Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Ltd
| Jurisdiction | England & Wales |
| Judge | THE CHANCELLOR OF THE HIGH COURT,The Chancellor,or |
| Judgment Date | 24 January 2007 |
| Neutral Citation | [2007] EWHC 63 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: CH/2006/APP/0507 |
| Date | 24 January 2007 |
[2007] EWHC 63 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Chancellor of the High Court
Case No: CH/2006/APP/0507
Mr Colin Birss (instructed by Bristows) for the Appellants
Mr Iain Purvis QC (instructed by Greenwoods) for the Respondents
Hearing date: 16 th January 2007
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.
The Chancellor:
Introduction
Hachette Filipacchi Presse SA (“HFP”) is the publisher and distributor of the magazine 'ELLE'. It was first published in France in 1945. It has been published in the UK since 1985. It has a substantial circulation in both countries and elsewhere. The magazine and the readership at which it is aimed were described by the deputy director of its intellectual property department, Ms Fabienne Sultan, as follows:
“The ELLE magazine is tailor-made to appeal to women. It is principally a fashion and lifestyle magazine with a strong focus on women's issues, fashion goods such as women's clothing, shoes and fashion accessories, beauty and lifestyle themes. The ELLE magazine is principally directed to and read by a wide audience of all ages, urban-based, educated, career-orientated, upmarket women with significant disposable income.”
In addition to its business as publisher and distributor of the magazine HFP sells fashion goods through various channels, namely magazine and mail order, its website launched in November 1995, since 1996 a merchandising programme carried on through its exclusive licensee ActifGroup and through designer and factory outlets. Its turnover in such goods is substantial. HFP is and for many years has been the registered proprietor in the United Kingdom of the mark ELLE, in both plain and stylised form, under classes 16, 25 and 41, in respect, inter alia, of periodicals relating to women and women's clothing.
Saprotex International (Proprietary) Ltd (“SIP”) is the wholly owned South African subsidiary of KAP Beteiligungs AG, a company incorporated in Germany. KAP has two divisions one of which manufactures handknitting yarns. SIP is a company in that division. It is the largest manufacturer of such yarns on the continent of Africa. SIP is the registered proprietor in South Africa of the trade mark ELLE in respect of both yarn and knitting patterns. It uses that mark as the principal mark for exports of handknitting yarn. In 2001 SIP started to export its yarns under the mark ELLE to the United Kingdom through Quadra (UK) Ltd as its distributor. In the three subsequent years SIP became one of the three leading suppliers of fashion yarns in the UK. In the same period SIP has exported substantial quantities of yarn and knitting patterns to Australia, New Zealand and the United States.
On 24th June 2002 SIP applied to register the mark ELLE in relation to knitting wool and yarn in class 23. On 2nd May 2003 HFP gave notice of opposition. It specified its earlier UK registered trade marks for the mark ELLE and claimed that the application offended ss.5(2) and 5(3) Trade Marks Act 1994. Those subsections provide (the latter as amended by Reg.7 Trade Marks (Proof of Use etc) Regulations 2004):
“5(2) A trade mark shall not be registered if because –
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected,
or(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which —
(a) is identical with or similar to an earlier trade mark,
(b) […]
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom….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.”
SIP filed a counterstatement on 9th September 2003. It admitted the earlier marks on which HFP relied but denied any similarity between knitting wool and yarns and any of the goods or services covered by the earlier marks. It denied any likelihood of confusion on the part of the public or that any unfair advantage of the earlier marks would be taken if the mark of which SIP sought registration was used.
HFP supported its opposition with four witness statements made Ms Fabienne Sultan and one from each of its solicitor, Abida Rifat Chaudri, and the director of operations of Designer Yarns Ltd, Mr David Watt. SIP relied on witness statements of its managing director Mr Michael Cole, its solicitor Mr Philip Sloan and its group marketing manager Ms Sharon Farr. The contested application for registration came before a hearing officer, Mr Michael Reynolds, on 16th May 2006. He considered the witness statements, their voluminous exhibits and the submissions of counsel, but there was no cross-examination of any witness. He dismissed the opposition of HFP for the reasons given in his written decision dated 8th June 2006.
HFP now appeals from that decision. It contends that the Hearing Officer erred in principle in relation to the opposition under both ss.5(2) and 5(3), that this court should discharge his order and uphold the opposition of HFP to the application for registration of the mark ELLE made by SIP. I shall deal with those contentions in due course, but, first, I should refer to the principles to be applied by the court on an appeal such as this and then consider the Hearing Officer's decision in more detail.
The principles to be applied on an appeal from a hearing officer
There was no dispute as to what the principles are. Nevertheless I should refer to them in some detail as the necessary background to a consideration of the Hearing Officer's decision and the submissions made to me. The appeal lies to the High Court under s.76 Trade Marks Act 1994. Accordingly CPR 52.11 applies, the appeal is limited to a review of the decision of the Hearing Officer (no submission having been made to the effect that justice requires a rehearing), and the appeal may be allowed if this court considers that the decision of the Hearing Officer was “wrong” (no suggestion of a serious procedural or other irregularity in the proceedings before the Hearing Officer being made).
The proper approach of the court to an appeal such as this has been considered in a number of recent cases of the highest authority, most recently by Robert Walker LJ in REEF TRADE MARK [2003] RPC 5. That case, like this, was a contested application for registration of a trade mark. Pumfrey J had allowed the appeal from the Registrar. One of the issues before the Court of Appeal was whether he was entitled to do so. In paragraphs 18 to 23 Robert Walker LJ considered the earlier cases of Benmax v Austin Motor Company Ltd [1955] AC 370; Edwards v Bairstow [1956] AC 14; Re: Grayan Building Services Ltd [1995] Ch.241; Biogen Inc v Medeva plc [1997] RPC 1; Pro Sieben Media AG v Carlton UK Television Ltd [1999] 1 WLR 605; Norowzian v Arks Ltd (No 2) [2000] FSR 363 and Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416. He concluded that the judge's approach had not been wrong but that his formulation of the relevant principle was a somewhat meagre summary of a complex point.
Robert Walker LJ then (paragraphs 24 and 25) distinguished an inference derived from a series of primary facts, which is itself a simple matter of fact, from one which involves a process of evaluation. In paragraphs 26 and 28 he added:
“26. How reluctant should an appellate court be to interfere with the trial judge's evaluation of, and conclusion on, the primary facts? As Hoffmann LJ made clear in Grayan there is no single standard which is appropriate to every case. The most important variables include the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence.
[27….]
28. 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 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. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow [1956] AC 14, 38–9, about the general commissioners, a tribunal with a specialised function but often little specialised training.) 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.”
Counsel for HFP does not suggest that these principles do not apply to this appeal. He contends that the Hearing Officer did indeed make errors of principle. To identify the alleged errors relied on it is necessary to describe the Hearing Officer's decision in some detail.
The decision of the Hearing Officer
In paragraphs 1 to 16 the Hearing Officer described the...
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...and where his decision has required assessment of contested oral evidence. 9 Mr Hobbs also referred to Hachette Filipacchi Presse SA v Saprotex International (Proprietary) Ltd [2007] EWHC 63 (Ch), unreported, 24 th January 2007 in which the Chancellor recently endorsed the continuing appli......