sign which designates a characteristic of the relevant service is devoid of any distinctive character. Such signs are often referred to as descriptive, as they are easily recognised by the relevant class of persons as describing the service in respect of which registration is sought or made.
[40[ As the judge stated at [92] of his judgment
'[A] sign is caught by the exclusion from registration in Article 7 (1) (c) if at least one of its possible meanings designates a characteristic of the goods or services concerned.'
[41] The basic aim of such exclusions from registration is obvious: to prevent an undue monopoly in the course of trade of a designation that may be used descriptively of a service or of any of its characteristics. It is in the general public interest that undertakings should be able to describe freely any characteristic of their own service, irrespective of how commercially significant that characteristic may be."
Miss Michaels also referred to para [80] ofJudge Melissa Clarke's judgment in Dryrobe Ltd v Caesr Group Ltd [2025] EWHC 3167 (IPEC), [2026] E.T.M.R. 10:
"[80] ..... section 3 (1) (c) 'only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics' per Agencia Wydawnicza at [50], and if at least one of its possible meanings designates a characteristic of the goods or services concerned, per Arnold J at [92] of Starbucks v BskyB relying on OHIM v Wrigley at [32] and Koninklijke KPN Nederland v Benelux-Merkenbureau (C-363/99) [2004] ECR I-1619; [2004] ETMR 57 at [97]. It is irrelevant whether there are other, more usual signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration (see Agencia Wydawnicza at [39], from Koninklijke KPN Nederland at [57]). Arnold J further relied in [95] on the Court of First Instance's guidance at [27] of Europig SA v OHIM (T-207/06) [2007] E.C.R. II-1961, that:
'.... there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there).'"
The learned recorder directed herself as follows at para [29]:
"[80] ..... section 3 (1) (c) 'only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics' per Agencia Wydawnicza at [50], and if at least one of its possible meanings designates a characteristic of the goods or services concerned, per Arnold J at [92] of Starbucks v BskyB relying on OHIM v Wrigley at [32] and Koninklijke KPN Nederland v Benelux-Merkenbureau (C-363/99) [2004] ECR I-1619; [2004] ETMR 57 at [97]. It is irrelevant whether there are other, more usual signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration (see Agencia Wydawnicza at [39], from Koninklijke KPN Nederland at [57]). Arnold J further relied in [95] on the Court of First Instance's guidance at [27] of Europig SA v OHIM (T-207/06) [2007] E.C.R. II-1961, that:
'.... there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB, paragraph 25, and the case-law cited there).'"
The learned recorder directed herself as follows at para [29]:
She first considered the concatenation of the two parts of the mark in suit, that is to say, the combination of the word 'flower' and the letters 'bx' into a portmanteau word or neologism. She rejected the claimant's case that the combination of the words "flower" and "box" meant that the mark did not consist exclusively of descriptive elements, and so escaped from s 3 (1) (c) because the mark was seen and understood as FLOWER BOX and, as such, described a box, more particularly a box for flowers.
She held that the words "flower" and "box" were not descriptive of the goods or services for which the mark had been registered. She concluded at [39] that the mark was inherently distinctive in relation to the goods and services for which it was registered. Accordingly, she rejected the counterclaim for invalidity.
Whether the Claimant's FLOWERBX Mark had an Enhanced Distinctive Character
Whether the Claimant's FLOWERBX Mark had an Enhanced Distinctive Character
Recorder Michaels referred to para [35] of Mr Justice Arnold's judgment in Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch), [2018] F.S.R. 35 for the meaning of "enhanced distinctive character":
"[69] First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings.
[70] Secondly, the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration has been applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect.
[71] Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others.
[72] Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character.
[73] Fifthly, with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking.
[74] Sixthly, a trade mark may acquire a distinctive character in consequence of the use of that mark as part of, or in conjunction with, another trade mark (which may itself be a registered trade mark).
[75] Seventhly, it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use. Nor can the results of a consumer survey be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use.
[76] Eighthly, the trade mark applicant or proprietor must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company. It is not sufficient for the applicant or proprietor to show that a significant proportion of the relevant class of persons recognise and associate the mark with the applicant or proprietor's goods."
