Re Wong Lo Kat Trade Mark, Multi-Access Ltd v Guanghzhou Wong Lo Kat Great Health Business Development Co Ltd
Jane Lambert
Chancery Division (Mr David Stone) Re Wong Lo Kat Trade Mark, Multi-Access Ltd v Guanghzhou Wong Lo Kat Great Health Business Development Co Ltd. [2019] EWHC 3357 (Ch) (12 Dec 2019)
This was an appeal from the decision of the hearing officer, Mr Mark King, to revoke British trade marks 1495166 and 1495167 pursuant to s.46 (1) (a) and (b) of the Trade Marks Act 1994:
"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 non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use...."
The appeal came on before Mr David Stone sitting as a deputy judge of the High Court who heard the case on 29 Oct 2019. Mr Stone delivered his judgment dismissing the appeal on 12 Dec 2019.
The hearing officer had reached his decision on written submissions and evidence. Evidence of use was filed by the proprietor. After considering that evidence (paragraphs [5] to [19]) and directing himself on the law (paragraphs [20] to [22]), Mr King found that the marks had not been put to genuine use in the UK for the goods for which they had been registered {paragraphs [23] to [36]). Between paragraphs [37] and [43] he addressed a separate "specification" argument and concluded that even if genuine use of the marks could be proved such use did not cover the specified goods.
The proprietor appealed on the following grounds:
"(a) Having correctly identified the section 46 (1) (b) period, the Hearing Officer erred in law at [33] and [34] of the Decision ("at least") by substituting an arbitrary period of less than five years in place of the correct five-year period, and by misdirecting himself to consider whether use of the Trade Mark stopped during the relevant period, as opposed to whether or not use occurred during that period;
(b) Having correctly identified the principles relevant to the assessment of genuine use, the Hearing Officer erred at [35] of the Decision by applying a different test, namely whether the evidence created an "overall picture" that the Registrations had been put to genuine use;
(c) The Hearing Officer failed to take proper account of the evidence, in particular:
(i) on several occasions he failed to differentiate between evidence and exhibits, for example, at [32] and [34] of the Decision;
(ii) at [32] of the Decision, the Hearing Officer wrongly stated that there was no evidence that the activities at the Tradewinds website were with the consent of the Proprietor;
(iii) the Hearing Officer wrongly focused on the need for evidence of sales (for example at [31] and [32] of the Decision), where no such need is established in law; and
(iv) the Hearing Officer failed to appreciate the totality of the evidence that was before him;
(d) The Hearing Officer's obiter conclusion at [42] of the Decision that the Proprietor had not shown use of the Trade Mark in relation to the goods for which the Registrations were registered was wrong; and
(e) Therefore, the Hearing Officer was wrong to find:
(i) that there had been no genuine use within the section 46 (1) (a) periods;
(ii) that use had not commenced or resumed after the section 46 (1) (a) periods; and
(iii) that the Proprietor had failed to show genuine use during the relevant period under section 46 (1) (b)."
"(a) Having correctly identified the section 46 (1) (b) period, the Hearing Officer erred in law at [33] and [34] of the Decision ("at least") by substituting an arbitrary period of less than five years in place of the correct five-year period, and by misdirecting himself to consider whether use of the Trade Mark stopped during the relevant period, as opposed to whether or not use occurred during that period;
(b) Having correctly identified the principles relevant to the assessment of genuine use, the Hearing Officer erred at [35] of the Decision by applying a different test, namely whether the evidence created an "overall picture" that the Registrations had been put to genuine use;
(c) The Hearing Officer failed to take proper account of the evidence, in particular:
(i) on several occasions he failed to differentiate between evidence and exhibits, for example, at [32] and [34] of the Decision;
(ii) at [32] of the Decision, the Hearing Officer wrongly stated that there was no evidence that the activities at the Tradewinds website were with the consent of the Proprietor;
(iii) the Hearing Officer wrongly focused on the need for evidence of sales (for example at [31] and [32] of the Decision), where no such need is established in law; and
(iv) the Hearing Officer failed to appreciate the totality of the evidence that was before him;
(d) The Hearing Officer's obiter conclusion at [42] of the Decision that the Proprietor had not shown use of the Trade Mark in relation to the goods for which the Registrations were registered was wrong; and
(e) Therefore, the Hearing Officer was wrong to find:
(i) that there had been no genuine use within the section 46 (1) (a) periods;
(ii) that use had not commenced or resumed after the section 46 (1) (a) periods; and
(iii) that the Proprietor had failed to show genuine use during the relevant period under section 46 (1) (b)."
