• COURT DIARY

    Bach (Still) to the Wall

    In the Spring 1999 edition of Make Your Mark, we reported the decision of the English High Court (Mr. Neuberger) to remove the marks Bach and Bach Flower Remedies from the Trade Marks Register, but to permit the continued registration of the script form of Bach and the Bach/Flower device, subject, in both cases, to a disclaimer of the word Bach.

    According to the Judge in that case, the evidence showed that the expression Bach Flower Remedies had both a generic meaning (flower remedies prepared by the methods of Dr Edward Bach) and a trade source meaning (products from The Bach Centre, an organisation established to continue to make, market and sell the Bach remedies). However, in the Judge’s view, the evidence pointing towards the trade source meaning should be discounted, because until about 1988 the only commercial source of Bach Flower Remedies was The Bach Centre. Furthermore, up until about the late 1970s, The Bach Centre had encouraged the generic use of the expression Bach Flower Remedies by others. On this basis, the Court found that the name Bach and the phrase Bach Flower Remedies were, on balance, established as generic terms for medicinal preparations derived from herbs and flowers. It followed that the trade mark registrations covering these marks were invalid under Section 3(1)(c) of the 1994 Trade Marks Act in that the marks served, in trade, to designate the kind or quality of the goods.

    The owner of the disputed registrations, Bach Flower Remedies Ltd, appealed against Mr Neuberger’s decision to remove the registrations for Bach and Bach Flower Remedies. Before the Appeal Court, (Bach Flower Remedies Ltd v Healing Herbs Ltd) the following issues had to be determined,

    • Should the Court decide whether registration of a sign is in breach of Section 3(1)(a) of the 1994 Act, as a preliminary to the construction and application of Sections 3(1)(b), (c) or (d)?,

    • If so, were the signs Bach and Bach Flower Remedies registered in breach of Section 3(1)(a)? and

    • If Bach and Bach Flower Remedies were “capable of distinguishing“ under the terms of Section 3(1)(a), had the use of these marks by the proprietor since their registration been sufficient to overcome the objection raised under Section 3(1)(c)?

    The relevant sections of the 1994 Act that fell for consideration were

    1(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

    A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

    3(1) The following shall not be registered

    a. signs which do not satisfy the requirements of section 1(1)...

    b. 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.

    In a seminal judgement, the Court of Appeal found that the signs Bach and Bach Flower Remedies were not capable of distinguishing the goods of Bach Flower Remedies Ltd from those of others. The registrations for these signs were therefore invalid under Section 3(1)(a) of the Act. The Court made the following further rulings,

    • It is necessary to decide whether a sign satisfies the requirements of Section 3(1)(a) before going on to consider the other relevant parts of Section 3.

    • The capability of a sign to provide the requisite distinction at the date of application depends on its meaning at that date and the meaning of any word may depend in part on its normal use.

    • Section 3(1)(a) refers to “signs” rather than “trade marks”. There are two categories of signs that are not capable of distinguishing the goods of one undertaking from those of others. These are


    - Those signs which have never been capable of distinguishing, and

    - Those which once had the capacity to distinguish but have, through use, ceased to be capable of doing so.

    • If a word can acquire a distinctive character through use, there can be no reason, in principle, why the same word should not, instead, acquire a descriptive character through use. If it does, it will no longer be a trade mark and will be precluded from registration by Section 3(1)(a).

    • If, at the application date, a sign is not capable of affording the distinction required under Section 3(1)(a), there is no point in considering whether by use before the application date such a sign has in fact become capable of distinguishing.

    • In determining the meaning of a sign as used at the date of application, the usage in question must be by those engaged in the relevant trade or activity. Normally that will be the usage of the average consumer of the goods in question (Lloyds/Loint ECJ case referred to). Such evidence is not limited, however, to such consumers or end-users but may extend to those in the trade such as manufacturers, wholesalers and retailers.

    • The average consumer is deemed to be reasonably informed, reasonably observant and circumspect. In 1979 and thereafter the expression Bach Flower Remedies and the word Bach would have been used and understood in a generic sense.

    • Use of an identical sign on identical goods constitutes infringement by virtue of Section 10(1) of the Act without more. Section 11(2) of the Act does not indicate that a mark can be both distinctive and descriptive so that if used on identical goods it would not constitute infringement under Section 10(1).

    • The test laid down by the Act and the principles established or confirmed by the ECJ require a trade mark owner, in order to succeed under the proviso of Section 3(1), to establish that, in consequence of his use of the mark after the date of registration, the mark has acquired a distinctive character amongst a significant proportion of the average consumers of the goods claimed.

    • If, in the present case, Healing Herbs are entitled to say that its goods are flower remedies made in accordance with the teachings of Dr. Bach, they must also be entitled to describe them as Bach Flower Remedies.

    • The post registration use of the word Bach and the phrase Bach Flower Remedies by the proprietor was not adequate to overturn the original finding that they fell foul of Section 3(1)(c) of the Act.

     

    Comment

    In the writer’s view, this decision takes UK trade mark law back into the Dark Ages. We have returned to the world of York trailers (1984 RPC 231), where, in 1994 Act terms, a sign can be distinctive in fact (i.e. through use) but is incapable of distinguishing in law.

    A far better position would be to accept that virtually any sign is capable of distinguishing one trader’s goods from those of others (and therefore is acceptable under Section 3(1)(a) of the Act), but that many trade marks will not be acceptable under one or more of the terms of Sections 3(1)(b), (c), or (d) of the Act. This deficiency may, however, be overcome by evidence of distinctiveness acquired through use, an option that is not open to a sign rejected under Section 3(1)(a).

    It is also submitted that a more imaginative judicial approach to the infringement provisions (Section 10) of the 1994 Act and the limits placed on the rights of a registered trade mark proprietor (Section 11) under the Act, would be a better way to solve the dilemmas posed under trade mark law by inherently descriptive signs that may have become distinctive through use.

    For example, if Treat is a registered trade mark and a third party uses Toffee Treat as a trade mark for identical goods, then the question of infringement should not be considered under Section 10(1) (use of the identical sign Treat) but under Section 10(2) (use of a similar sign Toffee Treat). Further, if Yorkshire is a registered trade mark for tea and a third party sells tea under the banner Huttons of Yorkshire then, assuming the normal and fair use of the later mark and that Huttons are based in Yorkshire, no infringement of the Yorkshire registration should be found because the comparison under Section 10 should be between Yorkshire and Huttons of Yorkshire. Further, if Huttons employ the phrase “Tasty Tea from Yorkshire” on their labels, then such use should be saved from infringement by Section 11(2) of the Act.

    In the author’s’ opinion, the Bach case should have been decided as follows,

    • The signs are capable of distinguishing under Section 3(1)(a) since Bach is a fairly unusual surname,

    • Depending on the evidence of acquired distinctiveness, the marks may or may not be acceptable under Sections 3(1)(b), (c) and (d).

    • If the mark Bach is deemed registrable, then an infringement action brought against the use of the trade mark Healing Herbs Bach Flower Remedies should be decided under section 10(2) rather than 10(1) of the Act (That is the later mark is not identical to Bach). Further, if Healing Herbs simply use their own name (Healing Herbs) as a trade mark and place the banner Flower Remedies made to the Formula of Dr. Bach on their label, then such use of Bach should not be viewed as an infringement of the Bach registration in view of Section 11(2) of the Act.