Abanka D.D v Abanca Corporación Bancaria S.A.
| Jurisdiction | England & Wales |
| Judge | Mr Daniel Alexander |
| Judgment Date | 14 December 2017 |
| Neutral Citation | [2017] EWHC 3242 (Ch) |
| Court | Chancery Division |
| Docket Number | APPEAL REF: CH 2017-000010 |
| Date | 14 December 2017 |
[2017] EWHC 3242 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
CHANCERY DIVISION
ON APPEAL FROM THE REGISTRAR OF TRADE MARKS
Rolls Building
Fetter Lane, London EC4
Mr Daniel Alexander QC
Sitting as a Deputy Judge of the Chancery Division
APPEAL REF: CH 2017-000010
Mr Simon Malynicz QC (instructed by Innovate Legal) for the Appellant
Mr Andrew Norris (instructed by Potter Clarkson LLP) for the Respondent
Hearing date: 6 December 2017
JUDGMENT APPROVED
Mr Daniel Alexander QC
INTRODUCTION
Judgment on this appeal, which concerned the question of what, if any, use had been made of the appellant's ("Abanka's") trade marks, international trade mark registrations nos 860632 and 860561, in the United Kingdom in the relevant period, was handed down on 6 October 2017 ( [2017] EWHC 2428 (Ch)). I gave the parties a period of time to resolve the allowable specification in the light of that judgment. The parties have proposed specifications in correspondence and there is considerable divergence as to the appropriate scope.
Three issues are dealt with in this further judgment:
i. Scope of specification;
ii. Whether there should be remission to the Registrar to determine the opposition;
iii. Costs.
SCOPE OF SPECIFICATION
The parties' contentions
Abanka contends that the specification should be as follows:
Class 35
a. Dissemination of advertising material (leaflets, prospectuses, and printed matter) in respect of the promotion of securities;
b. Business Information in respect of securities;
c. Business Information in respect of a bank issuing securities.
Class 36
a. Commissioning and issuing of bonds and guarantees;
b. Financial information and advice in respect of bonds and of guarantees and securities;
c. Raising capital via bonds via guarantees and via securities;
d. Stock market listing of bonds and of guarantees and of securities;
e. Issuance of securities;
f. Sale and management of securities from domestic and foreign issuers;
g. Information relation to the above-mentioned services.
In support of that specification, it argues that it fairly reflects the use found in the judgment and that a narrower specification would not be justifiable. In particular, it contends that a fair description of the primary services offered is "securities", these were backed by a state guarantee and the other aspects of the specification reflect uses either held to have taken place or inherent in the provision of the service of issuing securities.
Abanca contends that the specification should be narrower and more specific, namely "issuing Eurobonds". It contends that this reflects the limited use found to have taken place and that no wider specification would be fair in the light of the approach required by the authorities.
Principles
The principles applicable to determination of a specification of goods or services following proof of more limited use than that set out in an existing specification are well established. They were recently summarised by the Court of Appeal Merck v Merck Sharp & Dohme [2017] EWCA Civ 1834 at [242] where Kitchin LJ said:
"On the one hand, a proprietor should not be able to monopolise the use of a trade mark in relation to a general category of goods or services simply because he has used it in relation to a few of them. A mark should remain registered only for those goods or services in relation to which it has been used. On the other hand, a proprietor cannot reasonably be expected to use his mark in relation to every possible variation of all of the goods or services covered by his registration."
Kitchin LJ referred to Maier v Asos [2015] EWCA Civ 220 and summarised the approach the court should adopt at [245]–[249]:
"245. First, it is necessary to identify the goods or services in relation to which the mark has been used during the relevant period.
246. Secondly, the goods or services for which the mark is registered must be considered. If the mark is registered for a category of goods or services which is sufficiently broad that it is possible to identify within it a number of subcategories capable of being viewed independently, use of the mark in relation to one or more of the subcategories will not constitute use of the mark in relation to all of the other subcategories.