As to the first ground of appeal, the proprietor accepted that the hearing officer had correctly identified the relevant 5 year period under s.46 (1) (b) but submitted that Mr King then substituted an arbitrary period of less than 5 years in place of the correctly identified period in paragraphs [33] and [34] of his decision. The learned deputy judge could find nothing in those paragraphs that suggested that the hearing officer had in mind any period other than the relevant period which he had correctly found at paragraph [2] and had repeated at paragraph [23] of his decision. He further set out the relevant period at [25]. He correctly calculated the relevant period at [31], at [33] and again at [34]. He again set out the correct dates for the relevant period at [36]. There was nothing in Mr King's review of the evidence, his comments at [33] or [34] or indeed elsewhere in the decision to support the notion that he misunderstood the period, or applied a different period. Mr Stone did not consider that there was anything in the proprietor's argument that the hearing officer focussed on when use "stopped" rather than when it "occurred." In his judgment, the hearing officer applied the correct s.46 (1) (b) period and did not misdirect himself to consider whether use stopped rather than occurred during the relevant period. He, therefore, rejected that ground of appeal.
As for the second, the proprietor submitted that the hearing officer erred at [35] when he rejected the evidence of use on the basis that "as a whole [it] does not create an overall picture that the [R]egistrations have been genuinely used in the UK". The proprietor argued that the hearing officer applied an "overall picture" test that is not to be found in the Trade Marks Act 1994 or case law. The deputy judge rejected that contention, In his view, the hearing officer stated the test correctly and conducted an holistic analysis of the totality of the evidence before him in order to take into account all the relevant facts and circumstances.
In respect of the third ground, the proprietor complained that the hearing officer had failed to take proper account of the witness statements and exhibits that had been lodged on its behalf. Mr Stone read the evidence and considered each of the proprietor's criticisms. He could find nothing in the proprietor's complaints but found one area of evidence that Mr King should have addressed. However, that did not affect his overall conclusion that the hearing officer's assessment had been correct,
In view of his findings on the first three grounds, it was not strictly necessary for Mr Stone to consider the fifth ground. Nevertheless, as it had been argued the deputy judge addressed it. He first analysed Mr Justice Henry Carr's decision in Pathway IP SARL v Easygroup Ltd [2018] EWHC 3608 (Ch) (21 Dec 2018) and the cases referred to in that decision. At paragra[h [84] of his judgement Mr Stone gave the following guidance:
"(a) The system of trade mark registration requires for its utility that traders consulting the register are able to tell, without any great difficulty, what is registered and what is not. Searching the register would be next to impossible without some form of classification system. Much of the world has chosen the Nice Classification system for use with trade mark applications and registrations. For trade marks filed with the UKIPO and the EUIPO, the Nice Classification is mandatory – it cannot be avoided – but it is for the applicant for a trade mark to say in which Class or Classes it wishes to specify the goods and/or services for which it has applied.
(b) The Nice Classification breaks all goods and services into 45 classes: it seeks to give every type of good and service a home within a single Class. Like most good classification systems, it seeks to give each particular good or service only one home. Properly used, trade mark applicants, and the UKIPO and EUIPO, are able to allocate a good or service to a home within the classification system. If goods and services have been properly classified, other traders are able to find the trade marks to which they relate.
(c) Traders seeking to use a mark also know where in the classification to look to find marks which might be registered for similar goods/services. It is to be remembered that this is a separate activity to classifying, because a trade mark registration protects against use of an identical mark on identical goods/services, but also protects against use of an identical or similar mark on similar goods/services where there is a likelihood of confusion. Thus, a practice has developed of searching in what are described as "related classes". Thus, for example, a trader wishing to launch a new brand of sparkling water will be keen to see what prior marks have been registered in Class 32, but also related classes which include similar goods, such as Class 5 (medicinal beverages), Class 29 (milk), Class 30 (coffee and tea) and Class 33 (alcoholic beverages).
