a term which directly describes a characteristic of a product and a term which indirectly suggests such characteristic. 20. For example, despite being a form of covering, a condom may when used conceivably give one a sensation of “nakedness”. This feeling may be attributable (as Ms. Luck posited) to the “sheerness” of a condom. The condom is so thin that it feels as if one had no covering and was not wearing anything. 21. Mr. Shipp complains that Ms. Luck has conflated the attribute of “sheerness” with the sensation of “nakedness” induced by the attribute of “sheerness”. The attribute and the sensation derived therefrom (Mr. Shipp contends) are not the same thing. 22. How then does one tell where the line is to be drawn between a word which designates a characteristic and another which merely evokes the characteristic? 23. In his Opinion in P OHIM [Office for Harmonization in the Internal Market] v. WM Wrigley Jr. Company (DOUBLEMINT) [2004] RPC 18, Advocate General Jacobs considered this question in the context of European legislation similar to TMO s.11(1)(c). He said (at §§ A57-A66):- “There is clearly a line to be drawn between terms which may be used to designate products or their characteristics and those which are merely suggestive of such characteristics. The latter may be registered and are obviously of great value to the trade mark owner. Exactly where that line is to be drawn is however less clear. In each case, there will come a point where an individual decision must be made. However, some general guidelines may be suggested. First, it is important not to lose sight of the question which has to be answered: in relation to the product or products for which registration is sought, is this a sign or indication which may serve in trade to designate a characteristic covered by Art.7(1)(c) [similar to TMO s.11(1)(c)]? Next, if one looks at the case law of the Court of First Instance and the decisions of the Boards of Appeal and indeed at the case law of many national courts it becomes apparent that the criteria which have regularly been applied, although expressed in various forms of words, fall within a number of consistent categories. In what follows I do not seek to innovate, or to improve on those criteria, but rather to suggest a framework within which they may be placed with a view to facilitating the assessment. It seems obvious that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it. There is no precise point at which a term suddenly switches from one category to the other, but rather a sliding scale between two extremes and an element of subjective judgment will often be required in order to determine which extreme a term is closer. In the light of existing practice and case law, and with a view to establishing a slightly greater degree of objectivity, I would suggest that a proposed trade mark should be assessed from three points of view, although I would not claim that list to be final and exhaustive. The first point of view concerns the way in which a term relates to a product or one of its characteristics. The more factual and objective that relationship, the more likely it is that the term may be used as a designation in trade, so that registration will be precluded by Art.7(1)(c); conversely, the more imaginative and subjective the relationship the more acceptable the term will be for registration. The second point of view concerns the way in which a term is perceived: how immediately is the message conveyed? The more ordinary, definite and down-to-earth a term is, the more readily a consumer will apprehend any designation of a characteristic and the more likely the term thus is not to qualify for registration as a trade mark. Where at the other extreme the skills of a cryptic-crossword enthusiast are needed in order to detect any connection with the designated characteristic, the grounds for refusing registration are very weak indeed. The third point of view concerns the significance of the characteristic in relation to the product, in particular in the consumer’s mind. Where the characteristic designated is essential or central to the product, or is of a particular importance in a consumer’s choice, then the case for refusing registration is compelling; where the designation is of a characteristic that is purely incidental or arbitrary, the case is considerably weaker. I would stress, however, that the question of precision, accuracy or factual correctness is not normally relevant to the examination from any of those points of view. As I have stated above, practically any designation of a product characteristic can be rendered more precise, and it is obvious that descriptions used in trade may be untruthful while still serving to designate product characteristics; indeed, it is for that very reason that misleading descriptions are generally prohibited.” 24. I accept that Advocate General Jacobs’ “viewpoints” provide a practical, non-exhaustive guideline for assessing whether a term is descriptive or suggestive of an attribute. 25. Plainly, Ms. Luck regarded the word “naked” as falling within the descriptive end of Advocate General Jacobs’ sliding scale. But, according every respect and deference to Ms. Luk’s views on behalf of the Registrar, I am not persuaded by her assessment. 