"[69] First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings.
[70] Secondly, the distinctive character of a trade mark must be assessed by reference to (i) the goods or services in respect of which registration has been applied for and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well-informed and reasonably observant and circumspect.
[71] Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others.
[72] Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include (i) the market share held by goods bearing the mark, (ii) how intensive, geographically widespread and long-standing the use of the mark has been, (iii) the amount invested by the proprietor in promoting the mark, (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor, (v) evidence from trade and professional associations and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character.
[73] Fifthly, with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of persons, of the product as originating from a given undertaking.
[74] Sixthly, a trade mark may acquire a distinctive character in consequence of the use of that mark as part of, or in conjunction with, another trade mark (which may itself be a registered trade mark).
[75] Seventhly, it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use. Nor can the results of a consumer survey be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use.
[76] Eighthly, the trade mark applicant or proprietor must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company. It is not sufficient for the applicant or proprietor to show that a significant proportion of the relevant class of persons recognise and associate the mark with the applicant or proprietor's goods."
Infringement under S.10 (2)
Miss Michaels observed that there was no dispute about the applicable principles on infringement. S.10 (2) of the Trade Marks Act 1994 provides:
"A person infringes a registered trade mark if he uses in the course of trade a sign where because—
"A person infringes a registered trade mark if he uses in the course of trade a sign where because—
..................
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark."
Referring to para [26] of Lord Justice Arnold's judgment in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454, [2023] Bus L R 1097, she observed that 6 conditions must be satisfied by the proprietor of a mark that is alleged to have been infringed to establish infringement under that subsection:
(i) The defendant has used within the relevant territory; (ii) in the course of trade;
(iii) without the trade mark proprietor's consent;
(iv) a sign which is at least similar to the mark;
(v) in relation to goods or services which are at least similar to those for which the mark is registered; and (vi) that gives rise to a likelihood of confusion.
FBL accepted that it had used its signs in relation to identical goods/services to some of those within the claimant's specification and that only the last of these conditions was in dispute.
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
Infringement under S.10 (3)
Miss Michaels noted at para [71] that the parties were in agreement as to the law and the principles were well known. S.10 (3) of the Trade Marks Act 1994 provides:
"A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a) is identical with or similar to the trade mark, ...
(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
(a) is identical with or similar to the trade mark, ...
(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
She observed that Lord Justice Arnold had listed the following conditions for liability under that provision in Thatchers v Aldi [2025] EWCA Civ 5 at para [38]:
(i) The trade mark must have a reputation in the UK;
(ii) there must be use of a sign by a third party within the UK;
(iii) the use must be in the course of trade;
(iv) it must be without the consent of the proprietor of the trade mark;
(v) it must be of a sign which is identical or similar to the trade mark;
(vi) it must be in relation to goods or services;
(vii) it must give rise to a "link" between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say,
(a) unfair advantage being taken of the distinctive character or repute of the trade mark,
(b) detriment to the distinctive character of the trade mark (referred to as "dilution") or
(c) detriment to the repute of the trade mark (referred to as "tarnishment"); and
(ix) it must be without due cause.
In Thatchers, Lord Justice Arnold added at [51]:
'"The case law of the Court of Justice establishes that infringement under section 10 (3) requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the trade mark is registered, or a serious likelihood that such a change will occur in the future."
In the next paragraph, the recorder remarked that the question of whether there was a link between the signs and the mark had to be addressed globally, like the likelihood of confusion. She was satisfied that the evidence relevant to s 10 (2) on the likelihood of confusion led to the conclusion that a substantial proportion of reasonably attentive consumers for whom the mark had a reputation would link them to the signs.
Finally, although the recorder had evidence of a change of economic behaviour, it was not enough for her to make a finding of serious risk of detriment or tarnishment.
Comment
Even though there was relatively little dispute as to the relevant law, Recorder Michaels has explored the case law on descriptiveness, acquired distinctiveness and infringement under s.10 (2) and (3) thoroughly. Anyone wishing to discuss this case may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.
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