COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM MR JUSTICE LADDIE
London, WC2A 2LL
Wednesday 12th December, 2001
B e f o r e :
LORD JUSTICE MUMMERY
LORD JUSTICE SEDLEY
| RELIANCE WATER CONTROLS LTD
|- and -
Smith Bernal Reporting Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr I Purvis (instructed by Squire and Co for the Respondent)
Mr D Alexander (instructed by the Treasury Solicitor for the Registrar of Trade Marks)
Crown Copyright ©
LORD JUSTICE MUMMERY :
Application to Register
"Valves; valves for use in water circulation; blending valves; and all other goods/services in this Class."
"Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs."
"It is requested that the above application should be restricted to the first form of the mark, CAREMIX, and on this basis we trust this application can proceed to advertisement at an early date."
"As discussed, we believe the above application had been incorrectly classified and should be in Class 11 rather than Class 7. To illustrate this point enclosed is a copy of a draft mailer bearing the mark of the present application along with an excerpt from a catalogue of the Applicants' Italian parent company illustrating other mixing (blending) valves.
We request that this application is transferred to Class 11 for the specification of goods as filed. This matter is of particular urgency to the Applicants and we should therefore be grateful for an indication to this transfer has taken place and the above application is proceeding to advertisement. We look forward to hearing from the Registry concerning this application."
"Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes."
"I now refer to our telephone conversation of 07 May regarding the specification of goods in this case, in which you stated your belief that this application had been filled in the wrong class of goods, since you now think that the applicant's goods are proper to Class 11, being parts and fittings for plumbing installations. I would be pleased to consider any submissions which you may wish to make on this point and request that you supply me with further information, eg. advertising brochures or materials which are produced by the applicant in relation to these goods, in order that a decision regarding the appropriate class for these goods may be reached.
If you do not reply within two months from the date of this letter, the application will be refused."
"I am pleased to confirm that the goods claimed do appear to be proper to Class 11 and not to Class 7 as filed, consequently I will arrange for this application to be immediately transferred to the correct class.
As there are now no further outstanding objections or requirements I will arrange for this application to proceed to advertisement on the following basis:
The second mark shown on Form TM3 is to be deleted, ie, the application will proceed for the single word mark "CAREMIX" only.
The specification of goods (in Class 11) will be amended as follows:
Valves; valves for use in water circulation; blending valves. "
"5. The Opponents submit that the amendment from Class 07 to Class 11 was contrary to the provisions of Section 39(2) of the Act as it effectively adds goods not covered by the original application.
7. From the Applicants' request to the examiner in May/June 1997, it is clear that the Applicants had no bona fide intention of using the mark in relation to any of the goods specified in the Application as filed in Class 07, so the Opponents submit that the Application was filed in bad faith such that, under the provisions of Section 3(6) of the Act, the mark should not be allowed to proceed to registration".
Statutory Provisions and Rules
"(1) An application for registration of a trade mark shall be made to the registrar
(2) The application shall contain –
(a) a request for registration of a trade mark,
(b) the name and address of the applicant,
(c) a statement of the goods or services in relation to which it is sought to register the Trade Mark, and
(d) a representation of the trade mark."
"(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.
(2) Any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final."
"(1) The applicant may at any time withdraw his application or restrict the goods or services covered by the application.
If the application has been published, the withdrawal or restriction shall also be published.
(2) In other respects, an application may be amended, at the request of the applicant, only by correcting –
(a) the name or address of the applicant,
(b) errors of wording or of copying,
(c) obvious mistakes,
and then only where the correction does not substantially affect the identity of the trade mark or extend the goods or services covered by the application."
"(1) An application may be made for registration in more than one class of Schedule 4.
(2) Every application shall specify the class in Schedule 4 to which it relates; and if the application relates to more than one class in that Schedule the specification contained in it shall set out the classes in consecutive numerical order and list under each class the goods or services appropriate to that class.
(3) If the specification contained in the application lists items by reference to a class in Schedule 4 in which they do not fall, the applicant may request, by filling Form TM3A, that his application be amended to include the appropriate class for those items, and upon the payment of such class fee as may be appropriate the registrar shall amend his application accordingly."
Rule 17 provided
"A request for an amendment of an application to correct an error or to change the name or address of the applicant or in respect of any amendment requested after publication of the application shall be made on Form TM21."
No Form TM21 was submitted by Altecnic.
"26….The registrar had power to amend the classification of the application under s. 34. There is no suggestion that in exercising that power on his behalf, the examiner in the Trade Marks Registry was acting in a Wednesbury unreasonable manner. On the contrary, the parties agree that putting this application into class 11 was to put it in the correct class. It follows that the decision to change the class was not ultra vires.
27. For these reasons I have come to the conclusion that the change in class was a permissible exercise of the Registrar's powers under s. 34. It was not an amendment under s. 39 and it was not ultra vires."
(a) Classification was primarily a matter of administrative convenience, the classes representing " convenient, but loosely defined, pigeon holes into which applications can be put": see paragraph 21 of the judgment. The judge quoted from Kerly (12th edition) at p.60 in paragraph 19 of his judgment.
(b) There is a distinction between the classification of a mark and the specification of goods to which it is to be applied.
(c) Section 32 does not impose on the applicant any obligation to define the class into which his registration will fall: see paragraphs 17 and 21 of the judgment.
(d) Classification is determined under section 34 of the 1994 Act by the decision of the Registrar in the exercise of his discretion, which cannot be challenged on appeal and is only subject to judicial review if it is irrational: see paragraph 21 of the judgment.
