England and Wales Court of Appeal (Civil Division) Decisions

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(Mr. Justice Ferris)

		Royal Courts of Justice Strand London WC2
		22nd February 1999

See also: [1998] EWCA Civ 683

LORD JUSTICE ALDOUS: Mr. Glory Osaji-Umeaku (the appellant) is the founder and director of a charity called the Abraham and Sarah Foundation. That charity carries on part of its work or did carry on part of its work using the name The British Foundation for Teaching Entrepreneurship, or BFTE for short.

The appellant appeals against the order of Ferris J of 30th October 1997 which dismissed with costs an originating summons of 29th April 1997. That originating summons was a substantial document in which the respondent is named as The National Foundation for Teaching Entrepreneurship Inc. It seeks revocation of three trade marks registered in the name of the respondent. I will come back to the originating summons but before doing so I must set out the background facts.

The respondent is an American organization which was established by Mr. Steven Mariotti in the late 1980s, early 1990s. It is a charitable organization which developed a new concept in teaching the benefits of business and entrepreneurship to disadvantaged young people in the United States of America. The appellant's relationship with that organisation was described by Mr. Mariotti in his statutory declaration. It seems that the appellant came to New York sometime in June 1992. Mr. Mariotti says that he spent one day with him, during which he took him through seven or eight basic lessons and showed him how to use their curriculum. He paid $1,000 for the services. Mr. Mariotti encouraged him to purchase the respondent's curriculum for use in a programme that he would teach in London and encouraged him to try and arrange for Mr. Mariotti to come to England to lecture and teach. He also suggested that the appellant should observe the teaching methods and the practice.

Three or four weeks later the appellant returned to New York to observe the teaching method. He sat in on one of Mr. Mariotti's classes for the week. He and the appellant were on friendly terms and he encouraged the appellant to become a professional teacher because he thought that he had the ability to teach in the field.

In a letter of 13th June 1992 the appellant writes on paper headed "The Abraham and Sarah Foundation". The letter opens by telling Mr. Mariotti that the appellant had arrived safely in London and that he had settled down to work and was now planning how to implement what he had been taught. It continues in this way:

"As you know there is a lot of preparation to do before I start your programme here. I hope with your help things will work out well for me. I have spent my first few days writing for sponsorship for the programme and I am optimistic that I will be successful in getting some sponsors to enable me to start the programme by the end of September 1992.

Here is my plan. My plan is to start the pilot programme i.e. the open day seminar on 20th to 2nd July 1992. The full programme (NFTE adapted) will start at the end of September, 1992. For your information, the programme here will be known as the British Foundation for Teaching Entrepreneurship (BFTE). ...

Here are some information on the agreement which we reached during my visit. I would be glad if you could confirm or give me your views on my requests.

...

It was agreed that I pay $100.00 each for one Bizbag - shipping, packing included and so also $60.00 for each Wizbag - shipping and packing included also. It was also agreed that all the contents of the Bizbag will carry the name: British Foundation for Teaching Entrepreneurship and not NFTE's name. Is it possible to do the bags in navy blue rather than black?

...

Terms of Payment

Please let me know your terms of payment or what terms the manufacturer(s) would want. As the supply of these resources are going to be on 'permanent' basis e.g. the BIZBAG and WIZBAG, I think that I can just place orders with the numbers of the product that I want and when I want them."

In the letter of 7th July, Mr. Mariotti, having thanked the appellant for his letter, states that he would like to come to London some time in September and sets out the fee that he would charge for the work that he was going to do. He continued in this way:

"I don't see a problem with making the BIZBAG navy blue and having it read 'BFTE' instead of 'NFTE'. However, I suggest that you write to Doane Moyer and have him call our manufacturer in Florida to be sure that the colour will not be a problem and to begin the ordering process now, especially because there is name and colour change. ...

As far as the workbook is concerned, I have to think about this a little more. I appreciate your concerns and obviously, it needs to be modified and translated into British terminology. However, it is copyrighted and published by NFTE and I need to investigate the legal implications of such changes. For now, I suggest that we use the NFTE workbook as it is. Again, I will inform Duane Moyer of this matter, and suggest that you speak with him directly to work this through. In addition, I suggest you speak to Duane about terms of payment, also. He will be able to help you better than I."

As is clear from the letters that I have read, there was at the start a working relationship between the respondent's organization and the British Foundation for Teaching Entrepreneurship.

On 9th September 1993 the appellant, I believe on behalf of the Abraham and Sarah Foundation, applied to register as a trade mark the initials BFTE together with the words "The British Foundation for Teaching Entrepreneurship". He sought to register that mark in class 41 in respect of "teaching and training services, all relating to entrepreneurship and to business enterprise; all included in class 41." That application proceeded under the number B1547355. The application came to the attention of the respondent which, on 10th November 1994, gave notice of opposition. They relied upon four grounds of opposition: first, that the appellant was not the bona fide owner of the mark applied for; second, that the mark offended the provisions of section 11 of the Trade Marks Act 1938; third, that it offended the provisions of section 12 of that Act, and, fourth, that it should not be registered in the discretion of the Registrar.

