COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVSION
MR JUSTICE NEUBERGER
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE MAY
LORD JUSTICE KEENE
| E.I. DU PONT DE NEMOURS & COMPANY
|- and -
Richard Arnold QC (instructed by Messrs Briffa) for the Respondent
Hearing dates : 16th and 17th July 2003
Crown Copyright ©
Lord Justice Aldous:
The First Appeal
"The mark DU PONT is according to its ordinary signification a common French surname. The Trade Mark of 1523636 is accordingly neither adapted to distinguish the goods with which the Applicants are connected in the course of trade nor is capable of so distinguishing Registration … would accordingly be contrary to the provisions of sections 9 and 10 of the Trade Mark Act 1938."
"28. Turning to the Hearing Officer's decision to refuse the objector permission to argue the surnominal point, it seems to me that, at any rate taking his reasons as set out in paragraph 23 of his decision at face value, it would be hard to characterise it as an inappropriate exercise of his discretion. Even if this were an appeal by way of rehearing, I would find it difficult to impugn his reasons on their face, subject perhaps to one point. That point is that he does not appear, at least expressly, to have taken into account the public interest, which, when considering whether to permit an objection to be raised to the registration of a trade mark, is a relevant factor, bearing in mind the monopoly consequences. However, on its own, I do not think that that would be enough to justify interfering with his decision. It is not as if the point featured large in argument before the Hearing Officer on this point, as I understand it."
"33. A more powerful point made on behalf of the opponent, however, is that there is no further evidence which the applicant could have adduced. The applicant had put in evidence apparently to support a case of acquired distinctiveness through Ms Bowler, in the sense that she gave evidence of the use of the mark DU PONT since 1963. When asked what further evidence he might wish to adduce to support a case on acquired distinctiveness, Mr Mellor, for the applicant, only identified the possibility of a survey. That does not seem to me to be an impressive point. As I have mentioned, the relevant date for judging the issue is in 1993, and the notion that there could be any reliable survey carried out in 2001 to find out how members of the public viewed the mark DUPONT eight years earlier seems to me little short of fanciful. Of course, I appreciate that evidence as at 2001 could be in theory probative of the state of affairs some eight years earlier. However, it does seem to me that the value of such a survey would be very unlikely to be significant. The cases show that any survey of public attitude has to be approached with care, indeed with a real degree of scepticism. I think any attempt to rely upon a survey of this sort for the purposes of establishing public attitudes eight years earlier would be very unsafe.
37. As to the need for an adjournment, I take a rather different view from the Hearing Officer. For reasons already given, I am unconvinced by the applicant's need for an adjournment to gather evidence on the point. Quite apart from this, the position has changed, in that the applicant has by now been well aware of the fact that the opponent wished to take the surnominal argument for nearly a year. None the less, the applicant has not sought to put in any further evidence on the topic of acquired distinctiveness. Mr Mellor makes the point that, by adducing such evidence, the applicant would effectively be "selling the pass" against itself. However, it was clear to the applicant that the opponent was seeking to raise this issue on appeal. The applicant could have served any further evidence, on a qualified "without prejudice" basis, namely, that it could not be referred to unless and until the opponent was permitted to raise the surnominal argument. Alternatively, if the applicant wished to know what the position was on the issue, it could have ensured that the question of whether or not the opponent would be entitled to pursue the surnominal argument on appeal should have been tried as a preliminary issue."
"10. (1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(2) In determining whether a trade mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which -
(a) the trade mark is inherently capable of distinguishing as aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.
(3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof."
"9.-(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:
(a) the name of a company, individual or firm, represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) an invented word or invented words;
(d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
(e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness.
(2) For the purposes of this section "distinctive" means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which –
(a) the trade mark is inherently adapted to distinguish as aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid."
"Marks may be accepted in Part B if they appear as surnames not more than thirty times in the London telephone directory and not more than fifty times in the relevant foreign telephone directory."
"44. The short telephone directory evidence is also effectively conclusive on the surnominal issue (subject to the final point I must consider, namely acquired distinctiveness). I have summarised the approach of the Registry as to the effect of telephone directory entries on the surnominal issue. In these circumstances, subject always to the acquired distinctiveness argument, it appears to me that the objector has a good case on the basis that Dupont is a common surname."
"There is no doubt on the evidence that Al Bassam can be a surname. Prima facie it faces objection, but the Registrar has a well- established practice whereby, after enquiry, surnames may be registered if they are found to have such little currency as not to be likely, if registered, to embarrass other traders. The practice is set out in the published Practice Guide to the Examination of Trade or Service Marks, and the relevant section reads:
'(ii). Surnames With Other Well-Known Meanings. Surnames with truly well-known meanings (i.e., a meaning which is immediately known to the man in the street without the use of reference books) may be accepted for registration under the principles set down in the Swallow case (64 R.P.C. 92), which were approved by the Court of Appeal in the Cannon case:
a. Marks may be accepted in Part A if they appear as a surname not more than 50 times in the London telephone directory and/or not more than 100 times in any relevant foreign directory;
b. Marks may be accepted in Part B if they appear as surnames not more than 100 times in the London telephone directory and/or not more than 200 times in any relevant foreign telephone directory.'
