Inter Lotto (UK) Ltd v Camelot Group Plc

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
JudgeLord Justice Carnwath,Lord Justice Keene,Lord Justice Pill
Judgment Date30 Jul 2003
Neutral Citation[2003] EWCA Civ 1132
Docket NumberCase No: A3/2003/1284

[2003] EWCA Civ 1132

IN THE SUPREME COURT OF JUDICATURE

COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM CHANCERY DIVISION

THE HON. MR JUSTICE LADDIE

Royal Courts of Justice

Strand,

London, WC2A 2LL

Before:

Lord Justice Pill

Lord Justice Keene and

Lord Justice Carnwath

Case No: A3/2003/1284

Between
Inter Lotto (uk) Ltd
Appellant
and
Camelot Group Plc
Respondent

Michael Silverleaf QC and Michael Hicks (instructed by Jones Day Gouldens) for the Appellant

Geoffrey Hobbs QC and Philip Roberts (instructed by McDermott, Will & Emery) for the Respondent

Lord Justice Carnwath

Introduction

1

The Defendant, Camelot, operates the National Lottery under licence from the National Lottery Commission ("NLC"). The claimant, Inter Lotto operates lotteries in public houses, under the name, "HOTSPOT". The present proceedings concern a particular feature of the lottery organised by Inter Lotto, which enables a player to ask for draw numbers to be selected randomly, and the similar name of a lottery game run by Camelot.

2

Inter Lotto uses the name "HOTPICK". According to its case, the name "HOTPICK" was chosen in July 2001. In August 2001 it began promoting HOTPICK in conjunction with its registered trademark "HOTSPOT", through a sales force targeting public houses in the UK. Until the middle of September 2001, use of the name HOTPICK was oral, but at that time it was used in printing tickets. It claims that by 17 th October 2001 (one of the critical dates for the present proceedings) a total of almost 7,000 pubs had been visited, of which 424 were signed up with Inter Lotto. However, it was not until 28 th November 2001 that there was actual operation of its HOTSPOT game, with the "HOTPICK" feature.

3

Turning to Camelot's case, it says that it chose the name "HOTPICKS" for its game in August 2001. On 17 th October 2001 it caused the NLC to apply to register the name as a trade mark for lottery services. That application was accepted by the Registrar of Trade Marks and advertised for opposition on 7 th August 2002, under the number 2283392. It was opposed by Inter Lotto on 7 th November 2002. In the meantime, on 29 th April 2002 Camelot had announced the re-naming of the National Lottery draw as "Lotto" and had begun to advertise the launch of a new "Lotto Hotpicks" game. The "Lotto Hotpicks" game first became available for play by the public on 10 th July 2002.

4

In January 2003 Inter Lotto brought proceedings against Camelot for trade mark infringement and passing off. It claims that it has suffered, and is continuing to suffer, significant commercial damage as a result of the confusion between the two games. The present appeal concerns a preliminary issue ordered on 19 th March 2003 by Patten J with the consent of the parties in the following terms:

"Is the 17 th October 2001 (the date on which the National Lottery Commission applied under application 2283392 to register the designation HOTPICKS as a trade mark) the relevant date at which the claimant's reputation and goodwill for its claim in passing off falls to be assessed?"

5

This issue requires a little elaboration to understand its significance in the context of these proceedings. We are concerned with the relationship of trade mark law and passing off law. Inter Lotto seeks to rely on the well-established principle that liability in passing off falls to be determined as at the date when the defendant goes to the market under the mark or name in question. On this basis its claim is to be judged not earlier than April 2002 when Lotto Hotpicks was first launched, and by which time, according to its case, its own HOTPICK game was well-established.

6

Camelot, however, contends that the relevant date is 17 th October 2001, the date of its application for registration. It argues that, under the terms of the Trade Marks Act 1994, it was entitled to register the mark as at that date, unless Inter Lotto was able to establish a passing off claim by virtue of its own use prior to that date; and that any use since then by Inter Lotto should be regarded as unlawful, and not therefore such as to reinforce Inter Lotto's claim in passing off.

