Consolidated Developments Ltd v Andrew Alexander Cooper
| Jurisdiction | England & Wales |
| Judge | Mr Justice Henry Carr |
| Judgment Date | 06 July 2018 |
| Neutral Citation | [2018] EWHC 1727 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: CH-2017-000294 And CH-2018-000062 |
| Date | 06 July 2018 |
[2018] EWHC 1727 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY
CHANCERY DIVISION
Royal Courts of Justice
Rolls Building, 7 Rolls Building
Fetter Lane, London
EC4A 1NL
THE HON Mr Justice Henry Carr
Case No: CH-2017-000294 And CH-2018-000062
Denise McFarland (instructed by Lee Thompson LLP) for the Claimant/Respondent
Roger Wyand QC (instructed by Kilburn & Strode LLP) for the Defendant/Appellant
Hearing dates: 18 th June 2018
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
On 26 September 2016, Consolidated Developments Limited (“CDL”) applied to the Registrar to revoke four trade marks registered in the name of Mr A. A. Cooper (“Mr Cooper”). Three of those trade marks, which are the subject of these appeals, are in respect of the sign Tin Pan Alley (“the Marks”). CDL claimed that the Marks had not been put to genuine use during a five-year period between 26 September 2011 and 25 September 2016. Neither side requested a hearing, and having considered the papers, the Hearing Officer, Mr Allan James, revoked the Marks in their entirety, save for trade mark registration No 2574641 (the “641 Mark”). He decided that the 641 Mark should be revoked for non-use except in relation to: “ Class 35: providing advertising space on websites, for others”.
Mr Cooper appeals from the Hearing Officer's decision to revoke the Marks. CDL appeals from the Hearing Officer's decision to refuse to revoke the 641 Mark in respect of the provision of advertising space on websites.
Unusual aspects of these appeals
Mr Cooper's Appellant's Notice does not challenge any of the reasons given for the Hearing Officer's decision. Mr Wyand QC, on behalf of Mr Cooper, accepted that Mr James was correct to reach the conclusions that he did, on the evidence before him. However, Mr Cooper seeks on appeal to introduce additional evidence that was not before the Hearing Officer. He contends that, had the Hearing Officer had the opportunity to review all of the evidence that is now sought to be admitted to demonstrate use, he would have found that the Marks had been used for a much wider range of goods and services.
Mr Wyand, very fairly, pointed out that if the additional evidence were admitted, the case would have to be remitted to the Hearing Officer, and could not be decided at this hearing. If the High Court were to decide the case, and Mr Cooper succeeded on the basis of the additional evidence, then any appeal to the Court of Appeal by CDL would have to satisfy the test for second appeals in CPR 52.7(2). Permission would be required from the Court of Appeal and the Court of Appeal would not give permission unless it considered that:
“(a) the appeal would
(i) have a real prospect of success; and
(ii) raise an important point of principle or practice; or
(b) there is some other compelling reason for the Court of Appeal to hear it.”
This appeal would not satisfy that test, as Mr Wyand accepted. Had the additional evidence been adduced at the first hearing, and CDL had lost, it would have had a right of appeal to the Court or the Appointed Person. It would be unfair to deprive CDL of that right, and enable Mr Cooper to benefit from the late filing of the additional evidence. Therefore, the case would have to be remitted to the IPO.
CDL's appeal does not allege that the Hearing Officer made any error of law. It is not suggested that he considered any irrelevant issue, nor failed to consider any relevant issue. Ms McFarland, in her courteous submissions, paid tribute to the thoroughness and clarity of Mr James' detailed written decision. Nonetheless, it is alleged that the Hearing Officer failed properly to analyse the evidence relating to the 641 Mark in respect of a limited part of its specification, failed to give adequate reasons for his decision, and failed to apply the principles of law (which he had accurately set out) to the facts. This amounts to a submission that no reasonable tribunal could have reached the conclusion of the Hearing Officer, insofar as he found any use of the 641 Mark during the relevant period.
Background facts
CDL is the owner of and landlord for a number business premises located in central London, particularly in and around Denmark Street in Soho. This area has long been associated with the music industry. Denmark Street has for many years been colloquially referred to as “ Tin Pan Alley”. This nickname is derived from an area around New York's West 28th Street, also known as Tin Pan Alley. Many famous artists have recorded music in Denmark Street and a blue plaque was installed by the British Plaque Association in 2014, stating that “ This street was Tin Pan Alley 1911–1992 Home of the British Publishers and Songwriters”.
