Important  

Trade Marks

Case Note: Healing Herbs Ltd v Bach Flower Remedies
Ltd. (Appeal and Decision at First Instance)

John Lambert
15 Nov 1999
This case note originally appeared on the Lancaster Building website

This was an appeal from Neuberger J's declaration that the registration of various word marks consisting of, or including, the proper noun "Bach" for various products or publications in classes 5 and 16 was invalid (see Healing Herbs Ltd. v Bach Flower Remedies Ltd.). The importance of this case lies in the analysis of s. 1 (1) of the Trade Marks Act 1994 and of the circumstances in which a mark may become distinctive
through use in the light of the decisions of the European Court of Justice in Windsurfing Chiemsee and Lloyd Schufabrik Meyer  and of the Court of Appeal Philllips Electronics NV v Remington Consumer Products Ltd. [1999] EWCA 1340.

 

The Facts
The appellant company, Bach Flower Remedies Ltd., ("Flower") was formed to continue the work of devising herbal remedies that the late Edward Bach ("Dr. Bach") had carried on from his home in Sotwell, Oxfordshire. Until the mid-1980s Flower made no attempt to discourage other producers who made preparations in accordance with Dr. Bach's teachings from associating their wares with his name. Many publications referred to "Bach" remedies in a generic sense. But between February 1979 and April 1991 Flower registered various trade marks under the Trade Marks Act 1938 consisting of or incorporating the word BACH in classes 5 and 16. The respondent, Healing Herbs Ltd., ("Herbs") was established by one Julian Barnard, who admired Dr. Bachs work but who was not accepted by Dr. Bach's successors. Herbs applied for declarations that each of Flower's marks was invalid on the ground that it had been registered in breach of section 3 of the Trade Marks Act 1994 pursuant to section 47 (1). Neuberger J acceded to the application in all respects except for various signature and device marks that he allowed to remain on the register subject to a disclaimer of the words "BACH" and "FLOWER REMEDIES" on the ground that the sign Bach designated herbal remedies made in accordance with the teachings of Dr. Bach and therefore fell within the ambit of section 3 (1) (c) of the Act. Flower appealed on the ground that the judge had failed to consider whether the marks in suit were capable of distinguishing one undertaking from those of others and whether they had acquired a distinctive character in relation to flower remedies in consequence of use since registration.

The Issues
S. 47 (1) of the 1994 Act provides that a trade mark may be declared invalid on the ground that it was registered in breach of s. 3 or any of the other absolute grounds of refusal. Section 3 (1) provides that
the following shall not be registered:

1. signs which do not satisfy the requirements of s. 1 (1) of the Act;

2. trade marks which are devoid of any distinctive character;

3. trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, production, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;

4. trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

A proviso to the subsection allows a trade mark falling within paragraphs (b), (c) or (d) to be registered that have in fact acquired a distinctive character as a result of the use made of it. Similarly, a trade mark registered in breach of any of those paragraphs may not be declared invalid if, in consequence of the use made of it, it acquires a distinctive character in relation to the goods or services for which it was registered after registration. Flower argued, first, that the judge was entitled to ignore the provisos to ss. 3 (1) and 47 (1) only if he had found the mark to have been registered in breach of section 3 (1) (a). Herbal agreed with that contention but for different reasons. Secondly, having found the registration to have been in breach of s. 3 (1) (c) the judge erred in failing to consider whether the marks had acquired a distinctive character since registration. The issues before the Court of Appeal were whether registration was in breach of s. 3 (1) (a) and whether the marks had acquired a distinctive character in relation to flower remedies since registration.