26. Consider Advocate General Jacobs’ first viewpoint. 27. The term “naked” in fact bears no direct objective relation to a condom. This is because the adjective “naked” would not conventionally be used in English to modify the word “condom”. It would be contradictory to describe a “condom” (a form of covering) as being “naked” (being without covering). 28. That does not mean that a state of “nakedness” can have no relationship with condoms. It would, however, take some imagination to link “nakedness” with any attributes of a condom. 29. One might, for instance, imagine that 2 persons who wish to engage in safe sexual intercourse would desire to have as much intimate physical contact with each other while nonetheless protecting themselves by using a prophylactic device. The less obtrusive the condom as a result of its attributes (including sheerness, colour, weight and comfort), the more exposed and uncovered each person would feel before the other. 30. Accordingly, some possibly desirable attributes of a condom can be suggestive of nakedness, while the state of nakedness itself may suggest attributes which would be desirable in a condom. But such evocations would only be at a remove from objective fact and would require some recourse to subjective imagination. 31. This indirectness is implicitly recognised (I think) in the submission of Mr. Edward Alder (appearing for the Registrar). He argues that “naked” is descriptive (albeit elliptically) of the attribute “permissive of a feeling of nakedness” which a desirable condom might possess. To my mind, however, Mr. Alder’s argument effectively acknowledges that on a sliding scale “naked” is more suggestive than descriptive. 32. Move to the second viewpoint. 33. I would accept that, as a word, “naked” may be as “down-to-earth” as one may get. But again, precisely because of the paradox inherent in describing a form of covering as an absence of covering, the link between “nakedness” and the characteristics of a condom is not immediately discernible. 34. One would need something of the mind of a puzzle enthusiast or (possibly) a poet to perceive the relationship between “nakedness” and the characteristics of a condom. 35. Finally, take the third viewpoint. 36. Ms. Luck posited that the word “naked” was suggestive of the sheerness of a condom. But I am far from certain that such would be the only attribute that “naked” might convey. The feeling of nakedness may, as I have already mentioned, equally arise because of one or more factors, such as the lightness, comfort or transparency of a condom. 37. The reality is that the word “naked” will suggest different bundles of attributes to different persons, depending on the sensibility of their imaginations. The characteristics of a condom that might be conveyed by the word “naked” to any given person would be variable, elusive and incapable of full articulation. 38. I cannot conclude then that the characteristics of a condom supposedly designated by the word “naked” would be otherwise than arbitrary or subjective. 39. Mr. Edward Alder has drawn my attention to 2 cases which he submits support the Registrar’s case by analogy. However, I am unable to draw much assistance from the 2 cases. 40. In SUMMER LOOK (O-358-07, A. Pike, 7 December 2007) it was sought to register the mark “SUMMER LOOK” in respect of cosmetics. There the Appointed Person held (at §19) that the mark would be regarded “as a combination of words indicating that which will be perceived by the relevant consumer as a reference to the season for which these particular goods are most suitable”. 41. It seems to me therefore that “Summer Look” was much closer to being at the descriptive end of the sliding scale. The words describe an attribute of cosmetics, namely, their suitability for use during the summer. 42. In SLIMWEAR (O-146-08, O. Morris, 22 May 2008) it was sought to register the mark “SLIMWEAR” in respect of clothing, footwear and headgear. The Appointed Person disallowed the application in relation to clothing and footwear. This was because he thought (at §11) that the mark “alludes to a type of category of clothing that in some way makes the wearer look slim”. But he allowed the mark for headgear as such “did not strike [him] as being likely to give a slim effect”. 43. Again, it seems to me that the mark “slimwear” was closer to describing an attribute of their intended goods, namely, “wear intended to make the wearer become (even if just on a temporary basis whilst the goods are being worn) slim” ( SLIMWEAR AT §15). 44. For all the foregoing reasons, the proposed mark (“NAKED”) does not directly describe a characteristic of condoms. Registration of the proposed mark would therefore not contravene TMO s.11(1)(c). 45. The mark was rejected for registration on the alternative basis that, since the mark described an attribute of the relevant product, it could not be distinctive as required by TMO s.11(1)(b). It follows from my conclusion on TMO s.11(1)(c) that registration would also not contravene TMO s.11(1)(b). 