Mr Cooper has been employed in businesses on or connected with Denmark Street for more than 35 years. As a boy, Mr Cooper worked on Saturdays with his uncle, Clifford Cooper, in a business in Denmark Street. From 2006–2014 Mr Cooper owned and ran a company known as the London PA Centre, which had a store on Denmark Street. The London PA Centre was involved in the retail of music equipment and pro-audio equipment, computer software, amplifiers, merchandising (clothing) and accessories until it went into voluntary liquidation in March 2014. Mr Cooper left the premises in Denmark Street in 2014.
Mr Cooper and his uncle have had close associations with the Tin Pan Alley Traders Association, which is a group of shopkeepers and business owners who have the common goal of promoting Denmark Street, especially under the name Tin Pan Alley.
Reference by the Appointed Person of Mr Cooper's Appeal to the High Court
Mr Cooper appealed from the decision of the Hearing Officer to the Appointed Person. By a decision dated 26 February 2018, Mr Geoffrey Hobbs QC referred the appeal to the High Court pursuant to Section 76(3) of the Trade Marks Act 1994. He did so because he considered that the appeal raised certain points of general legal importance within the ambit of rule 72(5) of the Trade Mark Rules 2008. In particular he raised the following questions:
i) Since Mr Cooper's grounds of appeal do not question the decision reached by the Hearing Officer on the papers before him, does this appeal fall outside the statutory right of appeal under section 76 of the 1994 Act?
ii) Insofar as it is alleged that the decision of the Appointed Person in Gerry Webber International AG v Guccio Gucci SPA [2015] RPC 9 (“the Gucci decision”) allows an appellant to adduce further evidence on appeal from the Registrar in a broad remedial way so as to enable the appellant to re-open proceedings in the Registry, is that approach correct?
Jurisdiction to admit additional evidence on appeal
The parties' submissions in outline
In respect of the first issue identified by Mr Hobbs QC, Miss McFarland contended that the High Court did not have jurisdiction to admit the fresh evidence. Her argument was as follows:
Section 76(1) provides that:
“An appeal lies from any decision of the registrar under this Act, except as otherwise expressly provided by rules.
For this purpose “decision” includes any act of the registrar in exercise of a discretion vested in him by or under this Act.”
Miss McFarland contended that the grounds of appeal do not challenge any decision of the Registrar. On the contrary it is accepted that he was correct on the evidence before him. She argued that, although in form, an appeal, in substance, it was no more than a vehicle to have the case remitted to the IPO for a rehearing on new evidence. Therefore, the appeal falls outside the scope of the statutory right of appeal under the 1994 Act.
In response, Mr Wyand QC pointed out that Mr Cooper does contend in the Appellants' Notice that the decision of the Hearing Officer to revoke the marks for non-use was wrong in the light of the further evidence. That is the whole object of the appeal. For example, paragraph 9 of the grounds of appeal asserts that:
“Had the Hearing Officer had the opportunity to review all the evidence that could have been filed to demonstrate use, he would have reached a different decision. He could and would have found that the marks had been used for a much wider range of goods and services.”
Discussion
If the Court (or the Appointed Person) did not have jurisdiction to admit additional evidence on appeal from the IPO in circumstances where this is the sole basis for challenging the decision at first instance, this would have far-reaching consequences. The same argument would apply in patent and registered design appeals, where appeals may be brought as of right from certain “decisions” of the first instance tribunal; see s.97(1) Patents Act 1977 and s.27A of the Registered Designs Act 1949, added by s.10(2) of the Intellectual Property Act 2014. Such a limitation on the powers of the appellate tribunal could lead to injustice. If, for example, a patent was anticipated by a prior use by the patentee, evidence of which could not have been obtained by an applicant for revocation at the date of the first hearing, it would be unjust, and inconsistent with the overriding objective, if there was no power on appeal to admit such evidence, even if this was the only, or only sustainable, ground of appeal.
To assess whether the Court is nonetheless required to conclude that it lacks jurisdiction, it is...
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