Hasbro Inc & Ors v 123 Nahrmittel GmbH & Anor [2011] EWHC 199 (Ch) (11 February 2011)

Hasbro Inc & Ors v 123 Nahrmittel GmbH & Anor [2011] EWHC 199 (Ch) (11 February 2011)

The approach to the assessment of the ability of a mark to distinguish goods of one undertaking from those of other undertakings was set out by the CJEU in Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV [1999] ECR I-3819:

"22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR I-2779, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee paragraph 51)."

The overall assessment must be performed through the eyes of the "average consumer", see, for example, Case C-299/99 Koninklijke Philips Electronics BV v Remington Consumer Products Ltd. [2002] ECR I-5475 at [65]. Yet, as the above citation from Lloyd recognises, a mark can possess distinctive character if only a proportion of the relevant public recognises that the mark means that the goods originate from a particular undertaking. The proportion of the relevant public which identifies the mark as denoting origin is a factor which the court must take into account in assessing distinctiveness. But it follows from this that the existence of a proportion of the relevant public who have not heard of the mark, or do not regard it as identifying the goods of a particular undertaking is not necessarily destructive of validity.

Mr Hobbs also submitted that there is no "single meaning rule" in trade marks of the kind that there was once thought to be, but there is no longer, in the law of malicious falsehood: see Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd [2010] EWCA Civ 609. He relied on two decisions of General Court: Case T-112/09 Icebreaker v OHIM and Case T- 72/08 Travel Service as v OHIM both of which concerned relative grounds. The latter case shows that the Court was prepared to take into account conceptual similarity "as regards that part of the relevant public which understands English" – see paragraph 57. Those cases do not have a direct bearing on whether a mark can be distinctive to some and merely descriptive to others, but do indicate that a segmented approach is permissible.

It is also important, I think, that when assessing whether a word or phrase is capable of functioning as a trade mark, one considers its use in that context. It is for this reason that the average consumer of the specific goods or services in question is brought into the assessment. It is wrong to consider the meaning of the words when used in other contexts, such as, in the present case, in recipes for home made play dough or craft literature. Moreover, here as elsewhere dictionaries are a dangerous guide if used in isolation. The question in every case is not the definition of words, but what the average consumer would understand, if he or she saw the mark in context, that the words were being used to mean.

It is plain that the weight to be given to the various factors in Lloyd can also vary from case to case. It may be harder for a trader to establish that a prima facie descriptive term has acquired a distinctive character in circumstances where it is the monopoly supplier. In the Philips case cited above, the referring court was held at [51] to have asked, in essence,

"whether, where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods is sufficient to give the sign distinctive character of the purposes of article 3(3) of the Directive in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates shape that trade, and no other undertaking, or believes the goods that show come from a trader in the absence of a statement to the contrary."