CREDITMASTER Trade Mark

JurisdictionEngland & Wales
JudgeMr Justice Peter Smith
Judgment Date08 July 2004
Neutral Citation[2004] EWHC 1623 (Ch)
Date08 July 2004
CourtChancery Division
Docket NumberCase No: CH2004/APP/0123

[2004] EWHC 1623 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

The Honourable Mr Justice Peter Smith

Case No: CH2004/APP/0123

Between:
Mastercard International Incorporated
Appellant
and
Hitachi Credit (UK) Plc
Respondent

Mark Engelman (instructed by Field Fisher Waterhouse) for the Appellant

Roger Wyand QC (instructed by W.H. Beck, Greener & Co) for the Respondent

Approved Judgment

Hearing date: 29 th June 2004

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.

Mr Justice Peter Smith Mr Justice Peter Smith

Mr Justice Peter Smith

INTRODUCTION

1

This is an appeal from a decision of Mr Allan James the Hearing Officer in the Trade Mark Office made on 10 th March 2004, when he dismissed the Appellant's ("Mastercard") opposition against a Trade Mark application filed by Hitachi Credit (UK) Plc ("Hitachi") in respect of the Trade Mark CREDIT MASTER filed for goods/services falling within classes 9, 16, 35, 36 and 42.

2

The grounds of opposition originally claimed infringement of sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (" TMA 1994"). Mastercard relied upon a family of 91 Trade Marks it owned which incorporated the word MASTER filed and registered as United Kingdom Trade Marks and Community Trade Marks. Hitachi by its Counterstatement denied all the grounds of opposition and required Mastercard to prove its reputation and the Trade Marks cited.

3

At the hearing of the opposition proceedings, Mastercard agreed to narrow the number of Trade Marks it relied upon in its statement of grounds to five, namely the word MASTERCARD, registered in respect of classes 9, 16, 18, 25, 28, 35, 36, 38, 41 and 42.

4

The Hearing Officer refused all of Mastercard's grounds of opposition and awarded against it costs appropriate to the scale of such hearings and also costs above the scale.

5

Mastercard seeks that the order be set aside and substituted with an order that Trade Mark Application number 22343447 CREDIT MASTER be refused and that Hitachi pay the costs of the appeal and below.

6

Mastercard has limited its appeal to section 5(3) grounds alone. There are no challenges to any of the factual findings as such of the Hearing Officer.

NATURE OF APPEAL

7

The appeal relates to section 5(3) TMA 1994, which provides as follows:-

"(3) A Trade Mark which:-

(a) is identical with or similar to an earlier Trade Mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier Trade Mark is protected

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community Trade Mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark".

8

The Appeal from the Hearing Officer's decision is to a Judge in the Chancery Division and is governed by CPR 52.11(1) where the appeal is limited to a review, unless it is suggested some exceptions in that sub rule apply (none is suggested in this case).

9

The powers on such an appeal to interfere are very limited in respect of factual matters. I was referred to the Court of Appeal's decision in Bessant & Others –v—South Cone Incorporated [2002] EWCA Civ 763. In particular that judgment referred (paragraph 18) to the observations of Buxton LJ in Norowzian –v—Arks Limited (No. 2) [2000] FSR 363. At 370 he observed:-

"… where it is not suggested that the judge made an error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges of this court, or at least by two of them, will be different from that of the trial judge".

10

It is important to bear that in mind in the context of the present Appeal in my judgment.

