England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Claimant Defendants
		13 November 2001

Introduction

1. This is an action for infringement of UK Registered Trade Marks 1468479 and 1438952 and of Community Trade Mark number 57794. The UK registered trade marks are registered as of 27th June 1991 and 10th September 1990 respectively. The Community trade mark is registered as of 1st April 1996. The specification of goods of UK Registered Trade Mark 1468479 is "cleaning and decontaminating substances and preparations; all included in class 3" and that of 1438952 is "sanitary substances; disinfectant; sterilising substance and preparations; all included in class 5". The Community trade mark is registered in relation to a specification of goods from classes 3, 5 and 7. The full specification of goods is this: Class 3: cleaning and decontaminating substances and preparations; liquid substances and liquid preparations all for cleaning laboratory equipment, glass and the like, and for removing radio active contaminates from materials and products. Class 5: sanitary substances; disinfectants; sterilising substances and preparations. Class 7: apparatus for the cleaning and/or processing of laboratory, industrial or medical apparatus, materials, chemicals, glass, or the like articles, and for removing radio active contaminates from materials and from goods; ultrasonic baths."
2. The claimant proprietor of the trade marks in suit manufactures and sells a range of cleaning products primarily intended for laboratory use. The marks under which these products are sold all include the word Decon. The products are Decon 75, Decon 90, Decon-matic, Decon Neutracon, Decon Acid Rinse and Dri-Decon. The claimant has one or two people primarily responsible for sales. It relies for a substantial proportion of its sales upon sales to the companies which issue catalogues to laboratories and upon sales in response to advertisements in trade journals. The evidence is that about four-fifths of the claimant's sales are of Decon 90 and that Decon 90 is a very well known material widely used for cleaning glassware in laboratories. The first defendant ("Fred Baker") imports a range of sterile cleaning materials from the second defendant ("Veltek"). These products are intended for use in clean rooms. A clean room is a manufacturing facility in which the degree of contamination by organisms and by dust is more or less strictly controlled. For example, pharmaceutical manufacture takes in a sterile clean room, as does manufacture of silicon chips. Dust in any quantity is fatal to the manufacture of chips, and articles intended to be implanted in human beings or administered to them (particularly parenterally) must be sterile. The defendants also have a range of products, sold under the marks Decon-Ahol, Decon-Phene, Decon-Phase and Decon-Clean. The evidence was that the defendants' principal product is Decon-Ahol. It consists of isopropyl alcohol in aqueous solution at two different dilutions. Decon-Clean appears, from its price and general qualities to be generally comparable with Decon 90. Decon-phene is a phenolic disinfectant used for cleaning walls, ceilings and floors in clean rooms. Decon-phase is a disinfectant for use on floors, ceilings and walls. The defendants' products are advertised for sale in both sterile and non-sterile forms, but the evidence was that the overwhelming majority of their sales are of the sterile products.
3. The defendants do not dispute that the mark DECON satisfies the requirements of sections 3 and 5 of the Trade Marks Act 1994 and Articles 7 and 8 of Council Regulation (EC) 40/94 (hereinafter "the Community Trade mark Regulation" or " the Regulation"). However, they contend that the registration should be revoked for non-use under section 46(1)(a) of the 1994 Act and Article 50(1)(a) of the Regulation. While they accept that the claimant has used the mark Decon in respect of goods falling within the specification of UK Registered Trade Mark 1468479, they do not accept that the mark has been used in relation to any goods falling within the specification of 1438952. They contend that 1468479 should be revoked in part for non-use. In summary, the contention is that there is a distinct market for sterilised cleaning materials for use in clean rooms and the like, and that the registration ought to be limited so that it reflects the non-use of the marks in this market. The defendants contend that it would follow that if the specification of goods were limited in they way which they suggest, there would be no infringement of the resulting registration under section 10 of the Act. So far as the Community Trade Mark is concerned, the argument is similar, and has, the defendants contend, a similar result.
4. After hearing counsel's submissions on the question of partial revocation of the trade marks for non-use, I came to a provisional view which did not reflect either side's view of the correct result. I accordingly invited further argument on the point, and supplied counsel with a draft of the judgment containing my provisional views on this issue. I was particularly concerned that counsel should have a further opportunity to address me on the manner in which the specification of goods should be altered. Having heard their further submissions, I came to a final view which I set out in this judgment. I was not addressed at length on the correct interpretation of the words "sanitary substances" in the specification of goods of the class 5 mark, and I invited further submissions on this point also.
5. The defendants deny infringement of the marks as registered. This denial is independent of the questions which arise in relation to revocation for non-use, and it is convenient to deal with it first.