46. Mr. Alder suggests that the word “naked” is incapable of identifying condoms that originate from a particular undertaking. 47. But, in my judgment, since the term is unlikely to evoke a specific bundle of attributes in the minds of consumers, but is instead likely to connote different things to different people, the mark is capable of identifying the products of a particular undertaking in the mind of a given person. In my view, the mark is capable of bearing a distinctive character. 48. Mr. Alder has drawn my attention to DELIBERATELY INNOVATIVE (O/325/07, G. Hobbs QC, 30 October 2007). 49. There the Appointed Person held that the proposed mark (“Deliberately Innovative”) for computer programs could simply be regarded as referring to the goods of “a company which prides itself on adopting a programme of purposefully delivering state of the art technology to the public”. The mark was not enough to designate a particular undertaking in the minds of a person. 50. But this case is different. “Naked” would not normally be taken as a generic description of any undertaking producing condoms. B Ground 2: Internet references 51. Mr. Shipp says that Ms. Luck attached too much weight to the internet hits. 52. But the real issue seems to me not so much the weight to be given to the references, as to their consistency with the foregoing discussion on Ground 1. 53. All three references do not use “naked” to refer directly to some or other particular attribute of a condom. They instead explicitly employ the adjective to describe the supposed feeling or sensation which use of a product will allegedly induce. The adjectives “naked” or “almost-naked” modify the experience to be derived from the product, not the product itself. 54. Thus, if anything, the web hits support the conclusion reached on Ground 1. To use the terminology of Advocate General Jacobs’ sliding scale, the word “naked” is more suggestive of the characteristics of a condom, than descriptive of any specific attributes of a condom. C Ground 3: European registration 55. Mr. Shipp says that weight should have been accorded to the successful registration of “NAKED” in Europe. But, for precisely the reason given by Ms. Luck, I do not derive much help from the bare fact of such registration. IV. CONCLUSION 56. Creative’s appeal against the Registrar’s refusal is allowed. (A. T. Reyes) Judge of the Court of First Instance High Court Mr Colin A Shipp, instructed by Messrs Anthony Evans & Co., for the

a term which indirectly suggests such characteristic. 20. For example, despite being a form of covering, a condom may when used conceivably give one a sensation of “nakedness”. This feeling may be attributable (as Ms. Luck posited) to the “sheerness” of a condom. The condom is so thin that it feels as if one had no covering and was not wearing anything. 21. Mr. Shipp complains that Ms. Luck has conflated the attribute of “sheerness” with the sensation of “nakedness” induced by the attribute of “sheerness”. The attribute and the sensation derived therefrom (Mr. Shipp contends) are not the same thing. 22. How then does one tell where the line is to be drawn between a word which designates a characteristic and another which merely evokes the characteristic? 23. In his Opinion in P OHIM [Office for Harmonization in the Internal Market] v. WM Wrigley Jr. Company (DOUBLEMINT) [2004] RPC 18, Advocate General Jacobs considered this question in the context of European legislation similar to TMO s.11(1)(c). He said (at §§ A57-A66):- “There is clearly a line to be drawn between terms which may be used to designate products or their characteristics and those which are merely suggestive of such characteristics. The latter may be registered and are obviously of great value to the trade mark owner. Exactly where that line is to be drawn is however less clear. In each case, there will come a point where an individual decision must be made. However, some general guidelines may be suggested. First, it is important not to lose sight of the question which has to be answered: in relation to the product or products for which registration is sought, is this a sign or indication which may serve in trade to designate a characteristic covered by Art.7(1)(c) [similar to TMO s.11(1)(c)]? Next, if one looks at the case law of the Court of First Instance and the decisions of the Boards of Appeal and indeed at the case law of many national courts it becomes apparent that the criteria which have regularly been applied, although expressed in various forms of words, fall within a number of consistent categories. In what follows I do not seek to innovate, or to improve on those criteria, but rather to suggest a framework within which they may be placed with a view to facilitating the assessment. It seems obvious that there is no clear-cut distinction between indications which designate a characteristic and those which merely allude suggestively to it. There is no precise point at which a term suddenly switches from one category to the other, but rather a sliding scale between two extremes and an element of subjective judgment will often be required in order to determine which