England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Royal Courts of Justice Strand, London, WC2A 2LL
		18/11/2005

Mr. Justice Kitchin :

Introduction

1. This is an appeal from a decision of Mr. Bowen, the hearing officer acting for the registrar, that the appellant should be treated as having withdrawn its opposition to the respondent's application for revocation of the trade mark "MOO JUICE" ("the Trade Mark") for failing to provide the required evidence of use.

Background

2. The Trade Mark is registered in class 29 in respect of a specification of goods including, in particular, milk and milk beverages.
3. The Trade Mark was applied for on 4 December 1995 by Mr. Mark Cooper who is a dairy farmer at Matts Hill Farm, Hartlip, near Sittingbourne in Kent. The registration procedure was completed on 16 August 1996. On 17 December 2003, Mr. Cooper assigned the Trade Mark to the appellant, a company of which Mr. Cooper is the managing director.
4. On 21 October 2004, the respondent applied for the registration to be revoked under s. 46 of the Trade Marks Act 1994 ("the Act") on the basis that there had been no genuine use of the Trade Mark since the date of registration on 16 August 1996 or, in the alternative, since at least 17 August 1999 and there were no proper reasons for such non use. These grounds were respectively based on s. 46(1)(a) and (b) of the Act, which read:

"46.—(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that within the period of five years following the date of completion of the registration procedure it 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 nonuse;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;"

It is convenient at this point to refer also to s. 100 of the Act:

"100. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it."

5. The procedure for dealing with such an application is set out in rules 31 and 31(A) of the Trade Mark Rules 2000. These provide, so far as relevant, as follows:

"31.—(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM26(N) and be accompanied by a statement of the grounds on which the application is made.

(2) The registrar shall send a copy of Form TM26(N) and the statement of the grounds on which the application is made to the proprietor.

(3) The proprietor shall, within three months of the date on which he was sent a copy of Form TM26(N) and the statement by the registrar, file a Form TM8, which shall include a counter-statement, and be accompanied by—

(a) two copies of evidence of use of the mark; or

(b) reasons for non-use of the mark,

otherwise the registrar may treat him as not opposing the application.

(4) The evidence of use of the mark shall—

(a) cover the period of non-use alleged by the applicant on Form TM26(N), or

(b) where the proprietor intends to rely on section 46(3), show that use of the mark commenced or resumed after the end of that period but before the application for revocation was made.

(5) The reasons for non-use of the mark shall cover the period of non-use alleged by the applicant on Form TM26(N).

(6) The registrar shall send a copy of Form TM8 and any evidence of use, or reasons for non-use, filed by the proprietor to the applicant and the date upon which this is sent shall, for the purposes of rule 31A, be the "initiation date".

31A.—(1) The applicant may, within three months of the initiation date, file any evidence he may consider necessary to adduce in support of the grounds on which the application was made.

(2) Where the applicant files no evidence under paragraph (1), the registrar shall notify the proprietor that no evidence was filed.

(3) The proprietor may, within the relevant period, file such evidence as he may consider necessary to adduce in support of his case.

(4) The relevant period—

(a) where the applicant files evidence under paragraph (1), is the period beginning on the date on which a copy of the evidence is filed and ending three months after that date; or

(c) where the applicant does not file evidence under paragraph (1), is the period beginning on the date on which the registrar sent the proprietor a notification under paragraph (2) that no evidence was filed and ending three months after that date.

(5) Where the proprietor files evidence under paragraph (3), the applicant may, within three months of such evidence being filed, file any evidence in reply; such evidence shall be confined to matters strictly in reply to the proprietor's evidence.

(6) The registrar may, at any time if she thinks fit. Give leave to either party to file evidence upon such terms as she thinks fit."