247. Thirdly, it is not possible for a proprietor to use the mark in relation to all possible variations of a product or service. So care must be taken to ensure this exercise does not result in the proprietor being stripped of protection for goods or services which, though not the same as those for which use has been proved, are not in essence different from them and cannot be distinguished from them other than in an arbitrary way.
248. Fourthly, these issues are to be considered having regard to the perception of the average consumer and the purpose and intended use of the products or services in issue. Ultimately it is the task of the tribunal to arrive at a fair specification of goods or services having regard to the use which has been made of the mark.
249. This approach does strike an appropriate balance. It gives effect to the clear intention of the EU legislature that marks must actually be used or, if not used, be subject to revocation. See, for example, Recital 9 of Directive 2008/95/EC ("the TM Directive") and Recital 10 of Council Regulation (EC) No 207/2009 ("the TM Regulation"). It is also fair to proprietors for it does not require a proprietor to prove that he has used his mark in relation to all possible variations of the goods or services covered by its registration but only those which are sufficiently distinct to constitute coherent categories or subcategories. I am also satisfied that it gives appropriate protection to the legitimate interest of a proprietor in being able in the future to extend his range of goods or services within the scope of the terms describing the goods or services for which its mark is registered. The trader has 'absolute' protection under s.10(1) of the 1994 Act (corresponding to Article 5(1)(a) of the TM Directive and Article 9(1)(a) of the TM Regulation) in relation to those goods or services for which he has used the mark (and other goods and services which fall into the same category or subcategory). He also has protection in relation to other goods or services in so far as it is able to establish a likelihood of confusion or the other requirements set forth in s.10(2) and s.10(3) of the 1994 Act (corresponding to Article 5(1)(b) and (2) of the TM Directive and Article 9(1)(b) and (c) of the TM Regulation)."
In arriving at a fair specification, it is also necessary to bear in mind the considerations summarised in the judgment of Pumfrey J in West (t/a Eastenders) v Fuller Smith & Turner Plc [2003] EWCA Civ 48, by reference to Thomson Holidays, with which the other members of the Court of Appeal in West agreed, as follows:
"49. There has been a difference of judicial opinion on the right approach to section 46(5). The question has now been considered by the Court of Appeal in Thomson Holidays Limited v Norwegian Cruise Line Limited [2002] EWCA Civ 1828. In that case, Aldous LJ, with whom Waller and Scott Baker LJJ agreed, have approved what is said in Decon v Fred Baker [2001] RPC 293.
50. Aldous LJ sets out the principles to be followed in paragraphs 29–31 of his judgment:
'29 …Because of section 10(2) fairness to the proprietor does not require a wide specification of goods or services nor the incentive to apply for a general description of goods and services. As [counsel] pointed out to continue to allow a wide specification can impinge unfairly upon the rights of the public. Take for instance a registration for "motor vehicles" only used by the proprietor for motor cars. The registration would provide a right against a user of the trade mark for motor bikes under section 10(1). That might be understandable having regard to the similarity of the goods. However the vice of allowing such a wide specification becomes apparent when it is envisaged that the proprietor seeks to enforce his trade mark against use in relation to pedal cycles. His chances of success under section 10(2) would be considerably increased if the specification of goods included both motor cars and motor bicycles. That would be unfair when the only use was in relation to motor cars. In my view the court is required in the words of Jacob J to "dig deeper". But the crucial question is–how deep?
30. Pumfrey J was, I believe, correct that the starting point must be for the court to find as a fact what use has been made of the trade mark. The next task is to decide how the goods or services should be described. For example, if the trade mark has only been used in relation to a specific variety of apples, say Cox's Orange Pippins, should the registration be for fruit, apples, eating apples, or Cox's Orange Pippins?
31. Pumfrey J in Decon suggested that the court's task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under section 10(2), adopts the attitude of the reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark. Thus the court should inform itself...
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