Hormel Foods Corporation v Antilles Landscape Investments NV
| Jurisdiction | England & Wales |
| Judge | RICHARD ARNOLD Q.C. |
| Judgment Date | 24 January 2005 |
| Neutral Citation | [2005] EWHC 13 (Ch) |
| Docket Number | Case No: HC 03 C01596 |
| Court | Chancery Division |
| Date | 24 January 2005 |
[2005] EWHC 13 (Ch)
Richard Arnold Q.C.
(Sitting as a Deputy High Court Judge)
Case No: HC 03 C01596
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
Hearing dates: 30 November—3 December 2004
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.
RICHARD ARNOLD Q.C.
Introduction
In these proceedings the Claimant claims a declaration that the Defendant's United Kingdom Registered Trade Mark No. 2,152,840 ("the Defendant's Mark") is and always has been invalidly registered, alternatively an order that the Defendant's Mark be revoked with effect from 6 December 1997 or such later date as the Court may think fit, The Defendant counterclaims for a declaration that the Claimant's United Kingdom Registered Trade Mark No. 602,660 ("the Claimant's Mark") is and always has been invalidly registered, alternatively an order that the Claimant's Mark be revoked with effect from 30 November 2004 or such earlier date as the Court may think fit.
The Claimant is an American corporation. It is the manufacturer of canned luncheon meat sold under the trade mark SPAM. SPAM is an invented word which is a contraction of SPICED HAM. The Defendant is a holding company registered in the Netherlands Antilles with various subsidiary companies. Formerly one of its subsidiaries was Cablenet Ltd, a company registered in England, which carried on business as an Internet service provider ("ISP") from 1995. Cablenet changed its name to Themail Ltd in 1999, was sold to another group in late 2002 and is now in compulsory liquidation. The casus belli is the Defendant's registration of a trade mark consisting of a stylised presentation of the word SPAMBUSTER which was formerly used by Cablenet in relation to a program and service for combating unsolicited commercial electronic messages.
The proceedings have an unfortunate procedural history which was considered in a ruling which I gave during the course of the trial on 30 November 2004 (as subsequently corrected). It is unnecessary to say any more about that aspect of the matter, however, save to note that, except for one hearing at an early stage of the proceedings, the Defendant has been represented throughout by Mr Nicholas Austin. Mr Austin is the ultimate beneficial owner of the majority of the shares in the Defendant, although he is neither an officer nor an employee of the company.
The Marks
The Claimant's Mark consists of the word SPAM registered as of 25 November 1938 in respect of "canned meats" in Class 29. The Defendant's Mark consists of the word SPAMBUSTER in the following stylised form registered as of 5 December 1997 in respect of "computer programming" in Class 42:
While the registered representation of the Defendant's Mark is monochrome as shown, the colours yellow andredare~ciaimed as an element of the Mark. Although the details of this claim do not appear to be recorded on the Register, the Form TM3 filed by the Defendant when applying to register the Defendant's Mark specifies that the interior of the letters is yellow while the external key line is red. A coloured version of the Defendant's Mark as used by Cablenet is in evidence.
The grounds relied upon
The Claimant contends that the Defendant's Mark was registered in contravention of section 3(1)(b) alternatively (c) alternatively (d) of the Trade Marks Act 1994 and therefore should be declared invalid pursuant to section 47(1) of the 1994 Act. Originally the Claimant also contended that the Defendant's Mark was registered in contravention of section 3(6) of the 1994 Act, but this allegation was withdrawn during the Claimant's closing speech. Accordingly I need say no more about it. In the alternative the Claimant contends that the Defendant's Mark should be revoked pursuant to section 46(l)(c) of the 1994 Act. In essence, the Claimant says that the Defendant's Mark was descriptive or generic or otherwise devoid of distinctive character as at the application date or has subsequently become generic due to the Defendant's inaction.
The Defendant contends that the Claimant's Mark was registered in contravention of section 3(l)(d) of the 1994 Act and therefore should be declared invalid pursuant to section 47(1) of the 1994 Act. It is common ground that the Defendant is entitled to attack the validity of the registration on this ground even though the Claimant's Mark was applied for as long ago as 1938 because of the transitional provisions under the 1994 Act. In the alternative the Defendant contends that the Claimant's Mark should be revoked pursuant to section 46(l)(c) of the 1994 Act. To a large extent the Defendant's contentions are a mirror image of the Claimant's.
The main relevant statutory provisions
Sections 3, 46 and 47 of the 1994 Act provide in relevant part as follows:
"3.(1) The following shall not be registered—
…
(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.
46.(1) The registration of a trade mark may be revoked on any of the following grounds—
(c) that in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;…
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—
(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.
47.(l) 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.
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only."
These provisions implement Articles 3(1)(b),(c),(d),(3) and 12(2)(a) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ("the Directive") and correspond to Articles 7(1)(b),(c),(d), 50(1)(b) and 51(l)(a),(2) of Council Regulation 40/94/EEC of 20 December 1993 on the Community trade mark ("the Regulation").
The previous proceedings
One of the Defendant's defences to the Claimant's claims arises out of the fact that this is not the first occasion on which the Claimant has brought proceedings against the Defendant. There have been two earlier sets of the proceedings.
The Registry proceedings
On 22 March 2001 the Claimant filed an application to the Registrar of Trade Marks for a declaration that the registration of the Defendant's Mark be declared invalid. In the statement of case which accompanied its Form TM26(I) the Claimant pleaded that it was the proprietor of various registered trade marks, including the Claimant's Mark, and that the trade mark SPAM was a well-known mark within the meaning of Article 6bis of the Paris Convention. The Claimant continued:
"7. The applicant's mark, SPAM, is entirely contained within, and in fact the primary element of, the mark for which a declaration of invalidity is sought. The marks are therefore partially identical, and similar as a whole. The message conveyed by the mark SPAMBUSTER, is that the public should not buy or use the applicant's products sold under the mark and/or that it is some exhortation to do away with or destroy the applicants' mark SPAM, or their products, altogether.
8. The services listed in the specification of the impugned UK registration are dissimilar to those for which the applicant for invalidity's marks are registered, nevertheless, use and registration of the impugned mark is detrimental to the repute or the distinctiveness of the applicant's earlier trade mark SPAM. Registration should therefore be declared invalid by virtue of Section 47(2)(a) of the Act (as this refers to Section 5(3) of the Act).
9. The applicants are aware of use of the word 'spam' on the Internet, to denote 'rubbish' or 'junk'. That particular usage is not trade mark use, and neither the applicant nor anyone else can prevent it. However, the use and registration of SPAMBUSTER as a trade mark can be prevented, and...
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