Altecnic Ltd's Trade Mark Application (No.2126884); Reliance Water Controls Ltd v Altecnic Ltd

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLORD JUSTICE MUMMERY,Lord Justice Kennedy,LORD JUSTICE KENNEDY
Judgment Date12 Dec 2001
Neutral Citation[2001] EWCA Civ 1928
Docket NumberCase No: A3/2000/3800

[2001] EWCA Civ 1928

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM MR JUSTICE LADDIE

CHANCERY DIVISION

Royal Courts of Justice

Strand,

London, WC2A 2LL

Before:

Lord Justice Kennedy

Lord Justice Mummery and

Lord Justice Sedley

Case No: A3/2000/3800

Reliance Water Controls Ltd
Appellant
and
Altecnic Ltd
Respondent

Mr S Thorley QC & Ms A Michaels (instructed by Field Fisher Waterhouse for the Appellant)

Mr I Purvis (instructed by Squire and Co for the Respondent)

Mr D Alexander (instructed by the Treasury Solicitor for the Registrar of Trade Marks)

LORD JUSTICE MUMMERY
1

This is an appeal by Reliance Water Controls Limited (Reliance), with the permission of Aldous LJ, against the decision of Laddie J dated 12 December 2000.

2

The case concerns the right of an applicant for the registration of a trade mark to change the class number specified by him on Form TM3 in respect of goods for which he has made an application for registration. The appeal turns on the true construction of the relevant provisions of the Trade Marks Act 1994 (the 1994 Act) and of the Trade Marks Rules 1994, as amended (the Rules), and their application to the facts of this case. (The current rules are now contained in the Trade Marks Rules 2000.)

3

Reliance is a supplier of plumbing equipment and apparatus, including control valves. It is a specialist in the market for under basin thermostatic mixing valves.

4

It is a competitor of the respondent, Altecnic Limited (Altecnic), which manufactures valves for hot water systems. Both Reliance and Altecnic wish to register the same mark “CAREMIX” in respect of valves for use in water circulation and blending valves.

Application to Register

5

On 15 March 1997 the Trade Marks Registry received from Messrs Swindell & Pearson, Altecnic's Trade Mark Agents, a completed Form TM3 in which Altecnic applied to register two trade marks, “CAREMIX” and “ALTECNIC CAREMIX.”

6

In the column in Section 8 of Form TM3 for the identification of the class number, the number 7 was inserted. In the column in Section 8 of the form under the heading “List of goods/services” these words were typed in-

“Valves; valves for use in water circulation; blending valves; and all other goods/services in this Class.”

7

The number 2126884 was allocated to the application.

8

Class 7 of the Classification of Goods and Services in Schedule 4 to the Rules contained the following goods-

“Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.”

9

So, under the heading “Specification of goods/services” in Form TM3, Altecnic's application (a) specified the numerical class number to which it related; (b) listed the goods considered to be appropriate to that class; and (c) cross referred to " all other goods/services in this Class” i.e. class 7. 10. On 27 March 1997 Messrs Swindell & Pearson wrote to the Trade Marks Registry asking that, for the purpose of examination, there be deleted from the specification of goods/services the words " and all other goods/services in this Class.” That deletion was made. It is not in dispute that an applicant may at any time restrict the goods or services covered by the application: section 39(1) of the 1994 Act.

11

On 16 April 1997 Messrs Swindell & Pearson wrote another letter to the Trade Marks Registry making the following request

“It is requested that the above application should be restricted to the first form of the mark, CAREMIX, and on this basis we trust this application can proceed to advertisement at an early date.”

12

The appropriate deletion was made. No issue arises on it.

13

The dispute between the parties arises from the request made by Messrs Swindell & Pearson in a letter sent to the Trade Marks Registry on 16 May 1997. The letter followed a telephone conversation of 7 May between a representative in the Registry and Mr Sales of Swindell & Pearson.

“As discussed, we believe the above application had been incorrectly classified and should be in Class 11 rather than Class 7. To illustrate this point enclosed is a copy of a draft mailer bearing the mark of the present application along with an excerpt from a catalogue of the Applicants' Italian parent company illustrating other mixing (blending) valves.

