COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PUMFREY J)
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE BUXTON
LORD JUSTICE CLARKE
| BESSANT & OTHERS||Appellants|
|- and -|
|SOUTH CONE INCORPORATED ||Respondent|
Mr Christopher Morcom QC (instructed by Ashurst Morris Crisp) for the respondents
Hearing date : 13 May 2002
Crown Copyright ©
Lord Justice Robert Walker:
Class 25: ‘T-shirts, sweat shirts, jackets, hats and headbands; all being promotional or souvenir articles relating to a music group’ and
Class 26: ‘Badges, buckles and ornaments all for wear; tie clips; buttons’.
The group (who have been represented throughout by Mr Roger Wyand QC) were successful before the Registrar but unsuccessful before the judge; they are the appellants in this court.
The statutory provisions and the hearing at first instance
“(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because –
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected.
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which –
(a) is identical with or similar to an earlier trade mark, and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or
(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.
(5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.”
It is common ground that South Cone’s REEF BRAZIL mark is an earlier trade mark.
“Thus, in January 1996 the opponents have a goodwill in the UK mainly amongst the surfing community, limited to footwear, particularly sandals. Was this enough to result in the necessary misrepresentation, as required by the law of passing off?”
“The opponents’ reputation was primarily amongst surfers. Would they be confused about the source of products carrying the applicants’ mark?”
The first issue: the appellate function
“Every appeal will be limited to a review of the decision of the lower court unless –
(a) a practice direction makes different provision for a particular category of appeal;
(b) the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a re-hearing.”
Neither side suggested that either of these exceptions applied. But that still leaves room for argument as to what the function of review amounts to on any particular category of appeal, and especially in relation to the sort of issue which often arises in appeals on trade marks, patents, copyright and design right.
“ ... where it is not suggested that the judge has made an error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.”
That observation was approved by at least three members of the House of Lords in Designers Guild Ltd v Russell Williams (Textiles) Ltd  1 WLR 2416.
“The judge is deciding a question of mixed fact and law in that he is applying the standard laid down by the courts ([in that case] conduct appropriate to a person fit to be a director) to the facts of the case. It is in principle no different from the decision as to whether someone has been negligent or whether a patented invention was obvious: see Benmax v Austin Motor Co Ltd  AC 370. On the other hand, the standards applied by the law in different contexts vary a great deal in precision and generally speaking, the vaguer the standard and the greater the number of factors which the court has to weigh up in deciding whether or not the standards have been met, the more reluctant an appellate court will be to interfere with the trial judge’s decision.”
“The question of whether an invention was obvious had been called “a kind of jury question” (see Jenkins LJ in Allmanna Svenska Elektriska A/B v The Burntisland Shipbuilding Co Ltd (1952) 69 RPC 63, 70) and should be treated with appropriate respect by an appellate court. It is true that in Benmax v Austin Motor Co Ltd  AC 370 (1955) 72 RPC 39, 42, this House decided that, while the judge’s findings of primary fact, particularly if founded upon an assessment of the credibility of witnesses, were virtually unassailable, an appellate court would be more ready to differ from the judge’s evaluation of those facts by reference to some legal standard such as negligence or obviousness. In drawing this distinction, however, Viscount Simonds went on to observe, at page 374, that it was “subject only to the weight which should, as a matter of course, be given to the opinion of the learned judge”. The need for appellate caution in reversing the judge’s evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge’s overall evaluation. It would in my view be wrong to treat Benmax as authorising or requiring an appellate court to undertake a de novo evaluation of the facts in all cases in which no question of the credibility of witnesses is involved. Where the application of a legal standard such as negligence or obviousness involves no question of principle but is simply a matter of degree, an appellate court should be very cautious in differing from the judge’s evaluation.”
“Findings of primary fact will not be disturbed unless the hearing officer made an error of principle or was plainly wrong on the evidence. His inferences from the primary facts may be reconsidered, but weight will be given to his experience. No question of the exercise of a discretion arises. In this way, error will be corrected, but a different appreciation will not be substituted for that of the hearing officer if he has arrived at his conclusion without error.”
“His inferences from the primary facts may be reconsidered, but weight will be given to his experience”
would, if taken in isolation, be a rather meagre summary of what is quite a complex point. The judge cannot, I think, have intended it to be taken in isolation. He cannot have overlooked the passages which he had just cited from Norowzian and Pro Sieben.
“I cannot help thinking that some confusion may have arisen from failure to distinguish between the finding of a specific fact and a finding of fact which is really an inference from facts specifically found or, as it has sometimes been said, between the perception and evaluation of facts.”
“ ... the judgment must enable the appellate court to understand why the Judge reached his decision. This does not mean that every factor which weighed with the Judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the Judge’s conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the Judge to identify and record those matters which were critical to his decision.”
The second issue: Section 5(2): likelihood of confusion
“However, fair use of the opponent’s mark as registered must encompass versions where BRAZIL does not play a prominent role. Thus, fair use of the mark will include uses generally of the type represented by these logos. In my judgment, the manner in which the word BRAZIL is to be taken to be used for the purpose of this comparison must also be taken to include a use suggesting a sub-class or sub-division of the notional range of products offered under the specification of goods. A geographical term is apt to denote a subclass of this type.”
“No other REEF mark has been shown to exist.”
But the following sentence shows, I think, that that is not the point which the judge was making.
“ ... various articles are sold to fans through the fanclub newsletter and merchandising is also sold at the band’s concerts.”
On the other side there were four declarations from the owners or managers of shops in Chiswick, Colchester, Bridgetown and East Wittering (three specialising in surfing and other active sports, and one apparently more general) which sold REEF BRAZIL sandals and also “casual and leisurewear”, “sportswear”, “clothing and leisurewear” and “clothes”. There is an obvious lack of detail here. Moreover (as the hearing officer pointed out) these declarations were made at the end of 1998 or early in 1999 and they did not state what the position had been at the beginning of 1996.
The third issue: section 5(4): notional passing off
“But in the end the evidence is probably insufficient to come to a different conclusion from that reached by the hearing officer. While therefore I am not confident that I would have come to the same conclusion, I do not find that his decision is either mistaken in principle or obviously wrong on the facts, and I dismiss the appeal against the decision in so far as it relates to the opposition under s5(4).”
This equivocal support was never going to provide a strong platform for an attack based on inconsistency.
“I am not sure that this link helps the opponents’ case. If the relevant public –surfers – are also aware of the band REEF are they more or less likely to be confused as to the origin of the latter’s products? I think less likely. They would be able to make a distinction between T-shirts and the like merchandised by the rock band, and sandals known as REEFS.”
“What are they referring to when they do [ask specifically for Reefs]? On the evidence, I think it must be sandals. This is where the opponents’ goodwill rests, and I do not accept that they would call T-shirts ‘REEFS’ in a similar manner.”
Lord Justice Buxton:
Lord Justice Clarke: