England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand. London. WC2A 2LL
		29/07/2008

MR. JUSTICE FLOYD :

1. This is an appeal from a decision of Mr. Mike Foley, the hearing officer acting for the Registrar of Trade Marks, dated 18th January 2008.
2. On 15th August 2003, Minimax GmbH & Co KG (to whom I will refer as "Minimax") applied to register the trade mark MINIMAX in classes 1 and 9 in relation to the following specifications of goods:

"Class 1	Fire extinguishing agents and compositions; cable coatings for fire protection.
Class 9	Fire extinguishing and fire protection appliances, plants, systems and components therefor; fire-fighting equipment (including mobile equipment), foam tubes, mixers, foam-water hydrants, foam-water guns, portable fire engines; light foam generators, stationary and mobile fire-fighting plant, including plant for ships; sprinkler plant, electrical and electronic monitoring equipment, reporting equipment and control equipment as well as plant made from these; electrical and electronical apparatus and instruments for fire protection; electrical and electronical control apparatus for fire protection systems; fire detection systems and components therefor; smoke detectors, computer operating programs for fire protection systems; clothing for protection against fire, fire extinguishers and fire extinguishing devices, pipe fire stops, cable fire stops."

3. On 30th January 2006, Chubb Fire Limited (to whom I will refer as "Chubb") gave notice of opposition to that application under section 5(4)(a) of the Trade Marks Act. Section 5(4)(a) provides:

"5. (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 ..."

4. Chubb say that the use of the mark applied for is liable to be prevented by the law of passing off.
5. The essential requirements for a cause of action under the law of passing off are well-known: see Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 406. In WILD CHILD Trade Mark [1998] RPC 455, Geoffrey Hobbs QC, the Appointed Person, approved a passage from Halsbury's Laws of England setting out the essential elements of the tort:

"The necessary elements of the action for passing off have been restated by the House of Lords as being three in number:

(1) that the plaintiffs goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature;

(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the plaintiff; and

(3) that the plaintiff has suffered to is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation."

6. In the present case, as is not uncommon, the claim that the use of MINIMAX by Chubb would be likely to be prevented was assessed by the hearing officer without the benefit of oral evidence or cross-examination. Indeed, he did not have the benefit of written or oral argument.
7. In REEF Trade Mark [2002] RPC 19, Pumfrey J (as he then was) said this in relation to assessing a passing off claim in these circumstances:

"27. There is one major problem in assessing a passing of claim on paper, as will normally happen in the Registry. This is the cogency of the evidence of reputation and its extent. It seems to me that in any case in which this ground of opposition is raised the registrar is entitled to be presented with evidence which at least raises a prima facie case that the opponent's reputation extends to the goods comprised in the applicant's specification of goods. The requirements of the objection itself are considerably more stringent that the enquiry under s. 11 of the 1938 Act (see Smith Hayden & Co. Ltd's Application (OVAX) (1946) 63 RPC 97 as qualified by BALI Trade Mark [1969] RPC 472). Thus the evidence will include evidence from the trade as to reputation; evidence as to the manner in which the goods are traded or the services supplied; and so on.

28. Evidence of reputation comes primarily from the trade and the public, and will be supported by evidence of the extent of use. To be useful, the evidence must be directed to the relevant date. Once raised, the applicant must rebut the prima facie case. Obviously, he does not need to show that passing off will not occur, but he must produce sufficient cogent evidence to satisfy the hearing officer that it is not shown on the balance of probabilities that passing off will occur."

8. Those observations are obviously intended as helpful guidelines as to the way in which a person relying on section 5(4)(a) can raise a case to be answered of passing off. I do not understand Pumfrey J to be laying down any absolute requirements as to the nature of evidence which needs to be filed in every case. The essential is that the evidence should show, at least prima facie, that the opponent's reputation extends to the goods comprised in the application in the applicant's specification of goods. It must also do so as of the relevant date, which is, at least in the first instance, the date of application.
9. When hearing an appeal from the Trade Marks Registry, the court is conducting a review and not a re-hearing. In the well-known passage in REEF Trade Mark [2002] EWCA Civ 763; [2003] RPC 5 Robert Walker LJ described the approach in this way:

"28. In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow [1956] AC 14 at pp.38-39, about the general commissioners, a tribunal with a specialised function but often little specialised training.) On the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.

29. The appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed. The duty to give reasons must not be turned into an intolerable burden: see the recent judgment of this court in English v Emery Reimbold & Strick Ltd (and two other appeals heard with it) [2002] EWCA Civ 605, April 30, 2002, para. 19:

'... the judgment must enable the appellate court to understand why the judge reached his decision. This does not mean that every factor which weighed with the judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the judge's conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the judge to identify and record those matters which were critical to his decision'."

10. The hearing officer found that at the relevant date the applicants had a goodwill and reputation in MINIMAX in respect of fire extinguishers and the servicing, refurbishment and embellishment thereof as well as the servicing and refurbishment of hose reels. Given that the marks were identical, he considered that confusion and damage followed. He, therefore, upheld the opposition and refused the application.
11. In the background to this case is another set of proceedings. Those were an application by Minimax for revocation of two trade marks in the name of Chubb for the name MINIMAX. The revocation was based on section 46(l)(b) of the Act, that is to say non-use for a period of five years. In his decision in those proceedings, Mr. Reynolds, another of the Registrar's hearing officers, held that there had been no genuine use of either mark by Chubb in the relevant periods which, for the purposes of that case, were 1998 to 2003 in the case of one mark and 1999 to 2004 in the case of the other. The evidence relied on by Chubb in those proceedings to establish genuine use was substantially the same evidence as relied on by them in these proceedings to establish that they have a relevant goodwill and reputation.
12. Miss Denise McFarland, who appeared for Minimax, was critical of the failure of Mr. Foley, the hearing officer in this case, to have regard to the previous decision of Mr. Reynolds. However, it must be borne in mind that the two hearing officers were not addressing the same question. It is quite possible for a party to have made no real use of a mark for a period of five years but to retain a goodwill in a name sufficient to support a passing off action.
13. That that is the law can be seen from two cases which were cited to me. The first is Ad-Lib Club v Granville [1972] RPC 673. In that case, a night club had operated for a period of two years from 1964 to 1966 under the name AD-LIB CLUB before it was closed down for making excessive noise. Since 1966 the plaintiff company had sought alternative premises but apparently unsuccessfully. The defendant, who did not file any evidence in response to an application for an interlocutory injunction, was proposing to open a club under the same name. The Vice-Chancellor, Sir John Pennycuick, considered the question of whether a party who had ceased to trade could nevertheless maintain an action for passing off. At page 677, lines 1 to 10 he said this:

"It seems to me clear on principle and on authority that where a trader ceases to carry on his business he may none the less retain for at any rate some period of time the goodwill attached to that business. Indeed it is obvious. He may wish to reopen the business or he may wish to sell it. It further seems to me clear in principle and on authority that so long as he does retain the goodwill in connection with his business he must also be able to enforce his rights in respect of any name which is attached to that goodwill. It must be a question of fact and degree at what point in time a trader who has either temporarily or permanently closed down his business should be treated as no longer having any goodwill in that business or in any name attached to it which he is entitled to have protected by law."

14. More recently, in Sutherland v V2 Music Ltd [2002] EMLR 28, Laddie J had to consider whether the goodwill generated by a funk music band called Liberty 1, which had been formed in the late 1980s, still subsisted in March 2001. Laddie J considered the relevant principles and reviewed the authorities. At paragraph 22 he said this:

"There is one other general matter to deal with before turning to the facts, namely the size of the claimant's reputation. At some point a reputation may be respected by such a small group of people that it will not support a passing-off action. Neither Mr. Purle nor Mr. Speck were able to formulate a test for this bottom level. Mr. Purle said it was a matter of fact and degree. I agree with that. The law of passing off protects the goodwill of a small business as much as the large, but it will not intervene to protect the goodwill which any reasonable person would consider trivial".

15. It is difficult to define any minimum threshold. It will all depend on the facts. How big was the reputation when use stopped? How lasting in the public eye are the goods or services to which the mark is applied? How, if at all, has the person asserting the existence of the goodwill acted in order to keep the reputation in the public eye? The greater each of these elements is, the longer, it seems to me, it will take for any goodwill to dissipate.
16. Mr. Foley summarized the evidence of an existing reputation in the following way:

"5. This consists of a Witness Statement dated 8 August 2006, from Rebecca Tew, a trade mark attorney with Marks & Clerk, the applicant's representatives in these proceedings. Ms. Tew's Statement does no more than exhibit a copy of the evidence that was filed by the opponents in other proceedings involving the same parties whereby the applicants sought revocation of the opponents' registration No. 432900 for the trade mark MINIMAX. This evidence is shown as Exhibit RT1.

6. The Exhibit consists of a copy of a Witness Statement dated 4 May 2004, from Anthea Bowdler, Commercial Manager of Chubb Fire Limited, a position she has occupied since 1 July 1997. Ms. Bowdler refers to her company's ownership of the MINIMAX trade mark stating that it was initially owned by Minimax Limited, who started using it in 1903 in respect of a 'conical extinguisher'. She goes on to set out some of the history of the MINIMAX mark, some historical material being shown as Exhibit AB1.

7. In 1955, Minimax Limited was purchased by the Pyrene Company Limited, that company in turn being taken over by Chubb & Sons in 1967 and operated under the Pyrene name until 1971 when Chubb Fire Security Limited (now Chubb Fire Limited) was formed. Ms. Bowdler goes on to state that in 1981 Chubb Fire Security Limited launched a new range of Chubb fire extinguishers. There was a period of time when the MINIMAX mark was not used directly in relation to fire extinguishers and other fire fighting apparatus. The servicing, refurbishment and refilling of existing MINIMAX extinguishers and hose reels continued. In 1992 the Pyrene company introduced a new range of pressure model extinguishers under the MINIMAX brand. Ms. Bowdler states that she has been unable to locate any supporting documentation, but that her company has retained a sample of the extinguisher that she believes was manufactured in 1999. A photograph of the extinguisher is provided as Exhibit AB2, and shows the Chubb name placed above 'MINIMAX', the product being a powder fire extinguisher stated to be suitable for use in the home, car, caravan or on a boat. There is no means by which to accurately date this.

8. Ms. Bowdler goes on to say that at the present time her company, through its divisions and service centres continues to service MINIMAX hose reels and also receives MINIMAX extinguishers for refilling and refurbishment from the trade. She says that the service centre at Stakehill Industrial Park, Middleton, Manchester has advised that they receive around 20 C02 extinguisher for refills/refurbishment a year and around 6-10 old powder extinguishers. Ms. Bowdler says that her company currently refills and refurbishes 75-100 of the MINIMAX stored pressure extinguishers each year, which involves the provision of fire extinguishing compounds under the MINIMAX mark.

9. Ms. Bowdler continues saying that around June 1999 and up until June 2000, her company made genuine and good preparations for the launch of a new MINIMAX product, a project which was headed by John Dus a design and development engineer with Chubb Fire Limited. Exhibit AB3 consists of a copy of the development file stated to have been kept by Mr. Dus and clearly shows there had been negotiations, and research carried out into the development of a new extinguisher to be marketed under the MINIMAX brand. As part of this preparation, the corresponding design of the portable fire extinguisher was registered in the United Kingdom under 2083482, a copy of this registration is shown as Exhibit AB4.

10. Ms. Bowdler goes on to give details of the preparations towards the launch of the new MINIMAX product, stating that these were interrupted in November 2000 by the reorganisation of the Chubb Group. She confirms that at that time her company was working upon a new domestic extinguisher that was to be launched in the UK under the MINIMAX brand. There is no evidence that this has taken place. Ms. Bowdler goes on to comment on the reputation accruing to and remaining with the MINIMAX mark and the consequences if Minimax GmbH & Co KG were to use and register the mark."

17. At paragraph 24, he said this:

"24. From the evidence it would seem that the trade in MINIMAX extinguishers generated a goodwill up to 1999, and that the after sale service of refilling and refurbishment of the MINIMAX products would have kept this alive. There is no documentary evidence that supports Ms. Bowdler's claims, but that does not take away their evidential value. Ms. Bowdler is not some disconnected representative, but the Commercial Manager of Chubb Fire Limited a position she has occupied continuously since 1 July 1997. Although I do not know the exact nature of her responsibilities, in the absence of evidence to the contrary I see no reason why I should not accept this statement at face value. I am therefore satisfied that at the relevant date the opponents had a goodwill and reputation in respect of the MINIMAX name in respect of fire extinguishers, and the servicing, refurbishment and refilling of extinguishers, as well as the servicing and refurbishment of hose reels."

18. The hearing officer summarized the applicant's evidence more shortly. He did this at paragraph 11:

"11. This consists of a Witness Statement dated 5 March 2007, and comes from Francis Wombwell, a trade mark attorney with Potts Kerr & Co, the applicants' representatives in these proceedings. The Statement consists of submissions on the contents of the opponents' evidence, including its evidential value, and arguments relating to the substantive issues. As such it is not necessary or appropriate that I summarise the Statement. I will, of course, take the contents fully into account in my determination of this case."

19. It is fair to say that Mr. Wombwell said in paragraph 8 of his witness statement:

"Minimax are a long established and well regarded trader in the field of goods covered by class 1 and 9 application classification and have the benefit of long use of the name or mark 'MINIMAX' upon and in relation to such goods and/or goods/services associated therewith. Although based in Germany, Minimax is a global business and is well known in the UK, Europe and in many other countries throughout the world as a leading designer, supplier and manufacturer of fire protection systems and products relating thereto".

20. I have to say that I sympathise with the hearing officer's view that the witness statement of Mr. Wombwell, who is a trade mark attorney with Potts Kerr & Co, who are the applicant's representatives in these proceedings, is of little evidential value. The assertions about Minimax's own use of the trade mark MINIMAX in this country are simply that: they are wholly devoid of detail and it seems to me entirely proper for those matters, insofar as they are relevant at all, to be placed on one side.
21. Miss McFarland attacked the hearing officer's decision in essentially two ways. Firstly, she says that although the hearing officer had, on the face of it, properly set out the principles that are to be applied in a case such as this, when he had come to apply them, he had wholly failed to do so. She goes on to submit that if the hearing officer had properly applied the principles he could not possibly have concluded on the evidence that Chubb had established the necessary case of passing off.
22. She further submitted as her second ground that the hearing officer had failed to give proper weight to the decision of Mr. Reynolds in the previous proceedings.
23. It is clear that the hearing officer attached considerable weight to the passage in Ms. Bowdler's evidence on behalf of Chubb which explained the extent to which Chubb were servicing, refurbishing and refilling existing extinguishers and hose reels. It is worth setting out that paragraph in full:

"3. In 1981, Chubb Fire Security Limited launched a new range of Chubb Fire extinguishers and there was a period of time during which the mark MINIMAX may not have been used directly in relation to fire extinguishers and other fire fighting appliances. However, during this period the servicing, refurbishment and refilling of existing extinguishers and hose reels continued and in 1992 the Pyrene Company introduced a new range of pressure model extinguishers under the MINIMAX brand. Whilst I have been unable, as yet, to locate any supporting documentation, we have retained a sample of the modern MINIMAX extinguisher which we believe was manufactured in early 1999. The extinguisher can be exhibited in these proceedings if appropriate and can certainly be produced at a Hearing. A copy photograph of the extinguisher bearing the production dates of 1997, 1998 and 1999 is exhibited to this statement marked Exhibit AB2."

24. What the hearing officer said about that evidence can be seen from paragraphs 21 and 22 of his decision:

"21. It therefore seems that the opponents have not used the MINIMAX name in any trade in goods since 1999, but that does not necessarily mean that they cannot have generated or preserved any goodwill in the following years. In Ansul BV v Ajax Brandbeveiliging BV, paragraphs 40-42, the European Court of Justice in Case C40/01 stated:

'40. Use of the mark may also in certain circumstances be genuine for goods in respect of which it is registered that were sold at one time but are no longer available.

41. That applies, inter alia, where the proprietor of the trade mark under which such goods were put on the market sells parts which are integral to the make-up or structure of the goods previously sold, and for which he makes actual use of the same mark under the conditions described in paragraphs 35 to 39 of this judgment. Since the parts are integral to those goods and are sold under the same mark, genuine use of the mark for those parts must be considered to relate to the goods previously sold and to serve to preserve the proprietor's rights in respect of those goods.

42. The same may be true where the trade mark proprietor makes actual use of the mark, under the same conditions, for goods and services which, though not integral to the makeup or structure of the goods previously sold, are directly related to those goods and intended to meet the needs of customers of those goods. That may apply to after-sales services such as the sale of accessories or related parts, or the supply of maintenance and repair services.'

22. Although written in the context of genuine use for the purposes of maintaining a registration of a trade mark, the principle seems to apply in cases where the consideration is whether there is use that will have maintained any pre-existing goodwill in the context of passing-off, usually expressed as residual goodwill. If the use is genuine then it must have genuine benefits in maintaining any pre-existing goodwill and reputation."

25. Miss McFarland submits that, read in context, it would be incorrect to infer from the evidence of Ms. Bowdler that the mark MINIMAX was used in physical or other relationship to the gas actually supplied in recent times to fill MINIMAX fire extinguishers. I think Miss McFarland is right and the proper inference to draw is that MINIMAX extinguishers are returned to Chubb and are filled there by them. No question of a supply to the public of any product labelled MINIMAX arises. Of course, if that were so and there was continued trading under the name MINIMAX, it would be very difficult to justify registration of the mark here on any basis. Not only that but it would be difficult to see why the non-use objection in the earlier proceedings would not have succeeded.
26. Miss McFarland builds on that submission by saying that, if that is the case, the analogy drawn by the hearing officer between the Ansul case and the present case is not a good one. The most that can be drawn from the evidence is that customers are still in possession of MINIMAX extinguishers and other goods such as hoses and are having them serviced by Chubb. She says that the failure of the hearing officer to appreciate this important distinction is an error of principle which would enable me to substitute my own assessment for that of the hearing officer.
27. I do think that the hearing officer has fallen into error here. It does seem to me that, in the passage I have quoted from his decision, he was treating the evidence of Ms. Bowdler as establishing some continued use of the mark. I think that all that is being referred to here is the fact that Chubb were servicing and refilling these extinguishers.
28. Given that is so, I think I must take a fresh look at the evidence on this basis. The evidence, as the hearing officer observed, did establish some use up to 1999 but thereafter in the period from 1999 to the application there is really no evidence of use at all. Mr. Malynicz says it is safe for me to infer that customers were going to Chubb to have their products serviced or refurbished because they recognised that Chubb were the persons responsible for the Minimax brand. I am by no means convinced that the evidence goes that far.
29. Miss McFarland also made criticisms of the evidence as a whole. She points to the fact that there really is no evidence of the scale of the re-introduction of the MINIMAX name in the 1990s. What, therefore, one is left with is considerable historical use, as, for example, evidenced in the historical brochure exhibited as AB1, a wholly unspecified, in extent at least, re-introduction in the 1990s and some servicing of existing products which continues to this day. Miss McFarland, therefore, submits that this evidence was wholly inadequate to establish a sufficient reputation for the purposes of a passing off case.
30. Mr. Malynicz warned me against the dangers in an exercise such as this in interfering with the decision of the hearing officer. He pointed to the materials which were before the hearing officer and recognised that they were less than perfect. Nevertheless, they did, he submitted, establish that at the application date there was a sufficient residual goodwill and reputation in the name Minimax for Chubb to be able to sustain a claim in passing off.
31. He drew attention to the fact that, in contrast to some of the reported cases such as Ad-Lib, the business in MINIMAX fire extinguishers had taken place over many decades. The history is described, albeit without much detail, in the brochure to which I have already referred. He drew attention to the fact that extinguishers had been supplied on a substantial scale during the First World War and production had been at a level of 200 a day. He also noted that an extinguisher had been supplied to the Czar of Russia and to King Edward VII. All told he submitted that the evidence before the hearing officer established that a product was on the market until 1999, albeit that there had been earlier periods of interruption.
32. For my part, reviewing that evidence as a whole, I am wholly unable to detect that there was a proper basis in 2003 for the hearing officer to conclude that there remained a sufficient residual reputation in the name for a passing off action to succeed. At the very most, the name had been in the public eye until the 1980s. The extent of any use thereafter seemed to me to be either unclear or entirely trivial.
33. It follows that, for those reasons, I propose to allow the appeal.