11

As that case emphasises the appeal is not a rehearing and the appeal judge should not substitute his own view unless it can be shown that the Hearing Officer, especially given his experience, has clearly made an error. This is the more so in the case of a discretionary matter (one of the grounds of appeal) where the Appellate Court should not interfere unless the Hearing Officer had exercised his discretion according to wrong principle. That (if it is necessary to cite authority) can be derived from the case of E L Du Pont De Nemours & Co. –v—S Du Pont [2003] EWCA Civ 1368. That too concerned a refusal by the Hearing Officer of an application to amend, which was reversed by the Judge on Appeal. I refer to page 12 of the Judgment of the Court of Appeal (reversing the Judge at first instance) where Aldous LJ said:-

"Those experienced in cases such as these, such as the Hearing Officer, would have known that the sort of evidence normally adduced on issues of distinctiveness included evidence from editors of trade and other magazines, evidence from buyers of department stores and perhaps survey evidence. Whether such evidence would have been forthcoming in this case the Hearing Officer could not predict until enquiries were made and the cost involved had been accepted by EIDP to have been necessary. That the Hearing Officer would have had in mind when coming to the conclusion he did."

12

I approach the appeal against the decision of the Hearing Officer to refuse the Appellant permission to amend its Grounds of Opposition in the light of that case in particular.

REFUSAL OF AMENDMENT

13

The basis for this can be discerned from paragraphs 9 and following of the Hearing Officer's judgment. The complaint by the Appellant is that he refused permission to amend to allow them to challenge a Trade Mark where the goods or services are similar as well as those that are dissimilar. It will be seen that section 5(3)(b) refers to goods that are not similar. The reason for this justification despite the intriguingly straightforward use of the words "not similar" in section 5(3)(b) arises out of the decision of the European Court of Justice (ECJ) in Davidoff –v—Gofkid [2003] FSR 28 and Adidas Salomon AG –v—Fitness World Trading Limited ( C408/01) (see also the report of the opinion of the Advocate General Jacobs at [2004] FSR 401).

14

Those decisions considered article 4(4)(a) of the directive 89/104/EEC of 21 st December 1988 (the "Directive").

15

The Directive provides:—

"(4) Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(a) the trade mark is identical with, or similar to, an earlier national trade mark… and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;"

16

The conclusion of the ECJ in Davidoff was that the words can also be read as extending to goods or services which are identical with or similar to those covered by the registered mark. The Davidoff decision was made on 9 th January 2003. It was made substantially after the Grounds of Opposition, which were dated 30 th June 2001.

17

A similar decision was made in the Adidas-Salomon case, see paragraphs 13 and following, which applied the Davidoff case.

18

As the Hearing Officer wryly observed in paragraph 13 of his judgment "if the ECJ is able to find that the words "not similar" in article 4(4)(a) of the Directive mean "whether or not similar" it must be possible for this tribunal to stretch the same words in section 5(3) of the Act so they have the same meaning. I therefore accept that section 5(3) of the Act may apply whether or not the goods or services in the application are similar to those for which the earlier mark has a reputation and is protected".

19

Mr Wyand QC who appears for the Respondents accepts that the Hearing Officer correctly considered the impact of the Davidoff and the Adidas-Salomon case on section 5(3). I am told an amendment has been made to the Statute to make the position clear, but that does not affect the primary decision that section 5(3) already has the effect expressly created by the amendment.

20

It is plain that the Grounds of Opposition did not seek to raise an objection based on similar or identical goods or services. Mr Engelman who appears for the Appellant acknowledged that at the time of the service of the Grounds of Opposition nobody would have considered section 5(3) was available in respect of similar or identical goods or services. Equally, a respondent would not expect then to face a case based on such products.

21

It is clear in my view when one reads paragraph 7 and 9 of the Grounds of Opposition the only issues that are put under section 5(3) TMA 1994 are those which relate to dissimilar goods or services. Mr Engelman sought to persuade me that it could be discerned from paragraph 4 where there is reference to identity or similarity of goods, that reliance was being placed on that under section 5(3), but that plainly was in respect of the opposition under section 5(2)(b). In any event I do not see how it can be said that paragraphs 7 and 9 could be read as subject to paragraph 4, because nobody settling the Grounds of Opposition in June 2001 when they were settled believed that that was capable of being argued.

22

The Hearing Officer raised this during the hearing. He first ruled that the Grounds of Opposition as formulated un-amended did not include Grounds of Opposition in respect of section 5(3)...

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