Berlei (U.K.) Ltd v Bali Brassiere Company Inc.
| Jurisdiction | England & Wales |
| Judge | Lord Morris of Borth-y-Gest,Lord Guest,Lord Upjohn,Lord Wilberforce,Lord Pearson |
| Judgment Date | 06 May 1969 |
| Judgment citation (vLex) | [1969] UKHL J0506-1 |
| Date | 06 May 1969 |
| Court | House of Lords |
[1969] UKHL J0506-1
Lord Morris of Borth-y-Gest
Lord Guest
Lord Upjohn
Lord Wilberforce
Lord Pearson
House of Lords
Upon Report from the Appellate Committee, to whom was referred the Cause Berlei (U.K.) Limited against Bali Brassiere Company Incorporated, that the Committee had heard Counsel, as well on Monday the 3d, as on Tuesday the 4th, Wednesday the 5th, Thursday the 6th and Monday the 10th, days of March last, upon the Petition and Appeal of Berlei (U.K.) Limited, of Berlei House, Bath Road, Slough, Bucks, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 8th of December 1967, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, and that the Petitioners might have the relief prayed for in the Appeal, or such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Case of Bali Brassiere Company Incorporated, lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:
It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal, of the 8th day of December 1967, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Judgment of the Honourable Mr. Justice Ungoed-Thomas, of the 19th day of July 1966, thereby Discharged be, and the same is hereby, Restored: And it is further Ordered, That the Respondents do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this Judgment.
My Lords,
The question which arose in this case was whether it was permissible for a company to use the word "Bali" in reference to their goods although another company in reference to similar goods were already using the word "Berlei".
The Appellant Company (whom I will call Berlei) are engaged, and have for many years been engaged, in the business of manufacturers of brassieres, corsets, corselletes and other women's foundation garments. They have a trade mark, Berlei, which they have since 1930 continuously and extensively used in their business and upon and in relation to their goods. They have two registrations for their trade mark, namely, ( a) BERLEI (word in block capitals) registered as from the 6th May, 1924, under No. 448,103 in Class 38 (Schedule III) in respect of "Corsets and Brassieres" and transferred to them in 1930 and, ( b) Berlei (word in script form) registered as from the 30th July, 1954, under No. 732,676 in Class 25 (Schedule IV) in respect of "Corsets, corselettes, girdles (corsets), brassieres, bodices, panties and suspender belts".
The Respondent Company, an American company (whom I will call Bali), are the proprietors of trade mark No. 603,390 registered as from 23rd December, 1938, in respect of "brassieres, corsets and corselettes". The mark is a device mark consisting of the word "Bali" in script form within a circle, having underneath it in small letters the word "Bra" and having a small silhouette of a woman above the word "Bali". If the mark is used in this country the goods in respect of which it is used will inevitably come to be referred to by the word "Bali". The word is the main feature of the registered mark.
Berlei did not know of the existence of that mark. Though Bali had effected some sales in this country in the years between 1935 and 1939 there were none between 1939 and 1962.
On the 1st May, 1959, Bali applied (the application being numbered 790,389) for registration of a trade mark, consisting solely of the word "Bali", in Class 25 in respect of "Brassieres, corsets and corselettes". It was then that Berlei first came to know of the mark which Bali had registered in 1938.
Berlei then took the following steps. On the 6th May, 1960, they gave notice of opposition to the application of Bali. They sought refusal of Bali's application on the ground that the mark "Bali" so closely resembles their mark "Berlei" that its use upon or in relation to any brassieres, corsets or corselettes would be likely to deceive or cause confusion. They relied upon section 11 and section 12 (1) of the Trade Marks Act, 1938, and further contended that in the exercise of his discretion the Registrar ought not to allow registration. Then on the 13th May, 1960, they applied to the Registrar for rectification of the Register by the removal from it of Bali's registered Trade Mark 603,390 to which I have already referred. The application was made in dependence upon section 32 and also section 26 of the Trade Marks Act, 1938. Berlei relied upon their use of their mark "Berlei" from the year 1930 onwards. As persons aggrieved they sought the removal of Bali's mark on the ground that the word "Bali" so closely resembles the word "Berlei" that use in relation to brassieres, corsets or corselettes would be likely to deceive or cause confusion and that the trade mark "Bali" offended against the provisions of section 11 of the Act and ought never to have been registered. The separate ground upon which they sought the removal was (under section 26) that of non-use. It was not disputed that Berlei was a "person aggrieved" and as such entitled to make application to have the Register rectified.
The Assistant Comptroller of Trade Marks acting for the Registrar found in favour of Berlei in both proceedings. He refused to allow Application No. 790,389 to proceed. He ordered that Trade Mark No. 603,390 should be removed from the Register. He so ordered both on the ground that, having regard to the provisions of section 11, the Mark ought not to have been registered and also on the ground of non-use under the provisions of section 26. His decisions in both proceedings were given on the 23rd March, 1964.
On appeal to the High Court application was made by Bali (on the 22nd July, 1964) to adduce further evidence by Affidavit. As the proposed further evidence was not then available the application was adjourned. After copies of the desired further evidence had been supplied by Bali the hearing was resumed and for the reasons set out by the learned judge (Ungoed-Thomas J.) in his decision given on the 3rd December, 1965, the application was granted. No challenge to that decision to adduce further evidence has been made. After considering the additional evidence the learned judge upheld both decisions of the Assistant Comptroller though in doing so he rejected that part of Berlei's case in the rectification proceedings which was based upon the contention of non-use. He held that the non-use was due to special circumstances in the trade. That part of his decision was not challenged by Berlei when Bali appealed to the Court of Appeal. At the hearing before the learned judge the argument on behalf of Bali was presented in reference to the rectification proceedings, it being considered that if Bali could not succeed in their appeal in the rectification proceedings they could not succeed in their appeal in the opposition proceedings.
On appeal to the Court of Appeal that Court by a majority (Lord Denning M.R. and Salmon L.J., Diplock L.J. dissenting) allowed the appeal. It was ordered that the Registrar should accept and register Bali's application No. 790,389 and that Bali's registered Trade Mark No. 603,390 should remain on the Register.
The considerations which apply in the rectification proceedings are different from those which apply in the opposition proceedings. Bali's registration (No. 603,390) of their mark was on the 23rd December, 1938. Section 46 of the Act provides that in all legal proceedings relating to a registered trade mark (including applications under section 32) the fact that a person is registered as proprietor of the trade mark is prima facie evidence of the validity of the original registration. Section 13 provides that a registration in Part A is, after the expiration of seven years from the date of registration, to be "taken to be valid in all respects" unless the registration was obtained by fraud or unless "the trade mark offends against the provisions of section 11" of the Act. Section 11 is in these terms:—
"It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design."
If there is an appeal from a decision of the Registrar the High Court has power to review any decision and "shall have and exercise" the same discretionary powers as under the Act are conferred upon the Registrar (see sections 51, 52 and 68).
It is clear that in the rectification proceedings the onus was on Berlei. Bali's mark (of 1938) had been registered over seven years. There was no suggestion that the mark had been obtained by fraud. It was, therefore, to be taken to be valid in all respects unless it could be shown that it "offends against the provisions" of section 11. We were invited by both parties to approach the case on the basis that the enquiry which was involved was whether the registration of their mark by Bali in 1938 was then correctly made. Was it in 1938 a...
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