Infringement

6. Section 10 of the Trade Marks Act provides as follows:-

(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical for those for which it is registered.

(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because -

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trade mark.

7. This provision has been the subject of a number of decisions, notably British Sugar v. James Robertson [1996] RPC 281, Case C39/1997 Canon v MGM [1999] RPC 117, and case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV [2000] FSR 77. The proprietor in the present case contends that this is a case falling clearly within section 10(1), that is to say, it is a case in which a sign identical to the registered mark is used upon goods falling squarely within the specification of goods of each of the marks. The defendants say that these marks are not identical marks and that the question of infringement must be decided under sub section 10(2), and I should take into account the various factors identified particularly in British Sugar v James Robertson ("Treat") and in the Lloyd Schuh case to arrive at the conclusion that there is no infringement.
8. There is no doubt that the defendants' products fall within the specification of goods of UK registered trade mark 1,486,789 and in the first part of the specification of goods of the Community trade mark. I should say a word about the class 5 mark (number 1,438,952) and the corresponding part of the Community Trade Mark. No difficulty arises in respect of "disinfectants; sterilising substances and preparations". It is accepted that at least Decon-ahol, Decon-phase and Decon-phene fall within this part of the specification. But the words "sanitary substances" is of wider scope than mere disinfectants. The dictionary meaning of "sanitary" is "of or pertaining to the conditions affecting health, especially. with reference to cleanliness and precautions against infection and other deleterious influences; pertaining to or concerned with sanitation". Obviously the use of the defendants' materials to maintain the sterility of clean rooms in, for example, the pharmaceutical industry is to promote the health of the patient to whom the pharmaceutical is administered. The use is, in this sense, a sanitary use, and I conclude that the defendants' products are also "sanitary substances". Thus, the only question is whether the signs complained of are the same as the registered trade marks or merely similar. The principles which must be applied to determine this question and the associated question of infringement are as follows:-

(1) The comparison is mark for sign.

(2) The sign used by the defendant has to be identified.

(3) In identifying the sign used by the defendant, the Court must look to find what the defendant is using to identify his goods.

(4) The comparison requires the Court to assume that the plaintiff's mark is used in a normal and fair manner in relation to the goods for which it is registered, and then to assess the likelihood of confusion in relation to the way in which the defendant uses its sign.

(5) Matter added to the sign used by the defendant is to be discounted. This widely stated principle is not absolute, but must be judged on the facts of the case. If for example a word mark is buried in the defendant's sign so that in Jacob J's phrase only a crossword fanatic could find it then the sign used by the defendant does not comprise the mark at all. In the Treat case, Jacob J. gave the example of the presence of the word in the phrase "theatre atmosphere". As Lord Greene said in Saville Perfumery Ltd v. June Perfect Ltd [1941] 58 RPC 147, the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his good from those of the registered proprietor". If the word "mark" in this phrase is substituted with the word "sign" then this is a statement of the modern law.

9. There seems to me to be no serious doubt that the signs used by the defendants have two parts, a prefix consisting of the word "Decon" accompanied by a part somewhat more descriptive of the particular product. The claimant actually uses its mark in the same way, and this use, as a prefix accompanied by a more descriptive suffix, seems to me to be well within the scope of the ordinary and fair use of the claimant's mark. The suffixes (-ahol, -clean, -phene and -phase) do not change the nature of the principal sign: they are all "Decon plus a suffix" marks, and not different signs differing essentially from each other. The suffixes cannot distinguish the goods from those of the registered proprietor, since their principal function is to refer to the nature and quality of the goods themselves. It seems to me to be very clear that this is an example of the use of an identical sign upon goods in respect of which the claimant's mark is registered and that there is accordingly infringement under section 10(1). The fair manner of use of the claimants mark undoubtedly includes its use as a mark for a range of products and the defendants use is precisely the same.