Whether "Bach" was capable of distinguishing Flower's Goods
Although not one of the grounds on which Neuberger J found for Herbs, the Court of Appeal held that "Bach" was not a trade mark within the meaning of s. 1 (1) of the Trade Marks Act 1994. That section defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings." The Court of Appeal approached the
question of whether a word was capable of distinguishing goods or services by  considering what the word meant, which in turn required it to consider how the word was used. As Morritt LJ put it:

"I accept the submission that the meaning of a word may depend on its usage. It is not uncommon for a proper name, by use, to acquire an adjectival meaning which is descriptive of the article to which it is applied. Examples given in the course of argument demonstrate the point. Thus the terms 'a Bunsen burner' and 'a Wellington boot' are wholly descriptive and cannot, without more, distinguish such burners or boots of one undertaking from those of another. In accordance with that use the expression has become the common name in the trade for the product in question."

The question was therefore, whether the word "BACH" had by the date of registration acquired a descriptive, adjectival meaning among those engaged in the relevant trade or activity so as to be incapable of distinguishing. There had been some evidence before Neuberger J that some shop assistants associated the noun "Bach" with Flower but that did not displace the judge's conclusion that the sign was used and
understood in the generic sense. As neither the proviso to section 3 (1) nor the proviso to s. 47 (1) applied to trade marks which had been registered in breach of s. 3 (1) (a), the appeal failed on that ground alone.

Whether the Words "Bach Flower Remedies" and "Bach" simpliciter has acquired a Distinctive Character in Consequence of Use since Registration
The Court found for Herbs on this point too. Relying on Viscount Maugham's endorsement in The Shredded Wheat Co. Ltd. v Kellogg Co. of Great Britain Ltd [1940] 57 RPC 137. Parker J's dicta in Re Gramophone Company's Application [1910] 2 Ch 423 and Jacob J's observation in British Sugar Plc v James Robertson & Sons Ltd. [1996] RPC 281  that a common descriptive term needs to displace a word's original meaning in order to become distinctive, the Court considered whether Flower had shown that "Bach" had acquired a distinctive character among consumers. That was essentially a matter of fact and the materials before the judge were not enough to discharge that evidential burden. Indeed, there was substantial written and oral evidence that went the other way.

Approach to determining whether a Sign is capable of distinguishing Goods or Services
In a short but interesting concurring judgment, Chadwick LJ opined that, in a case such as this, it is necessary to decide whether the word mark satisfied the  requirements of s. 1 (1) before going on to consider the other paragraphs in section 3 (1) and the provisos to that section and to s. 47 (1):

"The reason, in my view, is that in a case (such as the present) where the words have or may have acquired an established meaning through use at some date before registration it is impossible to reach a proper conclusion under either of the provisos without first identifying what that meaning was; and deciding whether (having acquired that meaning) the words were any longer capable (if they once were) of having a distinctive character or of acquiring a distinctive character by reason of further use after that date - whether before or after
registration."

Flower had argued that a surname must necessarily fall outside section 1 (1) but its submission did not take account of the fact that the word "Bach" has acquired an extended secondary meaning of remedies prepared in accordance with the teachings of Dr. Bach.

Comment
 

One of the problems of the Court of Appeal's test of whether a sign is capable of distinguishing an undertaking's goods or services for the purpose of s. 1 (1) is that it is very difficult to envisage a descriptive word that is inherently incapable of acquiring a distinctive character provided enough time and money are devoted to marketing to consumers. In Chiemsee the European Court held that the following factors should be taken into account:

	the market share held by the mark
	how intensive, geographically widespread and longstanding the use of the mark has been
	the amount invested in promoting the mark
	the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking, and
	statements from chambers of commerce or other trade and professional associations.

Language changes with the passage of time and there is no reason in principle why a word that has through use become descriptive for one generation of consumers could not acquire a distinctive character for the next. The policy behind s. 1 (1) is obviously to prevent monopolizing signs that ought to be common to all traders or prospective traders. If the construction of the section is regarded as one of policy it becomes very much easier to reconcile paragraph (a) of s. 3 (1) with paragraphs (b) (c) and (d). Permission to appeal to the House of Lords was refused, which is a pity because ss. 1 and 3 would benefit from judicial scrutiny at the highest level.

Articles
John Lambert The Trade Marks Act 1994
John Lambert The Trade Marks Rules 2000
3 May 2000

John Lambert Community Trade Marks
9 April 2003