Registration of mark denoting more than one potential proprietor - mark not devoid of any distinctive character - mark validly registered

Associated Newspapers Ltd and another v Express Newspapers: ChD (Mr Justice Laddie): 11 June 2003

The claimants were the proprietors of the Daily Mail and the London Evening Standard newspapers; the defendant was the proprietor of the Daily Express newspaper.

The defendant, in an attack on the claimants' London evening newspaper market, intended to launch a new free newspaper in the London area to be provisionally titled the London Evening Mail or the Evening Mail for which, it stated, it was entitled to use the abbreviation The Mail.

The claimants brought a claim against the defendant for, among other things, infringement of their registered mark in the sign and the defendant counterclaimed for revocation of that mark, alleging that it was invalid on the ground that the requirement provided by section 3(1)(b) of the Trade Marks Act 1994 was not met.

Pursuant to that section, trade marks which were devoid of distinctive character should not be registered.

Simon Thorley QC and Adrian Speck (instructed by Bird & Bird) for the claimants; Antony Watson QC and Mark Vanhegan (instructed by Ashurst Morris Crisp) for the defendant.

Held, allowing the claim in part and dismissing the counterclaim, that in order to demonstrate the validity of registration of a trade mark, by virtue of section 3(1)(b) of the 1994 Act, it was sufficient for the proprietor to show that the mark had 'any distinctive character', so that the mark did not have to be a unique identifier denoting only one proprietor; and that the Act contained a number of provisions which contemplated the co-existence of competing rights in the same mark, for example, registration in situations of honest concurrent use was permitted.