This practice can be applied to the application in suit, subject to the qualification that the man on the street will understand Arabic, know that Al Bassam can mean 'the smiling' or 'the one who smiles a lot' besides being a surname."
The Assistant Registrar went on to refer to the evidence as to the number of times that the name Al Bassam appeared in a number of telephone directories in Saudi Arabia. He thereafter applied the Practice Guide which I have read and concluded:
"Considering the mark as a whole, I find that it is capable of distinguishing the applicants' goods so as to qualify it for registration in Part B, subject to disclaimer of descriptive material."
The Practice Guide may be a useful guide to be applied at the examination stage; but it cannot be used in oppositions to test compliance with section 10. In these times when telephones are being used by more and more people, 50 entries in the London Telephone Directory today might be equivalent to 40 in, say, 1980. Thus the Guide, if it is to be used, would have to be updated regularly to take into account recent trends in the availability of telephones. Further, the Guide does not take into account the increasing number of persons who are going ex-directory, nor does it enable comparison of one foreign telephone directory with another according to the wealth, population and situation of the country in which the town is situated.
It is settled law that when there is an appeal from the Registrar concerning registrability of a trade mark, the court should not interfere unless it is clear that he has gone wrong (In the Matter of an Application by F. Reddaway & Co. Ltd. to Register a Trade Mark (No. 420,023). (1927) 44 R.P.C. 27 at 36, line 4). In this case, I believe the Assistant Registrar was wrong in applying the Practice Guide as a substitute for considering whether the mark was registrable having regard to section 10. The two tests are not necessarily the same."
"The test under section 10 is not as stringent as under section 9. Even so, I believe that it is best judged by adopting a similar approach which involves considering all the relevant circumstances. In particular the court should consider whether the mark is capable of distinguishing the proprietor's goods from those of other traders and when doing so take account of the extent to which registration would impinge on the right of innocent traders to conduct their honest business.
The appellants submitted that when considering whether a mark was capable of distinguishing, it was right to take account of the position in such countries as Saudi Arabia as that is where the mark had been and would be used. The applicants submitted that the court should confine its consideration to the position in the United Kingdom, no doubt taking into account use by foreign nationals in this country and any reputation that came from abroad.
I believe that the applicant's submissions are correct. …"
"The evidence establishes that the name Al Bassam is fairly common in Saudi-Arabia as appears from the number of entries in telephone directories. However, that is not the position in this country. Even so, I believe it right to conclude that Arabic speakers in this country would recognise the name as having a surnominal significance, but I see no reason to conclude that it would not be capable of distinguishing as the name is so little known in this country. There is no evidence which leads me to think that registration of the mark in Part B would impinge upon the needs of any honest trader in this country."
The Opponents accept that the test there formulated is wholly consistent with the formulations established in W & G du Cros Ltd.'s Applications (1913) 30 R.P.C. 660 at page 672; Bagots Hutton & Co. Ltd.'s Application (1916) 33 R.P.C. 357 at page 369; Reddaway's Application (1927) 44 R.P.C. 27 at page 37 and Impex Electrical Ltd. v. Weinbaum (1927) 44 R.P.C. 405 at page 410 Impex Electrical Ltd. v. Weinbaum (1927) 44 R.P.C. 405 at 410. But they contend that section 31 Trade Marks Act 1938 has changed the law in this respect. They rely on a passage in the judgment of Sir Raymond Evershed M.R. in Hassan-el-Madi's Application (1954) 71 R.P.C. 348 at page 357 which left for future consideration whether section 31 had any effect on Bagots Hutton. I confess that I do not see how section 31 can have any effect on the principle of Bagots Hutton and Reddaway. All section 31 does is to treat the application of the trade mark and any other act done in the United Kingdom in relation to goods to be exported from the United Kingdom as done in the United Kingdom in relation to goods to be traded in the United Kingdom. If, in accordance with Bagots Hutton deception or confusion abroad is a matter for the courts of that jurisdiction and not a ground for refusing registration in the United Kingdom section 31 by, in effect, removing the foreign element cannot affect the matter.
In my view the judge was right to consider the ability of the mark to distinguish the goods of Courtaulds by reference to the position in the United Kingdom only and the appeal on this point also fails."