Infringement under Section 10(2)

10. In my judgment, this question does not arise. If I am wrong in this view, it seems to me that, given the width of the specification of goods of these marks, the only question is whether the marks themselves are sufficiently similar that there exists a likelihood of confusion on the part of the public, so that paragraph 10(2)(b) of the 1994 Act is satisfied as it applies to identical goods. Nonetheless, if I am wrong in relation to section 10(1), I must consider infringement under section 10(2), and in any event the factors effecting this consideration become important when I turn to the case on revocation and the further issues of infringement which arise. The questions arising under section 10(2) may be summarised in this way:

(1) Is the sign used in the course of trade?

(2) Is it identical to (section 10(2)(a)) or similar to (section 10(2)(b)) the registered mark?

(3) Are the goods for which it is used similar to (10(2)(a) and (b)) or identical to (10(2)(b)) those covered by the registration? and

(4) Is there a likelihood of confusion because of that similarity?

(see, for example, The European v The Economist Newspaper [1988] FSR 283.)

11. The question whether the degree of similarity leads to a likelihood of confusion is a question of fact. In the Canon and Lloyd cases, the Court of Justice has pointed out that the likelihood of confusion on the part of the public is to be assessed globally, taking into account all factors relevant to the circumstances of the case. The Court points out that such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular, a similarity between the trade marks and between those goods or services. Accordingly, the Court of Justice suggests that a lesser degree of similarity between those goods and services may be offset by a greater degree of similarity between the marks, and vice versa. The interdependence is in fact made clear by the tenth recital to the First Council Directive of 21st December 1988 to approximate the laws of the Member States relating to Trade Marks (89/104/EEC) which is transposed into United Kingdom law by the 1994 Act. The tenth recital is as follows:

"whereas the protection afforded by the registered trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, is absolute in the case of identity between the mark and the sign and goods or services, whereas the protection applies also in the case of similarity between the mark or the sign and goods or services, whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion, whereas the likelihood of confusion, the appreciation which depends on numerous elements and, in particular, of recognition of the trade mark on the market, and the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods and services identified, constitutes the specific condition for such protection; whereas the ways in which likelihood of confusion may be establish, and in particular the onus of proof, are a matter for national procedural rules which are not prejudiced by the Directive;"

12. In its judgment in the Lloyd case, the Court of Justice referred to the need to take into account the "inherent characteristics of the mark, including the fact that it does not or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive geographically widespread and long standing use of the mark has been; the amount invested by the undertaking and promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade professional associations."
13. Some of these considerations seem strange to an English trade mark lawyer, but it is clear that the underlying concept is that of the reputation enjoyed by the mark and the extent of that reputation. To this extent, therefore, the relevant factors go wider than Jacob J's "goods of the same description" test articulated in Treat while retaining aspects of it. Thus, in considering infringement under section 10(2), consideration of the actual reputation enjoyed by the mark is central. It must also be remembered that section 10(2) is concerned with confusion as to the origin of the goods or with association between the goods arising out of confusion as to their origin, as for example confusion as to the identity of the manufacturer of similar goods (see the judgment of Laddie J in the Wagamama case [1995] FSR 713, endorsed by Jacobs AG and impliedly by the Court of Justice in Case C-251/95 Sabel BV v Puma AG [1997] ECR I-6191, [1998] RPC 199). As the Court of Justice said in the latter case, the reference to a likelihood of association as it appears in section 10(2) is not an alternative to the likelihood of confusion but serves to define its scope (point 18 of the judgment).