(d) Therefore, for the trade mark registration system to work, goods and services must be classified where they would be expected to be found, even if the scope of protection granted to the trade mark registration covers a broader range of goods or services, some of which may be classified in other Classes.
(e) The result is that classification will often not be obvious to the casual observer. But there is a logic to where goods/services are placed, often based at least in part on the history of the Nice Classification, and/or the development of the goods/services in question. The Nice Classification thus runs to a vast number of pages, although electronic search tools make it swift and easy to find where particular goods or services are to be properly classified. Officials meet regularly to update the Nice Classification, especially in relation to new products or services that emerge (in-line skates and movie streaming might be two examples – there are many others). There are also many examples in the Nice Classification Class headings of goods which were once important in trade, but which modern consumers may fail to identify (meerschaum and gutta-percha may be examples).
(f) As Henry Carr J noted in Pathway, there are types of products which will be classified into different Classes depending on their function – he gave the example of valves, which can be classified, he said, in 11 different Classes depending on their function. A trader consulting the register knows which type of valve is meant, in that example, by where it has been classified. So the trader in bottles for babies will know that registrations for "valves" in Class 10 may be relevant, but will be content to ignore registrations for "valves" in Class 15 which relate to musical instruments (which are not similar goods to bottles for babies).
(g) Therefore, for the system to work, it is essential that, from the time a trade mark application is filed, the applicant, the relevant Office and all third party traders know what exactly has been applied for. The mark must be clear and precise, and the specification of goods/services must be clear and precise. Part of the precision of the goods/services comes from the words used, and in many cases, part of it will come from the Nice Classification. As Henry Carr J said in Pathway at [104] (emphasis added): "[w]here the words are neither clear nor precise, for example because they apply to goods or services registrable in multiple classes, the class number must be relevant to resolve ambiguity." It seems to me that this will be the case more often than not. The decision on whether or not reference to the Nice Classification is necessary cannot be resolved by simply asking "are the words in the specification clear and precise". The word "valves" is, on its own, clear and precise – and could readily refer to trumpet valves or valves for bottle for babies. But that is not the end of the investigation. The tribunal must ask itself whether valves are registerable in multiple classes, and, as they are, then apply the Nice Classification to discover which type of valves are claimed. An easier approach would be to look at the Nice Classification in every case, and work from there. For some goods and services, the meaning of the words will be the same, whether assessed by the ordinary consumer or by the tribunal reviewing the Nice Classification. But for many goods and services, it is only by knowing the Class in which the application was filed that it is possible to determine a clear and precise meaning for the words used in the specification.
(h) Classification practice before the UKIPO used to involve indicating the Class number in the specification itself – such was the case in 1992 when the Registrations in this case were filed. Thus, the specifications in this case are "beverages for medicinal purposes; all included in Class 5" and "beverages; all included in Class 32". This was done at the time to emphasise that beverages that fell in other Classes could not be covered by specification in these Classes. Thus, neither specification includes alcoholic beverages, which were and are classified in Class 33. That practice has fallen out of fashion, in large part, I imagine, because it is accepted that goods or services that fall in other Classes cannot fall into the Class in question."
The deputy judge applied those principles to the specified goods for trade mark 1495167 and concluded that even if the proprietor had proved use of the trade mark on canned (liquid) herbal tea, that would not have supported continued registration of that mark.
"(a) The system of trade mark registration requires for its utility that traders consulting the register are able to tell, without any great difficulty, what is registered and what is not. Searching the register would be next to impossible without some form of classification system. Much of the world has chosen the Nice Classification system for use with trade mark applications and registrations. For trade marks filed with the UKIPO and the EUIPO, the Nice Classification is mandatory – it cannot be avoided – but it is for the applicant for a trade mark to say in which Class or Classes it wishes to specify the goods and/or services for which it has applied.
(b) The Nice Classification breaks all goods and services into 45 classes: it seeks to give every type of good and service a home within a single Class. Like most good classification systems, it seeks to give each particular good or service only one home. Properly used, trade mark applicants, and the UKIPO and EUIPO, are able to allocate a good or service to a home within the classification system. If goods and services have been properly classified, other traders are able to find the trade marks to which they relate.