"The word "trade" has many meanings, wide or narrow, according to the context in which it is found. It is by the ascription to it of a wide meaning in s. 68 of the Act that the respondents support their claim. But it appears to me that the subject matter, the history of the law and the context in which the word is found both in s. 68 and elsewhere in the Act, unite to deny to it any such meaning. It might be true to say that the respondents carry on a trade which is connected with stockings, just as a cleaner carries on a trade which is connected with the goods that he cleans or a piano-tuner a trade connected with the piano he tunes, but it does not follow, and in my opinion it is not the fact, that there is in any such case such a connection in the course of trade between the goods and the person rendering that service or performing that operation as to satisfy the definition in s. 68. It is unnecessary, and would be dangerous, to attempt to give a positive and exhaustive meaning to the word "trade" in the definition. It is sufficient to say that it can bear no wider meaning than it would bear if the words "in the goods" were added after it. The test is then whether the applicant for the mark can be said to trade in the goods, and this test is clearly not satisfied by one who merely renders some service in respect of them after they have reached the public."
"11. It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design."
"Section 11 is really a very general provision. Some of the differences between the two sections [sections 11 and 12] and the tests to be respectively applied were noted by Evershed J in Smith Hayden & Co.'s Application (1946) 63 R.P.C. 97. In regard to section 11 he said:
"Having regard to the reputation acquired by the name HOVIS, is the court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons?"
On the facts of that particular case the reference was to reputation acquired. The reference could also be to the established use made of a name or word."
"As to (b) it may or may not be that if Berlei had in 1938 become aware of sales under the name BALI they would have had evidence to establish success in passing off proceedings. If it be assumed that they would not have been able to produce such evidence the position would nevertheless have been that the mark BALI was disentitled to protection. Before 1875, when registration of trade marks began, there could be property in a trade mark: the right of property in a distinctive mark was acquired by a trader merely using it upon or in connection with his goods irrespective of the length of such user and without proof of recognition by the public as a mark distinctive of the user's goods: that right of property would be protected by an injunction restraining any other person from using the mark. Thus, in his judgment in Bass, Ratcliff & Gretton v. Nicholson & Son Ltd. (1931) 48 R.P.C. 227 (which concerned "old" trade marks referred to in section 19 of the 1905 Act which were in use before 1875) Lawrence L.J. referred to the fact that no evidence of recognition by the public was required in order to prove that a distinctive mark was in use as a trade mark before 1875. He said at page 251:
"What is required for that purpose is proof that the mark before that date was in fact used as a trade mark, that is, was used by the trader in his business upon or in connection with his goods, and it is not necessary to prove either the length of the user or the extent of the trade. In other words, the character and not the length or extent of the user is the only thing that has to be established."
Having examined certain authorities he said at page 253 that they showed …
"that it was firmly established at the time when the Act of 1875 was passed that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and of the extent of his trade and that such right of property would be protected by an injunction restraining any other person from using the mark."
In the House of Lords Bass, Ratcliff & Gretton v. Nicholson & Son Ltd. (1932) 49 R.P.C. 88 Lord Russell of Killowen said at page 107:
"Nor is it in my opinion necessary in this connection to establish that the mark has been recognised by the public as a mark distinctive of the user's goods."
He expressed satisfaction with the reasoning of Lawrence and Romer, L.JJ. on the point. That, therefore, was the state of the law when the Trade Marks Registration Act, 1875, was passed. By section 6 it was enacted:
It shall not be lawful to register as part of or in combination with a trade-mark any words the exclusive use of which would not, by reason of their being calculated to deceive or otherwise, be deemed entitled to protection in a Court of Equity or any scandalous designs."
"An example of a case where because of something contained in a mark there was disentitlement to protection irrespective of considering any rights of other traders is to be seen in Eno v. Dunn (1890) 7 R.P.C. 311. The public knew of Mr. Eno's Fruit Salt and would be likely to be deceived if Mr. Dunn adopted the expression "Fruit Salt". Upon a consideration of what was then section 73 of the Act of 1883 (which was amended by section 15 of the Act of 1888 so as to omit the word "exclusive") it was held by a majority in this House that the evidence showed that the words which Mr. Dunn proposed to use were calculated to deceive the public. So the case fell within section 73. Mr. Eno had had trade marks on the register but he submitted to an order to remove them from the register. In his opposition to Mr. Dunn's application to use the term "Fruit Salt" he confined himself to the contention that the term was calculated to deceive. Lord Macnaghten in his speech said:
"The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register, as his trade mark, the words FRUIT SALT. Mr. Eno may have gained some advantage to which he was not properly entitled: but that is hardly a reason for permitting Mr. Dunn to practise a deception upon the public.""
"Section 11 and its forebears were designed not so much for the protection of other traders in the use of their marks or their reputation but for the protection of the public. This was made quite plain by the majority of opinions in your Lordships' House in Eno v. Dunn (1870) 7 R.P.C. 311."
"12(2) In case of honest concurrent use, or of other special circumstances which in the opinion of the Court or the Registrar make it proper so to do, the Court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or descriptions of goods by more than one proprietor in respect of –
(a) the same goods
(b) the same description of goods or
(c)goods and services or descriptions of goods and services which are associated with each other,
of marks that are identical or nearly resemble each other,
subject to such conditions and limitations, if any, as the Court or Registrar, as the case may be, may think it right to impose."
The Second Appeal
"(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
"My Lords, the basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the mark, name or get-up in question impliedly represents such goods to be the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of such mark, name, or get-up is calculated to deceive. It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on."
"It was also contended that the question whether the advertisements were calculated to deceive was not one which your Lordships could yourselves determine by considering the purport of the advertisements themselves, having regard to the surroundings circumstances, but was one which your Lordships were bound to determine upon evidence directed to the question itself. I do not take this view of the law. There may, of course, be cases of so doubtful a nature that a Judge cannot properly come to a conclusion without evidence directed to the point; but there can be no doubt that in a passing-off action the question whether the matter complained of is calculated to deceive, in other words, whether it amounts to a misrepresentation, is a matter for the Judge, who, looking at the documents and evidence before him, comes to his own conclusion, and, to use the words of Lord Macnaghten in Payton & Co Ltd. v. Snelling, Lampard & Co. Ld. (17 R.P.C. 635), "must not surrender his own independent judgment to any witness whatever"."
Lord Justice May:
Part 52 of the Civil Procedure Rules
"This Part is subject to any rule, enactment or practice direction which sets out special provisions with regard to any particular category of appeal."
"(1) 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; or
(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.
(2) Unless it orders otherwise, the appeal court will not receive –
(a) oral evidence; or
(b) evidence which was not before the lower court.
(3) The appeal court will allow an appeal where the decision of the lower court was –
(a) wrong; or
(b) unjust because of a serious procedural or other irregularity in the proceedings in the lower court.
(4) The appeal court may draw any inference of fact which it considers justified on the evidence.
(5) At the hearing of the appeal a party may not rely on a matter not contained in his appeal notice unless the appeal court gives permission."
"The hearing of an appeal will be a re-hearing (as opposed to a review of the decision of the lower court) if the appeal is from the decision of a minister, person or other body and the minister, person or other body –
(1) did not hold a hearing to come to that decision; or
(2) held a hearing to come to that decision, but the procedure adopted did not provide for the consideration of evidence."
The Trade Marks Acts 1938 and 1994
"(6) The decision of the Registrar shall be subject to appeal to the Court.
(7) An appeal under this section shall be made in the prescribed manner, and on the appeal the Court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations if any, registration is to be permitted.
(8) On the hearing of an appeal under this section any party may, either in the manner prescribed or by special leave of the Court, bring forward further material for the consideration of the Court.
(9) On an appeal under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated as aforesaid by the opponent, except by leave of the Court. …
(10) On an appeal under this section the Court may, after hearing the Registrar, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity thereof … "
"In any appeal from a decision of the Registrar to the Court under this Act, the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar. "
The Judge's Decision
Review and Rehearing
"… in the case of an appeal from a judgment after trial or hearing of any cause or matter on the merits, no such further evidence (other than evidence as to matters which have occurred after the date of the trial or hearing) shall be admitted except on special grounds."
The court also had a power to draw inferences of fact.
"I wish to state my conviction that where there is a discretionary jurisdiction given to the Court or a judge the judge in Chambers is in no way fettered by the previous exercise of the Master's discretion. His own discretion is intended by the rules to determine the parties' rights: and he is entitled to exercise it as though the matter came before him for the first time. He will, of course, give the weight it deserves to the previous decision of the Master: but he is in no way bound by it."
Appeals under Section 18 of the Trade Marks Act 1938
"I agree that the restrictive principles expressed in Ladd v. Marshall do not apply where the question is whether on a trade mark appeal to which Order 55 r. 7(2) applies new evidence should be admitted. I agree also that the matters referred to by Laddie J are those that in most cases will be the important ones. I would caution, however, against any attempt to confine the statutory discretion within a straight jacket. The discretion under Order 55 r. 7(2) should, now, be exercised in accordance with the overriding objective and, in particular, the concept of proportionality, set out in Part 1 of the Civil Procedure Rules."
"There is no doubt that in a trade mark appeal other factors outside the Ladd v. Marshall criteria may well be relevant. Thus in my judgment it is legitimate to take into account such factors as those enumerated by Laddie J in Hunt-Wesson, provided always that it is remembered that the factors set out in Ladd v. Marshall are basic to the exercise of the discretion to admit fresh evidence and that those factors have peculiar weight when considering whether or not the overriding objective is to be furthered."
Lord Justice Keene: I agree.