Evidence

14. It was established that the claimant's sales are made to buyers for laboratory cleaning materials either directly through the efforts of Mr Sullivan, the claimant's Sales Manager, or by way of catalogues. It was accepted by the defendant's witnesses that the claimant's laboratory cleaning materials were well known and, indeed, it was acknowledged that the claimant's materials were among the market leaders. On the claimant's side, I heard evidence from Mr Harper, who is the managing director of Fisher Scientific Ltd which is the largest supplier of laboratory consumables in the United Kingdom and from Mr Palmer, the managing director of Merck Limited, the subsidiary of Merck KgaA which is the world's largest supplier of laboratory supplies and largest manufacturer of laboratory reagents. On the defendants' side, I heard evidence from Mr Keep, until recently of AstraZeneca UK Limited and who had wide experience as a buyer of materials for pharmaceutical research and development facilities. He purchases both the claimant's and the defendants' products and was well aware of their different trade source. Mr Mackay is also now retired, but was until his retirement the Senior Buyer for Eli Lilly & Company's facilities at Speke, near Liverpool. He purchased both the claimant's and defendants' products. I should say that these witnesses all gave their evidence objectively and helpfully.
15. At least so far as the defendants' sterile products are concerned, all the trade witnesses were agreed that there were major differences in use from the claimant's products and a corresponding difference in the way in which they were purchased. Thus, for use in a clean room, the defendants' products would have to pass through quality control, and required to be traceable. They are double packed in plastic bags for sterility. Their specific purposes are not the same as any of the claimant's products. The claimant's products would not be allowed in to a sterile clean room. There was so little use of the defendants' non-sterile products that the witnesses had no experience of them although they are offered for sale by Fred Baker alongside the sterile products. All the witnesses agreed that the claimant's products were well known as laboratory glassware cleaners. As Mr Mackay acknowledged, many workers in clean rooms would be familiar with the claimant's products, and but would not confuse those products with the Veltek sterile products, since the field of application was so different.
16. The channels of trade, if not identical, are separated by a small barrier only. Because of the exclusive distribution arrangement to which I have referred, the only seller of the Veltek products in the United Kingdom and the rest of Europe is Fred Baker, and Fred Baker sells these products not in its catalogue, which is produced by a supplier of such catalogues called Cope and is supplied to many catalogue sellers in covers bearing the respective seller's name. The catalogue includes the claimant's products prominently sold under the Decon mark. On Fred Baker's website, the Veltek products are sold under a separate button from the catalogue goods. The relevant page contains three buttons: Becton Dickinson Products, Veltek range of sterile chemicals, and the General Laboratory Supplies which are to be found in the catalogue and also includes the claimant's Decon cleaners. The consumers of laboratory supplies may be expected to have a high level of attention. This applies as much to the laboratory glassware cleaning products as it does to the more specialised clean room products.
17. Finally one should refer to the fact there has been little or no evidence of actual confusion. Indeed, on a proper analysis the principal instance of confusion relied on by the claimants turned out to require more explanation than could be provided by supposing that there had been confusion. Mr Sullivan, the claimant's sales manager, did not give any evidence of any instances of confusion known to him. His evidence was that such confusion as there was would not cause any loss to the claimants because of the highly specialised nature of the Veltek products.
18. It is important when assessing the weight of the factors to which I have referred above, that one does not lose sight of the nature of the enquiry. This is not an action for passing off, but an investigation as to deceptive resemblance where the mark is not is not the same mark as the mark registered, or the goods do not fall within the specification of goods. This is not a case in which it would be possible to substitute the defendants' products for those of the claimant. I have come to the conclusion that the claimant does enjoy a substantial reputation in the mark Decon. This reputation extends to persons who might well be purchasers of the defendant's sterile products. Such persons might well have general laboratory experience, and, if so, they were likely to be aware of the claimants' products, which are cleaners. It seems to me that there is a substantial likelihood of confusion as that phrase is explained in Sabel, and that the conclusion of infringement under section 10(2) is inevitable.

Rectification for non-use.

