Passing off

An attack upon the validity of trade marks based on Art 3(1)(b) and (c) of Council Regulation (EC) 40/94 (on the Community trade mark) would not succeed if the mark had become distinctive (or had acquired distinctive character) as a result of the use made of it. There were thus two types of distinctiveness which were usually referred to as “inherent distinctiveness” and “acquired distinctiveness”. Acquired distinctiveness, in a claim for revocation, was to be tested as at the time when the claim to revoke was made. In deciding whether a trade mark was distinctive, the ultimate question was whether it was capable of distinguishing the goods or services of one undertaking from goods or services of another undertaking. That in turn had to be assessed in the context of the classes for which the mark was registered and, necessarily in the context of the trading conditions in which goods and services