The “ESB” bitter maker successfully fought off a challenge to its trade mark registration, but it was “last orders” for any exclusive rights beyond bitter.
Who: Fuller Smith & Turner Plc and David West trading as "Eastenders"
When: January 2002
Where: Chancery Division of the High Court – London
Sensing an impending clash between its "ESP" (standing for "Eastenders Strong Pils") pilsner and Fuller's "ESB" (standing for "Extra Strong Bitter") bitter, David West trading as "Eastenders" applied to the court for revocation of Fuller's "ESB" registered trade mark. Fuller's had been using the "ESB" brand since 1971, and had registered it with effect from April 1988 in respect of beers in UK trade mark class 32.
Eastenders submitted that because "ESB" stood for a descriptive phrase, namely "extra strong bitter," it was therefore generic and not of sufficiently distinctive character to be usable on a monopoly basis by one trader in connection with its products. Alternatively, they argued that even if the court did not feel that Fuller's mark should be revoked altogether, it should at least restrict the ambit of the registration to "bitter" beer only, as opposed to all beers including lagers and pilsners.
On David West's first point, the court had no evidence in front of it suggesting that it was an established practice of the trade to use the initials "ESB" as a descriptive term for strong bitter beer. It should be noted here that the operative date for this assessment of trade usage was not the date of the hearing, but 1988, when Fuller's application to register "ESB" was first filed.
So the court's finding on this point meant that there was to be no total revocation of Fuller's registration. On David West's second argument for the restriction of the ambit of the registration to bitter beer only, however, the court was more receptive.
The court held that lager and bitter were commercially quite different types of beer and that there was little overlap between customers or trade marks in the two sectors.
Having reached this conclusion, the court then had to bear in mind that if a registered trademark can be shown not to have been used in connection with any particular type of product within its registration for five years or more, the brand’s owner stands to lose its exclusivity in respect of those products. Here, Fuller’s could produce no evidence of use of "ESB" in respect of lager at all and so here David West was victorious and Fuller’s "ESB" registration was restricted with immediate effect so as to cover only bitter beer.
Why this matters:
Marketinglaw has recently reported on a European Court of Justice case in respect of the registered trademark "Baby-dry." This is a Community Trade Mark owned by Procter and Gamble and was challenged on the basis that it was descriptive, given that it was registered in respect of nappies. The court threw out the argument, on the basis that in reality it was unlikely that any manufacturer or advertiser of nappies was going to use the actual phrase "Baby-dry" for descriptive purposes. Here in this "ESB" case, the same principle has been applied. However obvious it may be that the brand in question is an abbreviation or initialisation of a descriptive phrase applicable to the product, unless it can be shown that in the real world, day to day use has been made of the precise abbreviation in question, a "devoid of distinctive character therefore unregistrable" argument will not succeed.