19. By their counterclaim the defendants seek to revoke United Kingdom Registered Trade Mark number 1468479 "save to the extent that the mark is registered in respect of (a) cleaning and decontaminating substances for use in general cleaning applications, all included in class 3; or (b) cleaning and decontaminating substances and preparations, all included in class 3, but excluding FDA GMP and USP-24 compliant cleaning and decontaminating substances and preparations which are for use in a septic sterile clean room areas". Corresponding alternative limitations are sought in respect of Registered Trade Mark number 1438152. The alternatives presented here are first a limitation to the specification of goods to general purpose cleaners, and, alternatively, a limitation to exclude what I shall summarise as cleaners which comply with the relevant United States standards for use in aseptic sterile clean room areas, which is the market with which the defendants are concerned. The US standards are, on the evidence, the only ones which are relevant.
20. The 1994 Act, following the Directive, expressly provides for partial revocation where non-use of the mark is not total. Section 46(1)(a) provides for revocation if "within the period of five years following the date of completion of the registration procedure [the mark] has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use." By section 46(5), "where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only."
21. The construction of section 46(5) is not straightforward, and these provisions have been the subject of observations by Neuberger J. Laddie J. and Jacob J. in, respectively, Premier Brands UK Limited v. Typhoon Europe Ltd (unreported, 21st January 2000) Mercury v. Mercury [1995] FSR 850 and Minerva TM [2000] FSR 734. In the Mercury case, Laddie J. was concerned with the mark Mercury registered in respect of (inter alia) computers, electronic instruments for processing data and computer programs in class 9". This enormously wide specification of goods covered not only computer software of use in the claimant's business of telecommunications, but, as Laddie J. put it, games software, accounting software, software for designing genealogical tables, software used in the medical diagnostic field, software used for controlling computers in satellites and software used in computers used in running the London Underground system. Laddie J. took the view that what defined software was the function it performed, and that the functions performed by computer software in general were so multifarious that the registration was in danger of attack on the ground of non-use. The case being an application for summary judgment, it was not necessary for Laddie J. to decide the question and he did not do so. In the Premier Brands ("Typhoon") case, Neuberger J, said in relation to a specification of goods that when applying section 46(5) one

"simply looks at the list of items on the register, and asks oneself in relation to each such item, whether or not the mark has been used "in relation to" or " in connection with" that item during the past five years. If the answer is in the affirmative then the mark can remain registered in respect of that item; if the answer is in the negative then, subject to any question of discretion, the registration is revoked in respect of that item. One does not dig deeper and, as it were, narrow a particular category of items to reflect the goods to which the mark has been used".

In the Minerva case, Jacob J did not accept this view of the section. The difficulty with Neuberger J's. formulation is that while apt to deal with the case before him, it did not deal in terms with huge classes of goods described by single phrases like "computer software" or "cleaning substances and preparations". I must therefore differ with respect from Neuberger J. and agree with what Jacob J. said in Minerva TM. At times, it is inevitable that one is obliged to dig deeper.

