BABY-DRY approved in bitter beer battle

In West v Fuller Smith & Turner plc, the Court of Appeal has upheld a first instance finding limiting Fuller Smith & Turner's (Fuller) registration of the trademark ESB for beers so that it covers only bitter beers. The decision also marks an important UK confirmation of the European Court of Justice's (ECJ) findings in Procter & Gamble v Office for Harmonization in the Internal Market - the BABY-DRY Case.

David West, an individual trading under the name 'Eastenders', brought an action to revoke Fuller's UK trademark registration ESB (an acronym for 'extra special bitter') for beers. He argued that the mark was:

• devoid of distinctive character as it had become incapable of distinguishing Fuller's products from those of any other brewery;
  
  
• descriptive pursuant to Sections 3(1)(b), (c) and (d) of the Trademarks Act 1994; and
  
  
• invalid for non-use as it had been used only in conjunction with bitter beers and not all types of beer as indicated in the registration specifications.

At first instance, the court held that the mark had become distinctive through use and was not descriptive. However, it limited the registration to cover only bitter beers. The court followed the ECJ's guidance in the BABY-DRY Case and set out the following principles to help determine whether or not a sign is descriptive:

• Sections 3(1)(b), (c) and (d) of the Trademarks Act are not designed to exclude from registration marks which merely possess an indirect descriptive connotation. Courts should give effect to all the words set out in each of the subsections.
  
  
• A certain level of (i) mental activity to discern whether the sign refers to the quality or character of the goods to which it relates; or (ii) uncertainty as to the precise nature of the sign's reference to the quality or character of those goods may help to eliminate descriptiveness.
  
  
• Marks which can only refer directly to the quality or character of the goods (eg, BITTER for beer) must be refused registration.

The appellate court affirmed the lower court's principles (thereby approving the ECJ's decision in BABY-DRY) and agreed that the mark was not descriptive. The court also affirmed the lower court's limitation of the ESB registration to bitter beers since the notional average consumer would associate the mark with only that use.

Ashley Blake, Bird & Bird, London