extreme a term is closer. In the light of existing practice and case law, and with a view to establishing a slightly greater degree of objectivity, I would suggest that a proposed trade mark should be assessed from three points of view, although I would not claim that list to be final and exhaustive. The first point of view concerns the way in which a term relates to a product or one of its characteristics. The more factual and objective that relationship, the more likely it is that the term may be used as a designation in trade, so that registration will be precluded by Art.7(1)(c); conversely, the more imaginative and subjective the relationship the more acceptable the term will be for registration. The second point of view concerns the way in which a term is perceived: how immediately is the message conveyed? The more ordinary, definite and down-to-earth a term is, the more readily a consumer will apprehend any designation of a characteristic and the more likely the term thus is not to qualify for registration as a trade mark. Where at the other extreme the skills of a cryptic-crossword enthusiast are needed in order to detect any connection with the designated characteristic, the grounds for refusing registration are very weak indeed. The third point of view concerns the significance of the characteristic in relation to the product, in particular in the consumer’s mind. Where the characteristic designated is essential or central to the product, or is of a particular importance in a consumer’s choice, then the case for refusing registration is compelling; where the designation is of a characteristic that is purely incidental or arbitrary, the case is considerably weaker. I would stress, however, that the question of precision, accuracy or factual correctness is not normally relevant to the examination from any of those points of view. As I have stated above, practically any designation of a product characteristic can be rendered more precise, and it is obvious that descriptions used in trade may be untruthful while still serving to designate product characteristics; indeed, it is for that very reason that misleading descriptions are generally prohibited.” 24. I accept that Advocate General Jacobs’ “viewpoints” provide a practical, non-exhaustive guideline for assessing whether a term is descriptive or suggestive of an attribute. 25. Plainly, Ms. Luck regarded the word “naked” as falling within the descriptive end of Advocate General Jacobs’ sliding scale. But, according every respect and deference to Ms. Luk’s views on behalf of the Registrar, I am not persuaded by her assessment. 26. Consider Advocate General Jacobs’ first viewpoint. 27. The term “naked” in fact bears no direct objective relation to a condom. This is because the adjective “naked” would not conventionally be used in English to modify the word “condom”. It would be contradictory to describe a “condom” (a form of covering) as being “naked” (being without covering). 28. That does not mean that a state of “nakedness” can have no relationship with condoms. It would, however, take some imagination to link “nakedness” with any attributes of a condom. 29. One might, for instance, imagine that 2 persons who wish to engage in safe sexual intercourse would desire to have as much intimate physical contact with each other while nonetheless protecting themselves by using a prophylactic device. The less obtrusive the condom as a result of its attributes (including sheerness, colour, weight and comfort), the more exposed and uncovered each person would feel before the other. 30. Accordingly, some possibly desirable attributes of a condom can be suggestive of nakedness, while the state of nakedness itself may suggest attributes which would be desirable in a condom. But such evocations would only be at a remove from objective fact and would require some recourse to subjective imagination. 31. This indirectness is implicitly recognised (I think) in the submission of Mr. Edward Alder (appearing for the Registrar). He argues that “naked” is descriptive (albeit elliptically) of the attribute “permissive of a feeling of nakedness” which a desirable condom might possess. To my mind, however, Mr. Alder’s argument effectively acknowledges that on a sliding scale “naked” is more suggestive than descriptive. 32. Move to the second viewpoint. 33. I would accept that, as a word, “naked” may be as “down-to-earth” as one may get. But again, precisely because of the paradox inherent in describing a form of covering as an absence of covering, the link between “nakedness” and the characteristics of a condom is not immediately discernible. 34. One would need something of the mind of a puzzle enthusiast or (possibly) a poet to perceive the relationship between “nakedness” and the characteristics of a condom. 35. Finally, take the third viewpoint. 36. Ms. Luck posited that the word “naked” was suggestive of the sheerness of a condom. But I am far from certain that such would be the only attribute that “naked” might convey. The feeling of nakedness may, as I have already mentioned, equally arise because of one or more factors, such as the lightness, comfort or transparency of a condom. 