22. The problem which is raised in an acute form in this case is how much deeper it is right to dig. It is not possible to draw a list of goods in respect of which the mark has not been registered, and it seems to me that the question is the more general one: how should the specification of goods be narrowed to reflect the non-use? In answering this question, my starting point is that the action for infringement of a registered trade mark is an action in which (in its simplest form) the claimant is relieved from the obligation of showing the court how in fact he uses the mark. It can be viewed in purely domestic terms as an action for passing off in which it is not necessary to give evidence as to reputation. In my judgment, it would only be right as a matter of principle to divest the registered proprietor of a part of his statutory monopoly if one is satisfied that he ought to have to demonstrate confusion in fact, or at least be obliged to rely on section 10(2). The assessment need not of course be made without reference to the activities of the defendants. The fact of non-use has in itself nothing to do with the defendant, and the defendant's activities, or lack of them, are prima facie irrelevant unless, I suppose, it can be shown that the defendant has himself created a reputation in respect of a class of goods for which the claimant has not used the mark. It follows it seems to me that the second form of revocation sought by the defendants in the present case is not acceptable, leaving as it does a class of goods defined negatively by reference to the defendants' activities.
23. In my judgment, the task is best performed by asking what would be a fair specification of goods having regard to the use that the proprietor has in fact made of the mark and assuming further that he will continue that use. Mr Campbell submitted that the specification of goods should in effect be drafted from scratch to encompass only the use which the registered proprietor has made of the mark. I accept that the starting point should be a limitation to the actual field of use. The difficulty lies in deciding on the width of the surviving specification, the correct formulation of which must depend largely upon questions of fact and degree. Let me take an example to which Neuberger J refers in Typhoon. There, the registration was (inter alia) for "domestic containers". Suppose the proprietor uses the mark only on red tea caddies. How does one limit the registration? Obviously the use of the colour red is irrelevant, since it does not define a species of goods. But should the registration be limited to tea caddies? Neuberger J thought not, since, as he put it, one should take the registration as one finds it, and it is not possible to distinguish between containers for food, containers for tea, and tea caddies. He added that he considered that to permit this kind of detailed approach to a registration leads to uncertainty and invites litigation. So he considered that the registration should remain in respect of domestic containers. I would agree wholeheartedly with this statement of the problem, but the answer must, I believe, depend upon the facts of the case.
24. I think that the correct starting point as a matter of principle consists of the list of articles for which the proprietor has in fact used the mark. In arriving at a fair specification having regard to the proprietor's use, it is also necessary to remember that the effect of section 10(2) (and of 10(3), in limited circumstances) is to give the proprietor protection outside his specification of goods but in areas where he can demonstrate a likelihood of deception in the wide sense, that is, deception as to trade origin leading to association among the relevant public. There is no pressing need, therefore, to confer on the proprietor a wider protection than his use warrants by unduly broadening the specification of goods. There is a balance to be held between the proprietor, other traders and the public having regard to the use which has in fact taken place.
25. Here, the proprietor's cleaners are cleaners for technical/industrial use and on the face of it the specification should be limited to reflect this fact. The main channels of trade are those which I have described. The persons who will encounter the goods in the course of trade or business are the purchasers and the users of such cleaning materials. They would not, it seem to me, be confused by the use of the mark "Decon" on washing up liquid or dish washer powder purchased in a supermarket. It should be remembered that many people other than chemical laboratories in the narrow sense will have access to Fred Baker's catalogue and other similar publications. This catalogue is no doubt essentially a catalogue for products for using in chemical laboratories but covers materials to be used for tissue culture, dissection, and there is even some clean room clothing. How is the class of goods to be fairly described? My immediate reaction was to say that all these cleaning materials are intended for use in a laboratory. That is where the mark started to be used; it is the area in which the mark has always been used; and it is the only relevant area of business in which the proprietor trades.My first view was that the specification should be limited by including words such as "all for laboratory use" but Mr Moody-Stewart satisfied me that this is too narrow and does not reflect the use actually made of the mark, which on the unchallenged evidence includes industrial use. He suggested, and I accept, that the area of use established on the evidence was non-domestic use. It is not possible sensibly to formulate a narrower specification, and it would not be fair to the proprietor to attempt to do so.
26. The defendants' first proposed specification of goods is open to the objection that the words "general purpose" are ambiguous and might be said to cover such products as detergents purchased in supermarkets for domestic use. It is the nature of the use which I consider to be crucial in the present case. Accordingly, I shall revoke the registrations in suit accept to the extent to which they relate to the products set out in the present specifications of goods but qualified by the words "all for non-domestic use".

Infringement of the mark after partial revocation

27. The defendants' products still fall within the specification of goods qualified in the manner I have indicated. There is therefore still infringement of the marks by virtue of section 10(1) for the reasons which I have already given.
28. Substantially for reasons corresponding to those that I have already set out in considering the sign used by the defendants, I consider that there is still infringement of this mark revoked in the manner to which I have referred under section 10(2), if I am wrong in my conclusion that these are identical marks used with additional matter. I am most concerned by the overlap of the classes of users of these products, by the identical or closely similar names, by the fact that both are used in a broadly technical context and by the fact that both groups of products consist of materials used for cleaning. I accept the evidence that the products themselves are distinct and not interchangeable, but this does not deal with confusion leading to association caused by the use of the sign "Decon". Thus, the strength of the claimant's registration among those who are acquainted with the products in the non-domestic context is sufficient, in my judgment, to lead to a finding of infringement under section 10(2).

Bad faith.