The relevant law

7

There is no material dispute as to the applicable law of passing off. A trader may not conduct his business so as to lead to the belief that his goods or services are the goods or services of another. To bring such an action the plaintiff must establish a goodwill or reputation attached to his goods or services. The relevant date for that purpose is the date of the commencement of the conduct complained of (see Cadbury Schweppes Property Ltd v The Pub Squash Co Ltd [1981] RPC 429, 494 per Lord Scarman). Accordingly, apart from the effect of trade mark law, Inter Lotto would be entitled to rely on any goodwill built up at least by the time Camelot began to market their new game in April 2002.

8

The debate in this case therefore turns on the interaction of this law with the provisions of the Trade Marks Act 1994. For present purposes, the relevant provisions are as follows. Section 2 provides:

"(1) A registered trade mark is a property right obtained by the registration of the trade mark under the Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

(2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off."

9

Section 3 ff deal with grounds for refusal of registration. Section 5 (4) is material to this case:-

"(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or…

A person thus entitled to prevent the use of a trade mark is referred to in this Act as proprietor of an 'earlier right' in relation to the trade mark."

10

Section 9 deals with the rights conferred by a registered trade mark. Sub-section (1) provides that the proprietor of registered trade mark has "exclusive rights" in the trade mark which "are infringed by its use in the United Kingdom without his consent". By sub-section (3) -

"(3) The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing of the application for registration):

Provided that –

(a) no infringement proceedings may be begun before the date on which the trade mark was in fact registered; and

(b) no offence under s 92 (unauthorised use of a trade mark etc. in relation to goods) is committed by anything done before the date of publication of the registration."

Section 40(3), there cited, provides that the trade mark when registered is registered "as of the date of filing of the application for registration", which date is "deemed for the purposes of this Act to be the date of registration". Section 92 creates a number of criminal offences of using a trade mark with a view to gain without the consent of the proprietor.

11

Section 32 provides for applications for registration. It requires the applicant to state that the mark is being used in connection with services specified, or that he has a bona fide intention that it should be so used. The registration procedure is covered by section 37 ff. The Registrar makes an initial examination to satisfy herself that the application satisfies the requirements of the Act (s 37). It is then published, and there is an opportunity for any person within the prescribed time to give notice of opposition to the registration stating the grounds of opposition (s 38). If no opposition is given within the prescribed period, or if all opposition proceedings have been withdrawn or decided in favour of the applicant, the Registrar must register the mark, unless matters coming to her notice since she accepted the application show that it was accepted in error (s 40).

12

As already noted, the registration takes effect as of the date of the filing of the application. The trade mark is initially registered for ten years, with the possibility of renewal (s 42–3). However, a registration may be revoked if it has not been put to genuine use within five years (s 46(1)(a)); or if –

"in consequence of the use made of it by the proprietor…, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services." (s 46(1)(d).

The registered mark may also be declared invalid on the ground that it was registered in breach of the requirements for registration, including the ground –

"that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied." (s 47(2)(b))

The right to challenge a registered trade mark on the basis of an earlier right (as defined in section 5(4)) is lost if the owner of the earlier right has for five years knowingly acquiesced in the use of the registered mark (s 48).

Derivations

13

In the court below, and in the skeleton arguments before us, there was lengthy discussion of the background of the various provisions, going back (in this country) to the Trade Marks Registration Act 1875, and (in the European context) to the 1980 Commission proposals which led in due course to the 1988 Directive and the 1993 Regulation.

14

Such historical analysis has to be approached with caution. The background of the 1994 Act was described recently in the House of Lords:

"62. The law of trade marks has ancient origins which are preserved in the non-statutory law of passing off. Statutory regulation of trade marks, including a system of registration, was...

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