Dyson Ltd. v The Registrar of Trade Marks, Court of Appeal - Chancery Division, May 15, 2003, [2003] EWHC 1062 (Ch)

England and Wales High Court of Justice

Case Number: CH/2002/APP/645

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Dyson Ltd. v The Registrar of Trade Marks, Court of Appeal - Chancery Division, May 15, 2003, [2003] EWHC 1062 (Ch)

Case No: CH/2002/APP/645

Neutral Citation Number: [2003] EWHC 1062 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: 15th May 2003

Before :

THE HONOURABLE MR JUSTICE PATTEN

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Between :

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Henry Carr QC (instructed by Wragge & Co) for the Appellant

Michael Tappin (instructed by the Treasury Solicitor) for the Respondent

Hearing dates : 21st to 25th March 2003

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Approved Judgment

Mr Justice Patten :

Introduction

1. In 1993 Dyson Limited (formerly Dyson Appliances Limited) began the commercial manufacture of the Dual Cyclone vacuum cleaner. This is a bagless cleaner in which the dirt and dust is collected in a chamber forming part of the machine. Aside from the cyclonic technology itself, the most obvious feature of this type of vacuum cleaner, as sold in the United Kingdom, is that the collection bin or chamber is made from clear plastic, which enables the user to see the dirt and other waste material as it is vacuumed up. The evidence is that in some countries (most notably Germany) consumers prefer not to see the debris as it is collected, but the response in the United Kingdom to this facility has been enthusiastic. In 1993 Dyson's turnover in the UK in respect of cyclonic vacuum cleaners was £3m. In 1996 it was £60m.

2. On 10th December 1996 Notetry Limited (a company owned by Mr James Dyson, who is the Chairman of Dyson Limited) applied to register a series of six trade marks in Class 9 in respect of

``Apparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods.''

The application was assigned to Dyson Limited on 5th February 2002. All six marks sought to represent the transparent bin or collection chamber. The first three were simply verbal descriptions of the bin, whereas the fourth, fifth and sixth marks comprised a verbal description which in terms referred to a picture of the bin as part of the two available versions of the cyclonic cleaner: one an upright cleaner; the other the cylinder model. The first four marks have been deleted from the application, and it has been pursued in respect of the following two marks:

``The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.''

3. The application was objected to by the Registrar of Trade Marks on the absolute grounds set out in ss.3(1)(a)-(c) of the Trade Marks Act 1994 (``the 1994 Act''). An earlier objection under s.3(2)(b) was waived by the Registrar after the applicant's Trade Mark Attorney had made submissions confirming that the essential feature of the marks consisted not of a shape, but rather of the transparent collecting bin. On 23rd July 2002 the hearing officer (Mr Allan James) upheld each of the Registrar's objections and determined that the application was not saved by the proviso to s.3(1) on grounds of acquired distinctiveness. Dyson Limited appeals from that decision.

Review or Re-hearing

4. The right of appeal from a decision of the Registrar is conferred by s.76 of the 1994 Act. It lies against any decision of the Registrar under the Act and is not restricted to a point of law. This has led to discussion in a number of cases as to whether such an appeal should take the form of a re-hearing or be limited to a review of the Registrar's decision. The point may be of some potential importance in a case like the present, where acquired distinctiveness is a significant issue. I was told by Mr Tappin on behalf of the Registrar that in most...

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