29. So far as the Community Trade Mark is concerned, I am a Community Trade Mark Court and I apply directly applicable Community law under the Regulation (see Article 91). The Community trade mark is less than five years old and may not therefore be revoked either in whole or in part for non-use. The defendants seek to obtain the same result by alleging that the mark is liable to revocation under Article 51(1) of the Regulation on the ground that "the applicant was acting in bad faith when he filed the application for the trade mark". What is said is that the applicant had no bona fide intention to use the mark in respect of any of the goods covered by the specification of goods other than goods intended for non-domestic use either at the time when the mark was registered or at any time thereafter. So it is alleged that to the extent to which the specification of goods extends beyond that which I have held the English mark should be restricted to then the mark should be revoked to that extent.
30. Although concerned with bad faith, Article 51(3) allows for revocation in respect of some only of the goods or services in respect to which the mark is registered, so suggesting that the proprietor may exhibit bad faith in respect of some only of the goods comprised within the specification of goods. In my view, there are two considerations to take into account. The first and, I believe, most important is that the legislature has seen fit to accord the proprietor five years during which he is not obliged to demonstrate use of the mark at all. At the same time, it is open to the proprietor to enter into other transactions in respect of the mark even if he does not himself intend to use it. For example, he may license the mark for use upon other goods falling within the specification and the use by the licensee will be deemed to be the proprietor's use; see Article 15(3). These considerations have led the First Cancellation Division of The Office for the Harmonisation of the Internal Market ("OHIM", the Community Trade Mark Office) to hold in Trillium TM (unreported, 28/03/2000) that the objection of bad faith is available only in very limited circumstances. After pointing out that in the United Kingdom an application for a trade mark under section 32(3) of the 1994 Act is required to be accompanied by a statement that the mark is being used by the applicant or with his consent in relation to the goods or services in relation to which it is sought to be registered or that he has a bona fide intention that it should be so used, the Division says that on the contrary under the Regulation (but not under the Directive, which is silent on the point) there is no requirement for such a statement. The Division says that in general, and as a matter of principle, "it is entirely left to the applicant to file a list of goods and services as long as he sees fit i.e. a list exceeding his actual scope of business activity, and try later to expand his activities in order to be able to show genuine use CTM or face revocation under Article 51(a) CTMR and other sanctions, respectively". They point out that there may be cases where an applicant files a list of good and services which "does not have the slightest connection with his actual economic activity" and in such cases it might be worth considering Article 51(1)(b) of the CTMR. I have some difficulty with this approach. What does "not have the slightest connection with his actual economic activity" mean? This was another case of a registration of a mark in relation to "computer software". It cannot be seriously contended that games software is related telecommunications switching software, which was the applicant's only field of economic activity. I cannot believe that the Division was saying that if the specification of goods had read "Games software, telecommunications switching software, software for controlling automotive production lines" it would have been revoked as to the first and last parts of the specification, but not if it just read "computer software". I regret to say that I find the suggested distinction unworkable. Either Article 51(1)(b) is available where there is no bona fide intention to use the mark (whether by licensing or otherwise) during the first five years, or it is not.
31. The second consideration, also referred to in the Trillium decision, is that the words "bad faith" normally import a requirement for subjective bad faith: as Lindsay J. said in Gromax Plasticulture Limited v. Don and Low Nonwovens Ltd [1999] RPC 167, the words bad faith in this context include "dishonesty and, as I would hold, includes also some dealings which fall short of the standard of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined". This approach would mean that the validity of the registration could depend upon the advice received by the proprietor, since the scope of the specification of goods is normally, if not always, a matter upon which the proprietor would be advised by his professional advisers. If the proprietor genuinely informs the professional advisors as to the scope of his use and his intended use and is advised by them to take an unjustifiably wide specification of goods his conduct could not be criticised. On the other hand a proprietor who was advised that his specification of goods was too wide and decided to chance his arm might be open to criticism under Lindsay J's. formulation. This may be thought to be anomalous when one is considering the intended and actual use of the mark and a suitable specification of goods. In my judgment, the validity of registrations should not, in this context, depend upon subjective considerations. In my judgment, the underlying objection might well be thought to be far closer to the idea that the proprietor should lose his registration to the extent to which a reasonable person in his position would know that the specification of goods as applied for was too wide. However, it is not necessary to express a concluded view on this point and I do not do so.