37. The reality is that the word “naked” will suggest different bundles of attributes to different persons, depending on the sensibility of their imaginations. The characteristics of a condom that might be conveyed by the word “naked” to any given person would be variable, elusive and incapable of full articulation. 38. I cannot conclude then that the characteristics of a condom supposedly designated by the word “naked” would be otherwise than arbitrary or subjective. 39. Mr. Edward Alder has drawn my attention to 2 cases which he submits support the Registrar’s case by analogy. However, I am unable to draw much assistance from the 2 cases. 40. In SUMMER LOOK (O-358-07, A. Pike, 7 December 2007) it was sought to register the mark “SUMMER LOOK” in respect of cosmetics. There the Appointed Person held (at §19) that the mark would be regarded “as a combination of words indicating that which will be perceived by the relevant consumer as a reference to the season for which these particular goods are most suitable”. 41. It seems to me therefore that “Summer Look” was much closer to being at the descriptive end of the sliding scale. The words describe an attribute of cosmetics, namely, their suitability for use during the summer. 42. In SLIMWEAR (O-146-08, O. Morris, 22 May 2008) it was sought to register the mark “SLIMWEAR” in respect of clothing, footwear and headgear. The Appointed Person disallowed the application in relation to clothing and footwear. This was because he thought (at §11) that the mark “alludes to a type of category of clothing that in some way makes the wearer look slim”. But he allowed the mark for headgear as such “did not strike [him] as being likely to give a slim effect”. 43. Again, it seems to me that the mark “slimwear” was closer to describing an attribute of their intended goods, namely, “wear intended to make the wearer become (even if just on a temporary basis whilst the goods are being worn) slim” ( SLIMWEAR AT §15). 44. For all the foregoing reasons, the proposed mark (“NAKED”) does not directly describe a characteristic of condoms. Registration of the proposed mark would therefore not contravene TMO s.11(1)(c). 45. The mark was rejected for registration on the alternative basis that, since the mark described an attribute of the relevant product, it could not be distinctive as required by TMO s.11(1)(b). It follows from my conclusion on TMO s.11(1)(c) that registration would also not contravene TMO s.11(1)(b). 46. Mr. Alder suggests that the word “naked” is incapable of identifying condoms that originate from a particular undertaking. 47. But, in my judgment, since the term is unlikely to evoke a specific bundle of attributes in the minds of consumers, but is instead likely to connote different things to different people, the mark is capable of identifying the products of a particular undertaking in the mind of a given person. In my view, the mark is capable of bearing a distinctive character. 48. Mr. Alder has drawn my attention to DELIBERATELY INNOVATIVE (O/325/07, G. Hobbs QC, 30 October 2007). 49. There the Appointed Person held that the proposed mark (“Deliberately Innovative”) for computer programs could simply be regarded as referring to the goods of “a company which prides itself on adopting a programme of purposefully delivering state of the art technology to the public”. The mark was not enough to designate a particular undertaking in the minds of a person. 50. But this case is different. “Naked” would not normally be taken as a generic description of any undertaking producing condoms. B Ground 2: Internet references 51. Mr. Shipp says that Ms. Luck attached too much weight to the internet hits. 52. But the real issue seems to me not so much the weight to be given to the references, as to their consistency with the foregoing discussion on Ground 1. 53. All three references do not use “naked” to refer directly to some or other particular attribute of a condom. They instead explicitly employ the adjective to describe the supposed feeling or sensation which use of a product will allegedly induce. The adjectives “naked” or “almost-naked” modify the experience to be derived from the product, not the product itself. 54. Thus, if anything, the web hits support the conclusion reached on Ground 1. To use the terminology of Advocate General Jacobs’ sliding scale, the word “naked” is more suggestive of the characteristics of a condom, than descriptive of any specific attributes of a condom. C Ground 3: European registration 55. Mr. Shipp says that weight should have been accorded to the successful registration of “NAKED” in Europe. But, for precisely the reason given by Ms. Luck, I do not derive much help from the bare fact of such registration. IV. CONCLUSION 56. Creative’s appeal against the Registrar’s refusal is allowed. (A. T. Reyes) Judge of the Court of First Instance High Court Mr Colin A Shipp, instructed by Messrs Anthony Evans & Co., for the Appellant Mr Edward Alder, instructed by the Department of Justice, for the

Mr Colin A Shipp, instructed by Messrs Anthony Evans & Co

Mr Edward Alder; the Department of Justice