6. In accordance with the rules the respondent began the proceedings by filing an application on Form TM26(N) together with a statement of grounds. These were duly served on the appellant on 26 October 2004. Under rule 31(3) the appellant had three months in which to file a Form TM8 and counter-statement together with evidence of use of the Trade Mark or reasons for its non-use.
7. On 18 January 2005, the appellant filed a TM8 together with a counter-statement stating that there had been genuine use by the proprietor of the Trade Mark on a daily basis prior to 31 March 2001. On 20 January 2005, the registry wrote to explain to the appellant that the exhibits attached to the counter-statement were not in the required evidential form and inviting the appellant to submit the evidence for consideration in a proper format before the final date for filing, namely 26 January 2005.
8. Following receipt of that letter, the appellant filed two witness statements on 24 January 2005. The first was from Mr. Cooper and the second from Ms. Victoria Jane Martin, the trade mark attorney acting for the appellant.
9. Ms. Martin explains in her evidence that she is a partner in the firm representing the appellant and that all the information contained in the statement has been obtained from the appellant or is within her personal knowledge. She also explains that the Trade Mark was assigned by Mr. Cooper to the appellant on 17 December 2003 and that the use made of the Trade Mark was not by the appellant but by the appellant's predecessor in title, Mr. Cooper, trading through his family partnership.
10. Mr. Cooper's evidence is very short. He says that he is the managing director of the appellant and that he has held this position since the company's incorporation on 11 September 2003. He states that the Trade Mark was in use in the United Kingdom on a daily basis in relation to milk until 31 March 2001. In this regard he attaches as exhibit 'MOO 2' sample labels used on milk cartons showing the Trade Mark. He also attaches as exhibit 'MOO 1' a letter from his accountants, Crossleigh & Co., dated 11 November 2004, in which they confirm that the Trade Mark was used on a daily basis within Mr. Cooper's business up until 31 March 2001.
11. By an official letter dated 1 February 2005, the registry served the Form TM8, counter-statement and the evidence provided on the respondent. Under the provisions of rule 31A(1) the respondent was allowed until 1 May 2005 to file whatever evidence it considered appropriate. At this point the registry evidently considered that the evidence filed by the appellant satisfied the requirements of the rules.
12. By a letter dated 8 February 2005, the respondent asked the registry to reconsider allowing the proceedings to continue. In an official letter dated 15 February 2005, the registry replied to the respondent indicating that the evidence filed was considered sufficient at that stage of the proceedings to mount an arguable defence and, as a result, the proceedings were allowed to continue. The respondent was allowed until 1 March 2005 to request a hearing and, by letter dated 21 February 2005, it did so. That hearing took place on 28 April 2005. The hearing officer decided to reverse the preliminary view of the registry and to treat the opposition to the application to revoke as having been withdrawn. It is against that decision that the appellant now appeals.

The appeal

13. It was submitted on behalf of the appellant that there was no basis whatsoever on which it could be said that the appellant had failed to comply with rule 31(3). It was also submitted that if the hearing officer was right to hold that the evidence was insufficient to comply with rule 31(3) then he ought nevertheless to have exercised his discretion to allow the proceedings to continue.
14. The scheme provided by s.100 and the rules is reasonably clear. Section 100 places the burden of proving use of the Trade Mark upon the proprietor. The rules provide a framework for the giving of evidence which will allow the issue of non-use to be determined in a manner which is consistent with that overall burden. First, the proprietor must file evidence of use of the mark or reasons for non-use of the mark, failing which the registrar may treat the proprietor as not opposing the application. The date upon which such evidence of use or reasons for non-use is sent by the registrar to the applicant becomes the "initiation date" for the purposes of rule 31A. Thereafter, a series of evidence rounds follows. First, under rule 31A(1), the applicant has, within three months of the initiation date, an opportunity to file evidence in support of the application. Then, whether or not the applicant files such evidence, the proprietor has an opportunity to file further evidence in support of its case pursuant to rule 31A(3) and (4). Where the proprietor files such evidence the applicant may file evidence in reply pursuant to rule 31A(5). Additional evidence may be filed thereafter with the consent of the registrar.
15. Against this background, counsel for the appellant submitted that rule 31(3) lays down no more than a procedural requirement which is satisfied by the filing of any evidence of use at all. It would be enough, he submitted, for the proprietor to say "I have made genuine commercial use of the trade mark".
16. I am unable to accept this submission. It goes too far and pays no regard to the purpose of the provisions in issue. Section 100 and rules 31 and 31A address the difficulty facing anyone who wishes to establish a trade mark has not been used. As explained in the White Paper: Reform of Trade Marks Law, September 1990 at paragraph 4.30:

"It is however difficult and time consuming to have to prove a negative, whereas if a trade mark is in fact being used it is a straightforward matter for the proprietor to demonstrate this. The law will therefore provide for a person who is affected by the presence of a mark on the register ... to call upon the proprietor to produce evidence of use; failure to produce such evidence will be treated as an admission of non-use."