We request that this application is transferred to Class 11 for the specification of goods as filed. This matter is of particular urgency to the Applicants and we should therefore be grateful for an indication to this transfer has taken place and the above application is proceeding to advertisement. We look forward to hearing from the Registry concerning this application.”

14

The goods in Class 11 are

“Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.”

15

There is no dispute between the parties and the Registry that Altecnic's products fitted better within Class 11 than in Class 7. 16. The Registry replied on 29 May confirming that the application should proceed in respect of the mark “CAREMIX” only and that this was regarded as an acceptable amendment to the application as filed. The letter continued

“I now refer to our telephone conversation of 07 May regarding the specification of goods in this case, in which you stated your belief that this application had been filled in the wrong class of goods, since you now think that the applicant's goods are proper to Class 11, being parts and fittings for plumbing installations. I would be pleased to consider any submissions which you may wish to make on this point and request that you supply me with further information, eg. advertising brochures or materials which are produced by the applicant in relation to these goods, in order that a decision regarding the appropriate class for these goods may be reached.

If you do not reply within two months from the date of this letter, the application will be refused.”

17

On 3 June Messrs Swindell & Pearson referred to earlier letters sent in May enclosing catalogues and other published material and seeking a response as soon as possible. A further letter stressing the urgency of the matter was sent on 11 June 1997. 18. On 19 June 1997 the Registry replied as follows

“I am pleased to confirm that the goods claimed do appear to be proper to Class 11 and not to Class 7 as filed, consequently I will arrange for this application to be immediately transferred to the correct class.

As there are now no further outstanding objections or requirements I will arrange for this application to proceed to advertisement on the following basis:

The second mark shown on Form TM3 is to be deleted, ie, the application will proceed for the single word mark “CAREMIX” only.

The specification of goods (in Class 11) will be amended as follows:

Valves; valves for use in water circulation; blending valves.”

19

On that basis the application was accepted and advertised accordingly.

Opposition

20

By a remarkable coincidence Reliance had applied on 27 March 1997 to register the mark “CAREMIX” in Class 11 for substantially identical valves. Its application was No. 2127993. 21. Reliance opposed Altecnic's application on a number of grounds set out in its Notice of Opposition of 4 November 1997. In particular it contended that the amendment of the classification of Altecnic's application from Class 7 to Class 11 was ultra vires.

22

The point was put in this way in the Statement of Grounds dated 5 November 1997 submitted by Reliance's Trade Mark agents, SG Unwin & Co, with the Notice of Opposition to Altecnic's application

“5. The Opponents submit that the amendment from Class 07 to Class 11 was contrary to the provisions of Section 39(2) of the Act as it effectively adds goods not covered by the original application.

6….

7. From the Applicants' request to the examiner in May/June 1997, it is clear that the Applicants had no bona fide intention of using the mark in relation to any of the goods specified in the Application as filed in Class 07, so the Opponents submit that the Application was filed in bad faith such that, under the provisions of Section 3(6) of the Act, the mark should not be allowed to proceed to registration”.

23

The dispute came before the Hearing Officer, Mr M Knight, acting on behalf of the Registrar of Trade Marks. Reliance partly succeeded in its application. The Hearing Officer rejected the contention of bad faith, but held that the amendment of Form TM3 so as to change the Class number from 7 to 11 was ultra vires.

24

He pointed out in his decision dated 13 July 2000 that the application form must list the goods or services on which the trade mark is used, or is proposed to be used. If a class number is relied on, together with a description of the goods and/or services which may be ambiguous, then that class number must be considered part of the descriptor attached to the list. If the list of goods and services is at odds with the stated class number the Registrar must be able to correct the classification under the provisions of Section 34( 2) or 39(2) (c) of the 1994 Act. There was, however, no power to accede to the application of Altenic to amend the class. It was clear that the valves fell within Class 7, which was not at odds with the listed goods, so there was no inconsistency within the class number and the specification of the goods. There was no “obvious mistake” which could be the subject of an amendment under section 39 (2) (c).

Appeals

25

There was then a successful appeal by Altecnic to Laddie J. By his order dated 12 December 2000 he dismissed the opposition of...

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