When an attempt is made to challenge the validity of a trade mark, the first issue to resolve is whether or not the trade mark is ‘distinctive’ – in other words, whether or not it is capable of distinguishing the goods or services to which it is linked from those of other providers within the trade mark classes in which it is registered.



There are two sorts of distinctiveness – ‘inherent distinctiveness’, such as the Nike ‘swoosh’, and ‘acquired distinctiveness’, which depends on the impact in the relevant market.



Since the registration of a trade mark confers exclusive use within a class of goods or services, opposition to it can be successful based on the likelihood that it will create confusion with another product.



In a recent case, a trade mark application (which was essentially the word ‘Fine’ in logos of different designs used in the property market) was successfully opposed on the basis that its registration would cause confusion with the trade mark ‘Fine & Country’, a brand name used by firms of estate agents to compete with national agencies specialising in ‘high-end’ residential properties.



Although the judge was not persuaded that measurable damage to the ‘Fine & Country’ brand had yet occurred, he considered that there was a realistic risk of damage in the future. The likely damage that he perceived was the erosion or dilution of the Fine & Country brand. Accordingly he granted an injunction against the use of the name Fine and ordered ‘an inquiry as to damages or, at the claimants’ option an account of profits’.



An appeal – running to 86 paragraphs of argument – was lodged in the Court of Appeal. The key issue in the decision was whether or not there was a genuine risk of confusion among buyers in the market that the two marks represented that same brand.



The Court rejected the appeal, ruling that:

• The use of the word ‘Fine’ gave rise not merely to confusion but to consumer deception;
• It was likely to cause damage to the trade marks of the claimant;
• The defendants were (or ought to have been) aware of the risk of confusion;
• The original Fine & Country trade marks had a reputation and the making of a link with them would be to the benefit of the Fine brand; and
• It was unfair of the defendants intentionally to adopt a sign which they knew was similar in appearance to the existing trade marks.