Bongrain SA's Trade Mark Application (No.2134604)
| Jurisdiction | England & Wales |
| Judge | Mr Justice Pumfrey |
| Judgment Date | 21 March 2003 |
| Neutral Citation | [2003] EWHC 531 (Ch) |
| Date | 21 March 2003 |
| Court | Chancery Division |
| Docket Number | Case No: CH/2002/APP/0148 |
[2003] EWHC 531 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Pumfrey
Case No: CH/2002/APP/0148
Simon Malynicz (instructed by Medyckyj & Co) for the Appellant Applicant
Daniel Alexander (instructed by Treasury Solicitor) for the Respondent Registrar of Trade Marks
Hearing dates : 20 November 2002
Approved Judgment
Mr Justice Pumfrey:
Introduction
This is an appeal from the decision of the hearing officer, Mr AJ Pike, acting for the Registrar of Trade Marks, refusing the registration of a series of two marks. The marks are three-dimensional, and are sought to be registered in respect of cheese, among other things. The hearing officer held that the marks were objectionable under section 3(1)(b) of the Trade Marks Act 1994 as they were devoid of distinctive character, and further held that they had not before the date of the application for registration acquired such a character as a result of the use made of them. Bongrain SA, the appellant ('Bongrain'), maintains that the whole approach of the hearing office to the questions arising in respect of these marks was wrong, and that the marks had sufficient distinctive character to entitle them to registration.
The point thus raised is easily stated. It is convenient to consider the marks in suit first.
The trade marks applied for
The trade marks in suit are both three-dimensional and are sought to be registered in respect of 'Cheese; dairy products; all included in class 29'. The applicant is willing to restrict the scope of the registration to 'cheese'. They show, in perspective from above, side elevation and plan view from below a generally six-lobed article. The lobes are not pronounced. The second mark includes what appears to be a depiction of surface texture, and the marks are accompanied by the following text:
'An application for a series of two three-dimensional marks. The first mark in the series consists of a three-dimensional shape as shown in the representation on the left hand side of this sheet. The second mark in the series consists of a three-dimensional shape with a "ridged effect" on the surface as shown in the representation on the right. The wording on this sheet does not form part of the marks.'
I annexe a copy of the marks as sought to be registered:
INSERT DIAGRAMS
Bongrain is a manufacturer of cheeses, and sells its cheeses in the United Kingdom through its United Kingdom subsidiary. It sells a number of cheeses, including Chaumes, Saint Albray, Saint Agur and Rambol. I was not told whether and to what extent these are traditional French cheeses, but the registration relates to Saint Albray, which is supplied, when sold as the whole cheese, in a generally six-lobed shape with some superficial ridging and a central hole.
Application was made to register the two marks on 3 June 1997, and on 23 June 1997: the Examiner objected that the marks consisted 'of the shape of the goods which are devoid of any distinctive character.' The applicant's response, accompanied by the statutory declaration of M. Michel Duleu-Burre, set out the contentions which were maintained before me:
'3. Through Bongrain UK, the applicant has been selling since before 1989, a full fat soft cheese with a flower-shaped outline and flattened upper and lower surfaces. Since that time the sales have been continuous.
There is now produced and shown to me marked MDB-l an example copy of promotional material as used in the UK depicting a cheese with flower-shaped outline.
4. The flower shaped cheese is sold in conjunction with the word mark SAINT ALBRAY. However, consumers and retailers recognise the cheese by its unusual floral shape. This shape distinguishes the cheese from other conventional circular or square-shaped cheeses. The shape was selected in order to draw the cheese to the attention of the purchasing public and to make it stand out from other cheeses. Indeed the Exhibit MDB-1 refers to the cheese as being "unmistakable in its 'flower' shape" and refers to "The Flower of French Cheese". Thus we see the flower-shaped outline as being unusual in the trade and we use this unusual feature to promote our cheese.'
The Registrar maintained her objection to the marks, further evidence was filed and a hearing was held. After that hearing, further evidence was again filed, and the mark was finally refused on 12 November 2001. The Registrar was requested to give her reasons under section 76 of the Trade Marks Act 1994 and Rule 62(2) of the Trade Marks Rules 2000. This statement of the grounds for the decision and the materials used in arriving at it is the subject of the appeal.
The approach to this appeal
Mr Alexander, who appeared before me for the Registrar, observed that in a number of appeals in ex parte cases (that is, appeals from decisions of the Registrar at the prosecution stage) the Registrar had submitted that the appeal to the Court should be treated as a rehearing rather than a review. Some decisions which are arrived at without a hearing are appealed, but in this case there was a hearing on evidence, and thus paragraph 9.1 of the Practice Direction under CPR 52 does not apply. Nevertheless, for the sake of consistency and out of a sense of fairness to the appellant applicant, the Registrar is content to deal with the appeal as a rehearing. In the past considerable weight has been given to the views expressed by the Registrar's hearing officers i and no doubt the matter is one of degree. As Jacob J observes in Thibierge & Comar SA v Rexam [2002] RPC 628, 631, paragraph 8:
'Probably the real difference between review and re-hearing is one of emphasis. The court would be even slower to interfere with an exercise of discretion when engaged in a review than when engaged in a hearing.'
The observations of the Court of Appeal (Robert Walker LJ) in South Cone v Bessant [2002] EWCA Civ 763, [2003] RPC 5 (page 101, 109) paragraph 28), an opposition case, are apposite:
'In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about the likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. …on the other hand the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.'
Shape marks
It is helpful to set out the whole of section 3 of the 1994 Act, together with section 47(1), to see the manner in which the domestic provisions reflect the provisions of Council Directive 89/104 ('the Directive') which they implement.
'Absolute grounds for refusal of registration
3.-(1) The following shall not be registered-
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
(2) A sign shall not be registered as a trade mark if it consists exclusively of -
(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.
(3) A trade mark shall not be registered if it is -
(a) contrary to public policy or to accepted principles of morality, or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
(4) A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law.
(5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
….
Grounds for invalidity of registration
47.-(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b) (c) or (d) of that section, it shall not be declared invalid, if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.'
Shape marks do not present...
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