32. OHIM considers that the concept of bad faith in the Regulation is narrow, implying or involving, but not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive. It is to be understood as including a dishonest intention. The Office's view, therefore, is close to that of Lindsay J.
33. The pre-existing law in the United Kingdom is of no direct relevance to this question. But under the Trade Marks Act 1938, a mark could be removed from the register either if it was applied for without a bona fide intention to use it and it had not in fact been used prior to the application to remove it from the register, or alternatively if it had not been used bona fide for five years prior to the application. In relation to removal for non-use, the term bona fide had a wide meaning, extending to acts which were reprehensible but not necessarily dishonest: see Imperial Group v Philip Morris [1982] FSR 72 (CA) and the discussion of this topic in Robert Walker J's judgment in Road Tech Computer Systems Ltd v Unison Software (UK) Ltd [1996] FSR 805. In the latter case, Robert Walker J points out that so far as the 1994 Act, and so by implication also the Directive and the Regulation, are concerned it is difficult, if one takes the test as fundamentally one of dishonesty, to see how an application can be in part made in good faith and in part bad, and that is undoubtedly a problem with the approach taken by OHIM.
34. In my judgment, it would be desirable for there to be consistency between the UK and OHIM on this topic. Whilst the First Cancellation Division is only a tribunal of first instance (and may not be a judicial tribunal) its views represent the practice of OHIM. The view taken by OHIM is certainly a possible one and is consistent with one strand of authority in this country under the former law (see Baume v Moore [1958] RPC 226, where Romer LJ said that the "truth is that a man is either honest or dishonest in his motives; there is no such thing, so far as we are aware, as constructive dishonesty.") If I ignore the reference to constructive fraud in the Trillium case, and concentrate on the essential element of dishonesty, it seems to me that this construction of the Regulation is a tenable one, and is supported by the fact that there is no express requirement to have an intention to use the mark at the outset. In considering questions under the Regulation, I am part of the same legal system as OHIM, and this construction is, I think, a construction to which I should adhere in the interests of consistency. I say nothing about the 1994 Act where different considerations apply.
35. If this view is right, it is improbable (but not impossible) that a decision as to the width of a specification of goods would lack good faith. In the present case there is no suggestion of bad faith or conduct of the kind to which Lindsay J refers on the part of the proprietor. Accordingly there should be no rectification. If I am wrong in this, the specification of goods should be restricted in the same manner as I consider that the specification of the domestic trade marks should be restricted. It is highly desirable that this uncertainty in the meaning of the Regulation should be resolved, but I am satisfied that I should not order a reference in this case, as the conclusion which I have reached on infringement in respect of the modified specification of goods renders it unnecessary for decision.

Acquiescence

36. Finally, I should mention a defence of acquiescence raised by the defendants. It is not necessary to go into the facts in detail, since it is not pleaded, and it was not established in evidence, that the defendants relied in any way upon either upon the claimant's delay in taking proceedings nor upon Mr Sullivan's statement to the effect that in his view the damage caused to the claimant by the defendant's activities was negligible in forming a reasonable view that they would not be sued and in acting on that view. Reliance is an essential ingredient of any species of estoppel (see, for example, Farmer's Build Ltd v Carier Bulk Materials Handling Limited [1999] RPC 461) and it is wholly lacking in the present case. This defence fails.

Reference on the question of restriction of the specification of goods

37. On the further argument, Mr Campbell suggested in a brief submission that the question of the correct approach to the partial revocation of a trade mark to reflect non-use having regard to Article 13 of the Directive should be referred to the Court of Justice under Article 234 of the EC Treaty. I do not think that I should make such an order at this stage. I do not consider that on any reasonable restriction of the specification the defendants will avoid infringement under section 10(2). This means that although the scope of the registration is affected, the result of the action is not. In these circumstances, I would not exercise my discretion to order a reference.

Conclusions

38. In the result, both the action and counterclaim succeed. I shall hear counsel on the form of relief.