EI Dupont de Nemours & Company v ST Dupont
| Jurisdiction | England & Wales |
| Judge | Lord Justice Aldous,Lord Justice May,Lord Justice Keene |
| Judgment Date | 10 October 2003 |
| Neutral Citation | [2003] EWCA Civ 1368 |
| Docket Number | Case No: A3/2002/2675. A3/2003/0239 |
| Court | Court of Appeal (Civil Division) |
| Date | 10 October 2003 |
[2003] EWCA Civ 1368
Lord Justice Aldous
Lord Justice May and
Lord Justice Keene
Case No: A3/2002/2675. A3/2003/0239
IN THE SUPREME COURT OF JUDICATURE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
Mr Justice Neuberger
Geoffrey Hobbs QC and James Mellor (instructed by Messrs Blair & Co) for the Appellant
Richard Arnold QC (instructed by Messrs Briffa) for the Respondent
E.I. Dupont De Nemours & Company (EIDP) appeal against two decisions and orders of Neuberger J.
What I will refer to as the first appeal, arises from an application by EIDP to register the mark DU PONT in class 25, the clothing class. That application was filed on 13th January 1995 and on 28th August 1996 proceeded under No. 1523636 to advertisement before acceptance in part A of the register. On 28th November 1996, S.T. Dupont (STD) opposed. In his decision dated 27th December 2001, Mr Knight, acting for the Registrar, rejected the opposition. STD's appeal was allowed by Neuberger J in his judgment of 27th November 200With leave of this Court, EIDP appeal.
The second appeal is concerned with an application by STD to register the mark S.T. DUPONT in stylised form in class 25. It was filed on 20th January 1995 and accepted under number 2008447. After advertisement registration was opposed by EIDP. The same Hearing Officer upheld the opposition. STD's appeal was successful before Neuberger J. This Court gave leave to appeal.
The two appeals are not mutually exclusive in that the evidence is similar in both and the parties agree that if the first appeal succeeds, then so must the second. However they do not agree that if the first fails the second must do so also.
The judge heard both appeals one after the other. However a feature of the hearing was the dispute between the parties as to whether an appeal from the Registrar was a rehearing or a review. After submissions which took up about a third of the day set aside for the appeals, the judge ruled that they were rehearings. That conclusion turned out to be irrelevant as his decision and his reasoning would have been the same if he had concluded that the appeals were reviews.
I have read the judgment of May LJ which deals in detail with the issues of whether CPR rule 52.11 applies, whether the appeals were rehearings or reviews and the principles to be applied when considering an application to introduce fresh evidence on appeal. I agree with it.
The First Appeal
STD raised three grounds of objection in their notice of opposition to EIDP's application to register DUPONT. First they alleged that registration would be contrary to sections 9 and 10 of the Trade Marks Act 1938 because the trade mark DU PONT was "neither adapted to distinguish the goods with which the applicants are connected in the course of trade, nor is it capable of so distinguishing." That ground of opposition was not pursued before the Hearing Officer, but an application was made to amend the notice of opposition to raise a surnominal objection under sections 9 and 10 of the Act. That application was refused by the Hearing Officer. The judge allowed the amendment and upheld this ground of opposition.
The second ground was based on section 12 of the Act. It was alleged that STD were the proprietors of a number of registered trade marks which included the word DUPONT. The goods covered by those registrations were of the same descriptions as those for which the application was sought and it so nearly resembled STDs' trademarks as to be likely to deceive and cause confusion. The mark actually relied on was STD's registered trade mark number 1571156 which consists of a signature registered for goods in class 25. The Hearing Officer rejected that ground of opposition and his decision was not appealed.
The third ground of opposition alleged that by reason of long and established use by STD of their name S.T. DU-PONT in relation to a wide range of clothes, use of the trade mark DU PONT would be likely to deceive or cause confusion and would be disentitled to protection in a court of justice. Thus registration would offend section 11 of the Act. That allegation was rejected by the Hearing Officer, but succeeded on appeal.