(c) Traders seeking to use a mark also know where in the classification to look to find marks which might be registered for similar goods/services. It is to be remembered that this is a separate activity to classifying, because a trade mark registration protects against use of an identical mark on identical goods/services, but also protects against use of an identical or similar mark on similar goods/services where there is a likelihood of confusion. Thus, a practice has developed of searching in what are described as "related classes". Thus, for example, a trader wishing to launch a new brand of sparkling water will be keen to see what prior marks have been registered in Class 32, but also related classes which include similar goods, such as Class 5 (medicinal beverages), Class 29 (milk), Class 30 (coffee and tea) and Class 33 (alcoholic beverages).
(d) Therefore, for the trade mark registration system to work, goods and services must be classified where they would be expected to be found, even if the scope of protection granted to the trade mark registration covers a broader range of goods or services, some of which may be classified in other Classes.
(e) The result is that classification will often not be obvious to the casual observer. But there is a logic to where goods/services are placed, often based at least in part on the history of the Nice Classification, and/or the development of the goods/services in question. The Nice Classification thus runs to a vast number of pages, although electronic search tools make it swift and easy to find where particular goods or services are to be properly classified. Officials meet regularly to update the Nice Classification, especially in relation to new products or services that emerge (in-line skates and movie streaming might be two examples – there are many others). There are also many examples in the Nice Classification Class headings of goods which were once important in trade, but which modern consumers may fail to identify (meerschaum and gutta-percha may be examples).
(f) As Henry Carr J noted in Pathway, there are types of products which will be classified into different Classes depending on their function – he gave the example of valves, which can be classified, he said, in 11 different Classes depending on their function. A trader consulting the register knows which type of valve is meant, in that example, by where it has been classified. So the trader in bottles for babies will know that registrations for "valves" in Class 10 may be relevant, but will be content to ignore registrations for "valves" in Class 15 which relate to musical instruments (which are not similar goods to bottles for babies).
(g) Therefore, for the system to work, it is essential that, from the time a trade mark application is filed, the applicant, the relevant Office and all third party traders know what exactly has been applied for. The mark must be clear and precise, and the specification of goods/services must be clear and precise. Part of the precision of the goods/services comes from the words used, and in many cases, part of it will come from the Nice Classification. As Henry Carr J said in Pathway at [104] (emphasis added): "[w]here the words are neither clear nor precise, for example because they apply to goods or services registrable in multiple classes, the class number must be relevant to resolve ambiguity." It seems to me that this will be the case more often than not. The decision on whether or not reference to the Nice Classification is necessary cannot be resolved by simply asking "are the words in the specification clear and precise". The word "valves" is, on its own, clear and precise – and could readily refer to trumpet valves or valves for bottle for babies. But that is not the end of the investigation. The tribunal must ask itself whether valves are registerable in multiple classes, and, as they are, then apply the Nice Classification to discover which type of valves are claimed. An easier approach would be to look at the Nice Classification in every case, and work from there. For some goods and services, the meaning of the words will be the same, whether assessed by the ordinary consumer or by the tribunal reviewing the Nice Classification. But for many goods and services, it is only by knowing the Class in which the application was filed that it is possible to determine a clear and precise meaning for the words used in the specification.
(h) Classification practice before the UKIPO used to involve indicating the Class number in the specification itself – such was the case in 1992 when the Registrations in this case were filed. Thus, the specifications in this case are "beverages for medicinal purposes; all included in Class 5" and "beverages; all included in Class 32". This was done at the time to emphasise that beverages that fell in other Classes could not be covered by specification in these Classes. Thus, neither specification includes alcoholic beverages, which were and are classified in Class 33. That practice has fallen out of fashion, in large part, I imagine, because it is accepted that goods or services that fall in other Classes cannot fall into the Class in question."
The deputy judge applied those principles to the specified goods for trade mark 1495167 and concluded that even if the proprietor had proved use of the trade mark on canned (liquid) herbal tea, that would not have supported continued registration of that mark.
In relation to the fourth ground, the learned deputy judge noted that the evidence of use in relation to the s.46 (1) (a) period was manifestly inadequate, and while the proprietor did not withdraw that aspect of the appeal, it did not press it with great vigour. For that reason, Mr Stone rejected that ground.
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