Evidence was filed on behalf of the parties and the matter came for decision by the Registrar. By a decision of 19th February, given by Mr. Harkness for the Registrar, the opposition was dismissed and the respondent was ordered to pay to the appellant £635 by way of costs. Mr. Harkness held that the appellant was, on the evidence, the proprietor of the trade mark application No. 1547355 and that there was no confusion between that application and the respondent's trade marks. It followed that the appellant had succeeded in the opposition and the application proceeded to registration as at 9th September 1993, with a disclaimer that the registration did not give a right to the exclusive use of the words "The British Foundation for Teaching Entrepreneurship".

To the Registrar's surprise the appellant appealed by way of originating motion dated 4th March 1997. That was clearly misguided, in that a successful party cannot appeal against a decision in his favour. It was therefore inevitable that his appeal should fail. It did, when on 19th March 1997 Jacob J dismissed it.

The appellant then issued on 29th April 1997 the originating summons, the subject of these proceedings. It contains 43 paragraphs, most of them alleging that three of the respondent's trade marks were invalid and should therefore be revoked. It came before the court on 14th May 1997 for directions. Neuberger J ordered that the respondent should serve points of defence and the applicant should serve points of reply. The appellant had already served his evidence-in-chief; therefore the judge ordered the respondent to serve its evidence in answer by 18th August 1997 and the appellant to serve any evidence that he wished to rely on in response by 22nd September. The motion was adjourned, as was the practice, to come on for hearing as a motion by order on a date to be fixed. It was in those circumstances that the matter came before Ferris J on 30th October 1997.

The respondent's marks which were sought to be revoked were numbered 1558295, 2105376 and 2105358. Trade mark No 1558295 consists of the letters NFTE. It was registered as of 18th December in respect of "Educational Services, all relating to business and entrepreneurship; all included in class 41". That was the mark relied upon by the respondent in the opposition proceedings. Trade mark No 2105376 was registered as of 18th July 1996 in respect of "Educational services all relating to business and entrepreneurship". It consists of an arm with its hand holding the handle of a briefcase on the side of which appears the words "National Foundation for Teaching Entrepreneurship". Trade mark No. 2105358 was also registered as of 18th July 1996. It is registered in class 41 for the same goods. It consists of a similar representation to trade mark 2105376 but instead of the words there appear the letters "NFTE".

Having looked through the alleged grounds of invalidity in the originating summons, it appears that the appellant sought to rely upon sections 3, 5(2), 9, 10, 11, 12(3), 13, 17 and 33 of the Trade Marks Act 1938. What is quite clear is that the appellant had not properly read the Trade Marks Act 1938 correctly, in that the power to rectify entries on the Register is contained in section 32 of the Act. Further, sections 3, 5(2) and 13 do not provide grounds for revocation of registered trade marks. Thus the grounds left were that the trade marks sought to be revoked were not registrable marks, as they contravened sections 11 and 12, and also that the respondent was not the bona fide proprietor of the trade marks. The suggestion that the marks were not registrable because they offended sections 11 and 12 was one which had been dealt with in the opposition. In essence, it was alleged that the respondent's trade marks were confusingly similar with the appellant's.

The Trade Marks Act 1994 came into force on 31st October 1994 repealing the Trade Marks Act 1938. It follows that the appellant's references to sections of the 1938 Act were misconceived, as it had been repealed before the proceedings were started. For that reason alone these proceedings were doomed to failure, as they are on appeal. However, I will later in this judgment consider the merits of the case upon the assumption that the appellant had identified the sections in the 1994 Act which correspond with those in the 1938 Act.

Ferris J came to consider the essential matters at page 4 of his judgment. He said this:

"Mr. Osaji-Umeaku issued the originating summons which is now before me on 29th April 1997. In it he asks in a large number of different paragraphs in various different ways for orders invalidating, revoking, expunging or otherwise deleting the three marks which have been registered in the United Kingdom by the American Foundation. On the face of the originating summons the case which Mr. Osaji-Umeaku seemed to wish to present on behalf of the charity was that the marks registered by the American Foundation were confusingly similar to the charity's mark to which I have already referred. In fact Mr. Osaji-Umeaku seems to me to have presented no such case. He has addressed me for a whole morning, drawing my attention to a large number of documents exhibited to an affirmation made by him, but those documents appear to me to be largely if not entirely irrelevant. None of them went to the issue of confusing similarity. What Mr. Osaji-Umeaku seemed to be saying was that he, or rather the charity, had the right to what he described as 'the programme', by which I understood him to mean the course materials and other details relating to the American Foundation's course, so as to enable him to present that course to students in the United Kingdom. So he may have. There is no evidence before me on which I can form any conclusion about that matter and it is not something which is directly raised in these proceedings. I understand that the American Foundation accepts that Mr. Osaji-Umeaku or his charity can continue to present a training course on the lines of that which Mr. Osaji-Umeaku learned in the United States from the American Foundation and can do so in the United Kingdom and can use for the purposes of that course existing stocks of materials which he has obtained from the American Foundation. Whether the American Foundation will supply him with new stocks if he asks for them is another matter and is not raised in these proceedings. It is not for me to enquire whether or not Mr. Osaji-Umeaku is entitled to those supplies. The American Foundation has made it very clear that if Mr. Osaji-Umeaku were to copy the materials which he has obtained from the American Foundation that would be an entirely different matter in respect of which the American Foundation might wish to enforce such rights as it has. Those are the sorts of matters which Mr. Osaji-Umeaku has spent the entire morning canvassing. They are all irrelevant to the issues raised by the originating summons. Time and again I drew Mr. Osaji-Umeaku's attention to the fact that they did all seem to me to be irrelevant and that none of them addressed the trade mark issue and eventually I thought it right to warn Mr. Osaji-Umeaku that the amount of time during which I would be prepared to listen to his submissions was limited and would expire at the short adjournment. Unfortunately, Mr. Osaji-Umeaku was unable or unwilling to direct his submissions to matters which seemed to me to be material and accordingly I declined to hear him after the short adjournment save for the purpose of hearing his answers to certain questions."

The grounds of appeal set out in the notice of appeal are, insofar as they seek to raise matters not included in the originating summons, irrelevant. Furthermore, most of them, or a substantial number of them, deal with the question of the similarity of the trade marks. It was alleged that the respondent's and the applicant's trade marks are confusingly similar. We have had the advantage of hearing Mr. Osaji-Umeaku in person, and he has made it clear that he no longer relies upon that ground of appeal. In my view, that admission was correctly made. He had contended before the Registrar that his mark and the respondent's marks were not confusingly similar. It would therefore be very surprising for him to come to this court with a reversal of roles so as to submit that the marks were confusingly similar particularly as he had succeeded in persuading the Registrar that they were not. In any case, I believe that Mr. Harkness came to the right conclusion upon the evidence.

The point which the appellant presses is his claim, he says, to be the proprietor of the trade mark NFTE and the other trade marks in which the name and initials are portrayed on the briefcase. His case is this. He says that he was the first person to use the trade mark NFTE and the other trade marks in the United Kingdom and, therefore, relying upon the decision of the Court of Appeal in AL BASSAM Trade Mark [1995] RPC 511, he is the proprietor. In those circumstances the American Foundation have no claim to be the proprietors of its registered trade marks.

The facts of this case are different to those in the AL BASSAM Trade Mark case. In AL BASSAM the trade mark had been applied in this country by Courtaulds and their predecessors on the yashmaghs they had supplied to the Middle East. The dispute between the parties was concerned with who was the proprietor. There was no suggestion that Courtaulds had in any way adopted or taken anybody else's trade mark. Mr. Osaji-Umeaku's case is this. He says that he had permission from the respondent to bring in goods marked with the trade mark. That agreement between the parties went further as demonstrated in the letter of 7th July, which I have read. He says that, as he was the first to bring in with the agreement of the respondent goods bearing the trade mark, that entitled him to be the proprietor of the trade mark. That does not stand analysis. He brought in the goods of the American Foundation, with their permission. He thereby established use by them in this country and a clear claim to be the proprietor. His case, to put it broadly, is that he could go to America, bring in goods with a trade mark applied in America and then legally steal the American Foundation's trade mark. The law does not allow that to be done. To be a proprietor it has to be a bona fide claim to be a proprietor. The appellant submitted there was an agreement between himself and the American Foundation, but that does not mean he has a bona fide claim to be the proprietor of the three trade marks of the respondent. I do not know whether there was a concluded agreement between the parties which would allow him to continue to use the trade marks, but the documents certainly do not demonstrate that there was one. In any case, the more he presses the submission that there was an agreement between the parties, the less his submission that he was the proprietor of the American trade marks stands up to analysis. That was in effect the only point that was pressed before us. In my view, this appeal could not succeed.

The appellant opened his submissions by saying that the application for the trade mark was made in his name and that he was acting on his own behalf. That was quite contrary to the findings of fact of the judge in his judgment. It is also quite contrary to the evidence which was before the judge and, in particular, the letter to which I have referred at page 601 of the bundle. What is clear is that back in June 1992, and in 1993, the appellant was acting on behalf of the Abraham and Sarah Foundation. That being so, I cannot see that the judge can be faulted in the findings of fact to which he came.

For the reasons which I have given, I would dismiss the appeal.

LORD JUSTICE SWINTON THOMAS: I agree.

THE PRESIDENT: I also agree.

Order: Appeal dismissed with costs assessed in the sum of £3,500; application for leave to appeal to House of Lords refused.

(Order not part of the judgment of the court)