The Section 9 and 10 Objections– As stated above, the objection that was pleaded was not pursued before the Registrar and the Hearing Officer rejected the application to amend. That application to amend was renewed before the judge together with an application to adduce evidence in support. The judge allowed both applications and refused an adjournment requested by EIDP to enable them to produce evidence on the issue.
The allegation as amended is:
"The mark DU PONT is according to its ordinary signification a common French surname. The Trade Mark of 1523636 is accordingly neither adapted to distinguish the goods with which the Applicants are connected in the course of trade nor is capable of so distinguishing Registration … would accordingly be contrary to the provisions of sections 9 and 10 of the Trade Mark Act 1938."
The new evidence produced by STD consisted of a witness statement which established that the name DUPONT appeared between 800 and 900 times in the Paris telephone directory of 2000. It also suggested that the numbers would have been about the same in 1995.
EIDP contend that the judge was wrong to allow the amendment and the introduction of the fresh evidence; wrong to allow the amendment without also allowing EIDP to file evidence to deal with the new point raised and the new evidence of STD; and wrong not to remit the amended case to the Registrar. In any case EIDP contend that the judge was wrong to conclude, even taking into account the amendment and the new evidence, that the application did not qualify for registration under section 10 of the Act.
As I have said, the Hearing Officer refused STD leave to amend their notice of opposition to raise the surnominal objection. He held that the pleading as filed did not enable anyone to infer that STD had in mind the surnominal objection that had first been raised in a skeleton argument provided two days before the hearing. For that reason EIDP had not sought to respond to such an allegation and had not put in evidence to deal with this point. He concluded in paragraph 23 of his decision that the application to amend should be refused. He took into account that STD had been professionally represented, that the application to amend was late and that there was a likelihood of a need for an adjournment.
The judge considered the reasoning of the Hearing Officer. He said:
"28. Turning to the Hearing Officer's decision to refuse the objector permission to argue the surnominal point, it seems to me that, at any rate taking his reasons as set out in paragraph 23 of his decision at face value, it would be hard to characterise it as an inappropriate exercise of his discretion. Even if this were an appeal by way of rehearing, I would find it difficult to impugn his reasons on their face, subject perhaps to one point. That point is that he does not appear, at least expressly, to have taken into account the public interest, which, when considering whether to permit an objection to be raised to the registration of a trade mark, is a relevant factor, bearing in mind the monopoly consequences. However, on its own, I do not think that that would be enough to justify interfering with his decision. It is not as if the point featured large in argument before the Hearing Officer on this point, as I understand it."
The judge then considered whether the Hearing Officer was right in his conclusion that there was "the likelihood of a need for an adjournment", if he allowed the notice of opposition to be amended. He said:
"33. A more powerful point made on behalf of the opponent, however, is that there is no further evidence which the applicant could have adduced. The applicant had put in evidence apparently to support a case of acquired distinctiveness through Ms Bowler, in the sense that she gave evidence of the use of the mark DU PONT since 1963. When asked what further evidence he might wish to adduce to support a case on acquired distinctiveness, Mr Mellor, for the applicant, only identified the possibility of a survey. That does not seem to me to be an impressive point. As I have mentioned, the relevant date for judging the issue is in 1993, and the notion that there could be any reliable survey carried out in 2001 to find out how members of the public viewed the mark DUPONT eight years earlier seems to me little short of fanciful. Of course, I appreciate that evidence as at 2001 could be in theory probative of the state of affairs some eight years earlier. However, it does seem to me that the value of such a survey would be very unlikely to be significant. The cases show that any survey of public attitude has to be approached with care, indeed with a real degree of scepticism. I think any attempt to rely upon a survey of this sort for the purposes of establishing public attitudes eight years earlier would be very unsafe.
…
37. As to the need for an adjournment, I take a rather different view from the Hearing Officer. For reasons already given, I am unconvinced by the applicant's need for an adjournment to gather evidence on the point. Quite apart from this, the position has changed, in that the applicant has by now been well aware of the fact that the opponent wished to take the surnominal argument for nearly a year. None the less, the applicant has not sought to put in any further...
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