To my mind the requirement laid down by rule 31(3) is not therefore satisfied by a proprietor who simply asserts, through a relevant witness, that the trade mark has been used. Such a bare assertion would provide no evidence as to the actual use made by the proprietor. The evidence must provide a sufficient explanation of how the mark has been used for the tribunal to conclude that the proprietor has an arguable defence to the application. I respectfully concur with Mr. Geoffrey Hobbs QC, sitting as the appointed person, in York Trade Mark [decision 0-191-05 of 1 July 2005] when he said, at paragraph 10 :

"The purpose of rule 31(3) is to allow the Registrar to make an order for revocation if it does not appear from information provided in the manner prescribed by rule 31(2) that the proprietor has a viable defence to the pleaded allegation(s) of non-use."

Conversely, however, the evidence does not have to be so persuasive that, if unanswered, it would necessarily discharge the burden of proof lying upon the proprietor. The scheme which I have summarised clearly contemplates that the proprietor should have an opportunity to supplement its evidence even if the applicant for revocation chooses to file no evidence. The purpose of the evidence under rule 31(3) is to establish that the proprietor has an arguable or viable defence to the attack mounted upon the registration and to provide the applicant for revocation with sufficient information to enable him to investigate the use of the mark upon which the proprietor proposes to rely.

17. In Carte Bleue Trade Marks [2002] RPC 31 Mr. Knight, the principal hearing officer acting for the registrar, observed at paragraph 35:

"Therefore it seems to me that the Act and the Rules indicate that at least initially the registered proprietor in seeking to defend himself against an allegation of non-use need only show use at the outset which indicates clearly to those concerned that a proper defence is, and can be, mounted in relation to the allegation that the trade mark has not been used. "

If, in using the expression "proper defence", the hearing officer meant an arguable defence then I respectfully agree with him. After referring to another decision by one of the registrar's hearing officers in Adrenalin [O/BL336/99] he continued, at paragraph 37:

"From my point of view I would simply reinforce what has been said in these decisions and in the Manual, that the sort of evidence that one would normally hope to see is copies of brochures, catalogues, pamphlets, advertisements, etc all of which show use of the trade mark in question together with some indication of the sales of goods, or the provision of services during the relevant periods. Clearly this cannot be an exhaustive list and is merely an example of documents which might be sent in."

I agree with the hearing officer that evidence of this kind is highly desirable. If the proprietor files such evidence it will assist in clarifying the issues at an early stage and may even serve to shorten the proceedings. It is not, however, a requirement of rule 31(3). If the proprietor is able to establish that it has an arguable defence to the application without filing such evidence then, in my judgment, it is not obliged to do so.

18. With these principles in mind I turn to consider the evidence in the present case. Mr Cooper is plainly a person who is qualified to give evidence of use. He was the person responsible for using the Trade Mark at the relevant time in the course of his farming business. He explains that the mark was used on a daily basis in relation to milk up until 31 March 2001. He demonstrates how the mark was used by exhibiting labels used on the packaging of the cartons of milk sold under the Trade Mark. Those labels bear the words MOO JUICE prominently upon them together with the source of the milk as Matts Hill Farm, Hartlip. He also provides certain corroborative evidence of the use of the mark by exhibiting a letter from his accountants. I have reached the conclusion that this evidence does, just, satisfy the requirements of rule 31(3). Albeit very short, the evidence shows when the mark was used, by whom it was used, how it was used and in relation to which product it was used. In my judgment Mr Cooper has shown an arguable case that he made genuine use of the Trade Mark in the course of his business up to 31 March 2001.
19. It was contended on behalf of the respondent that the evidence relied upon by the appellant consisted of assertion rather than evidence of actual use. First of all it was pointed out that the labels which Mr. Cooper exhibits are not labels which actually appeared on milk cartons within the relevant five year period. Notably, it was said, the "use by" dates had not been completed. I accept this is the case but it is hardly surprising that Mr. Cooper has not retained old cartons of milk so long after their sell by date. The substance of his evidence is, however, that the labels he has exhibited are the same as those which he used prior to 31 March 2001.
20. It was also submitted that the evidence does not explain how the Trade Mark was used or explain in relation to which goods it was used. Further, it fails to give details of any quantities, turnover, profit or marketing costs associated with the Trade Mark. I do not accept that the evidence does not explain how the Trade Mark was used or in relation to which goods it was used. For the reasons that I have given the evidence shows the Trade Mark was used in relation to milk and it shows the way it was used on the milk cartons. I accept, however, that the evidence does not give details of the quantities of milk sold, the turnover achieved or the profits made. These are deficiencies in the evidence. However Mr. Cooper has given evidence that he used the mark in the course of his business every day and in the light of the nature of the use which he has shown and the nature of the business in relation to which he used it I believe he has done enough to show that he has an arguable or viable defence to the allegation of non-use.
21. The hearing officer reached the contrary conclusion. In paragraph 17 of the decision he expressed the conclusion that rule 31(3) imposed upon the proprietor an obligation to show that a proper defence could be mounted to the allegation of non-use. Thus far, I agree with him. He continued:

"18. In light of the guidance provided in Carte Bleue, was the evidence provided by the Registered Proprietor sufficient to allow these proceedings to continue? In my view it was not. Section 100 of the Act includes the word "show"; the Hearing Officer's view on how this word should be interpreted in the context of non-use revocation proceedings are contained in paragraph 29 of this decision. In his skeleton argument and at the hearing, Mr. Allan-Jones focused on the nature of the Registered Proprietor's evidence and why, in his view, it consisted of assertions rather than actual evidence of use of the mark."

After referring to the evidence he then continued:

"20. In Carte Bleue the Hearing Officer commented that the use of the word "show" suggests that the evidence must be more than mere assertion and must be sufficient to demonstrate to those concerned that a proper defence can be mounted; I agree. In paragraphs (32) and (33) of his decision he outlines the sort of documentation and information which might be provided whilst recognising that these are only examples.

21. In paragraph 2 of his witness statement Mr. Cooper confirms that his company's MOO JUICE trade mark was used in the United Kingdom on a daily basis in relation to milk up until 31 March 2001. If Mr. Purvis is correct, this is sufficient to demonstrate use of the mark within the relevant period. However, if the word "show" is to be given the meaning ascribed to it by the Hearing Officer in Carte Bleue (as in my view it should), what documentary material has been provided by the Registered Proprietor to support this claim?

...

25. The evidence provided does, as Mr. Allan-Jones argued, consist of a number of assertions. For example, Mr. Cooper confirms that the mark has been used but provides only a copy of a letter from his accountants who in turn also confirm that the mark has been used. However the only documentary material provided to support these assertions are the undated labels as exhibit MOO 2. Ms. Martin asserts that use of the mark was made by the Registered Proprietor's predecessor in title, but once again no documentary evidence is provided to support this claim. Whilst I accept Mr. Purvis's submission regarding the labels i.e. that as use of the mark ceased some time ago and given the nature of the goods concerned, it was most unlikely that actual examples would remain, it was still in my view, incumbent on the Registered Proprietor to provide other information (of the sort mentioned in Carte Bleue) such as brochures, catalogues, pamphlets, advertisements etc together with an indication of the sales of goods achieved under the mark during the relevant period, which would demonstrate that the mark had been used. As mentioned above, this did not need to be the totality of the Registered Proprietor's evidence; it simply had to be enough to establish that a proper defence to the Application could be mounted. In the event no such information was provided."

22. In my judgment the hearing officer fell into error in these paragraphs in seeking to apply the decision Carte Bleue as if it were laying down a code as to the specific documentary evidence which must be filed in order to satisfy rule 31(3). In particular, and as is apparent from paragraph 25 of the decision, he appears to have been of the view that it was incumbent upon the appellant to provide information such as brochures, catalogues, pamphlets, advertisements or the like together with an indication of the sales of goods achieved under the mark during the relevant period. There is no requirement upon the proprietor to provide such information although it may be desirable for him to do so. The rule only requires that the evidence, considered as a whole, establishes that the proprietor has an arguable defence to the application for revocation.
23. In all circumstances I have reached the conclusion that this appeal must be allowed and the matter remitted to the registry for further directions.