(e) The distinction between the specification of goods on an application for registration and the classification of marks under section 34 directly affects the issue of amendment under section 39: see paragraph 24 of the judgment. Section 39 is only concerned with an application under Rule 17 to amend an application for registration made under section 32. But "an application to amend classes is not an application to amend the section 32 application": see paragraph 24 of the judgment, in which the judge treated applications to change classes as dealt with by Rule 8 (3). The judge continued in paragraph 25 of his judgment that" It follows that the argument that the amendment here has to be shown to be obvious is misplaced. A change of class under s.34, even if initiated by the proprietor, may well not be an application to amend the application. I use the expression "may well not" here deliberately. In some cases a proprietor may define the goods or services to which he intends to apply the mark by reference to a particular class. For example he may apply for a mark in respect of "all goods in Class X" or "the following goods in Class X." If that form for wording is used then the proprietor may be held to have adopted the existing classification so as to define what goods he intends to use the mark on. In other words the form of words used in the classification has been adopted as the statement of goods or services required by section 32(2)(c). To that extent the classification becomes part of his statement of goods and, if so, changing the class may amount to an alteration of the goods or services in relation to which it is sought to register the mark. However in this case the statement of goods was "Valves; valves for use in water circulation; blending valves." After the change of class, the statement of goods was unaltered."
Submissions of Altecnic
Other Submissions and Materials
(a) Altecnic made an application to register "CAREMIX" as a trade mark in relation to goods. On the Form TM3 it specified the goods in question both by reference to the Class number 7 and to a list of goods, which in its original state cross-referred to Class number 7 by incorporating into the list of goods "all other goods/services in this Class."
(b) The deletion of the words "all other goods /services in this Class" as requested in the letter of 27 March 1997 was permissible under section 39(1), as Altecnic was thereby restricting the goods covered by the application to those expressly described in the list. Such restrictions and withdrawals are not subject to the express limitations on amendments contained in section 39 (2).
(c) Class number 7 rightly remained in the column for Class numbers even on deletion of the words " all other goods/services in this Class," because there was no request at that stage to substitute a different Class number or to add another Class number. Class number 7 was still part of Altecnic's application in the context of the "Specification of goods." The fact that the system of classes of goods is for the purposes of administrative convenience or that the identification of a Class number serves such purposes does not prevent the statement of the Class number from being part of the application, which can only be amended in accordance with the provisions of the 1994 Act and the Rules.
(d) Altecnic's letter of 16 May 1997 was expressed as a "request that this application is transferred to Class 11 for the specification of goods as filed." Although not in terms described as such, it was in substance an amendment of the application. The reference to Class 7 in the column for the Class number was to be deleted and a reference to Class 11 inserted in its place. In the ordinary sense of the language of section 39 the application was "amended, at the request of the applicant." That could only be properly done to correct one or more of the matters specified in (a), (b) or (c) of subsection (2) of section 39. The fact that the exercise was described by the Registry in its letter of 19 June 1997 as arranging "for this application to be immediately transferred to the correct class" does not make the alteration to the application in Form TM3 any the less an amendment of the application.
(e) That amendment of the application, at the request of the applicant, was not permissible, because it did not fall within any of the three types of correction allowed under section 39 (2) (a), (b) or (c). It could not be said to be a case of an "obvious mistake", as valves do fall within Class 7. The position might well be different if none of the particular goods expressly described in the "Specification of goods" column fell within goods contained in the Class number given in the "Class number" column of Form TM3. Such a case might reasonably be described as one of an "obvious mistake" in the selection of the Class number and the Class number could accordingly be corrected. Even in those circumstances, however, the amendment of the application could only be made under section 39 (2) and not simply by virtue of a determination of a question under section 34 of the 1994 Act.
(f) On the facts of this case section 34 of the 1994 Act cannot be relied on as authorising the deletion of Class 7 from the application and the insertion of Class number 11 in the application. It is clear from the correspondence and other documents, read in their contextual setting, that the Registrar was acceding to a request to amend the application. He was not simply being asked by Altecnic to exercise his discretion under section 34 to determine a question arising as to the class within which the goods fall. Even if he was being asked by Altecnic to make that determination, such determination alone did not suffice for Alecnic's purposes. The determination might, for example, be a prelude to a fresh application for registration in relation to goods in a different class. In most situations that would not cause any problem. But in the circumstances of this case Altecnic does not want to make a fresh application for Class 11, which would post date the application of Reliance for the same mark, and lose its priority. It is clear that it was seeking to amend the existing application, which it was only entitled to do in a case falling within section 39 (2). As already explained, this was not such a case.
Lord Justice Sedley – I agree
Lord Justice Kennedy- I also agree.
LORD JUSTICE KENNEDY: The order will be drafted, so far as paragraphs 1, 2 and 3 are concerned, in the recitals the word "intervening" will be deleted which appears in brackets after reference to the Registrar of Trade Marks. Paragraph 4 of the draft order is deleted, which means that the remaining paragraphs have to be renumbered. Old paragraph 5, now paragraph 4, will read that: "The matter be remitted to the Registry with an effective filing date of 15th March 1997". Old paragraph 6, now numbered paragraph 5, will be as originally prepared. The same applies to old paragraphs 7 and 8, now respectively numbered 6 and 7.PRIVATE
Leave to appeal to the House of Lords will be refused.