Multi-Access Ltd v Guanghzhou Wong Lo Kat Great Health Business Development Company Ltd
| Jurisdiction | England & Wales |
| Judge | Mr David Stone |
| Judgment Date | 12 December 2019 |
| Neutral Citation | [2019] EWHC 3357 (Ch) |
| Date | 12 December 2019 |
| Docket Number | Appeal Ref: CH-2019-000139 |
| Court | Chancery Division |
[2019] EWHC 3357 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
APPEALS (ChD)
ON APPEAL FROM THE UK INTELLECTUAL PROPERTY OFFICE
(Mr Mark King on behalf of the Registrar of Trade Marks)
The Rolls Building
7 Rolls Buildings, Fetter Lane
London, EC4A 1NL
Mr. David Stone
(Sitting as a Deputy High Court Judge)
Appeal Ref: CH-2019-000139
Mr Christopher Hall (instructed by Shakespeare Martineau LLP) for the Appellant/Proprietor
Mr Martin Krause of Haseltine Lake Kempner LLP for the Respondent/Applicant
Hearing date: 29 October 2019, with further written submissions filed on 5 November 2019 and 13 November 2019
APPROVED JUDGEMENT
Mr David Stone (sitting as a Deputy High Court Judge):
This is an appeal from decision BL O-220-19 of Mr Mark King, a Hearing Officer of the United Kingdom Intellectual Property Office (“UKIPO”), acting on behalf of the Registrar of Trade Marks, dated 29 April 2019 (“the Decision”). By the Decision, the Hearing Officer revoked two United Kingdom trade mark registrations numbered 1495166 and 1495167 (individually, “166” and “167” and collectively, “the Registrations”) on the grounds of non-use under section 46 of the Trade Marks Act 1994 (“the Act”). The registered proprietor of the registrations at the time of the Decision was Multi-Access Limited (“the Proprietor”), who is the appellant in these proceedings.
The Registrations were each registered for the following sign (“the Trade Mark”):
Each of the Registrations included the description “The transliteration of the Chinese characters appearing in the mark is “Wong Lo Kat” meaning “King Old Lucky”. They were registered for different goods:
(a) 166 was registered in Class 5 of the Nice Classification for the specification “Beverages for medicinal purposes; all included in Class 5”; and
(b) 167 was registered in Class 32 of the Nice Classification for the specification “Beverages; all included in Class 32”.
The applications to revoke the Registrations were filed by Guangzhou Wong Lo Kat Great Health Business Development Co Ltd (“the Applicant for Revocation” or “the Applicant”) and were given proceeding numbers 502021 and 502022, which were then consolidated. Revocation was sought in relation to various periods of non-use:
Whilst the Hearing Officer referred in the Decision to two periods of non-use, being the section 46(1)(a) period and the section 46(1)(b) period, it is clear from the face of the Decision that he was aware that the section 46(1)(a) periods differed by a number of days as between 166 and 167, and so nothing turns on it.
| Registration No: | Section 46(1)(a) period | Section 46(1)(b) period |
| 166 | 10 July 1993 – 9 July 1998 Revocation to take effect 10 July 1998 | 23 March 2013 – 22 March 2018 Revocation to take effect 23 March 2018 |
| 167 | 3 July 1993 – 2 July 1998 Revocation to take effect 3 July 1998 | 23 March 2013 – 22 March 2018 Revocation to take effect 23 March 2018 |
In the proceedings below, only the Proprietor filed evidence. There was no request for a hearing, so the Hearing Officer issued his Decision “following a careful consideration of the papers”. In summary, the Hearing Officer found that the Registrations had not been put to genuine use in the United Kingdom for the goods for which they were registered, and ordered that 166 be revoked from 10 July 1998 and that 167 be revoked from 3 July 1998. He also ordered that the Proprietor pay the Applicant's costs in the sum of £1600.
The Proprietor appealed to this court, and I heard the parties on 29 October 2019. The Proprietor was represented at the hearing by Mr Christopher Hall of counsel, and the Applicant was represented by Mr Martin Krause of Haseltine Lake Kempner LLP. I also had the benefit of detailed written skeleton arguments, for which I am grateful. At my invitation, the Proprietor filed further written submissions on 5 November 2019 dealing with a number of points raised in the course of the hearing and the Applicant responded to those submissions in writing on 13 November 2019. That day, the Proprietor indicated it would not be filing any further submissions in reply.
Nature of an appeal to the High Court
The approach which the Court should take on an appeal from the Registrar of Trade Marks was not in dispute. Floyd J (as he then was) summarised the approach in Galileo International Technology, LLC v European Union (formerly European Community) [2011] EWHC 35 (Ch) at [11] to [14]:
“11. This is an appeal brought pursuant to section 76 of the Act. Such appeals are not by way of a rehearing but are a review. The principles were set out by Robert Walker LJ in Bessant and others v South Cone Inc [2003] RPC 5, at paragraphs 17 to 30. Robert Walker LJ said at [28]:
“The appellate court should in my view show real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.”
12. At paragraph 29, Robert Walker LJ said this:
“The appellate court should not treat a judgement or a written decision as containing an error principle simply because of its belief that the judgement or decision could have been better expressed.”
13. In that case the High Court judge had reversed the decision of a Hearing Officer. The Court of Appeal held that he had been wrong to do so. Robert Walker LJ in dismissing the appeal said this:
“I consider that the Hearing Officer did not err in principle, nor was he clearly wrong.”
14. I conclude that, unless I am satisfied that the Hearing Officer made an error of principle, I should be reluctant to interfere. I should interfere if I consider that his decision is clearly wrong, for example if I consider that he has drawn inferences which cannot properly be drawn, or has otherwise reached an unreasonable conclusion. I should not interfere if his decision is one which he was properly entitled to reach on the material before him.”
Counsel for the Applicant also drew my attention to a recent decision of the Supreme Court in Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15 at [78] to [81] (per Lord Hodge JSC, with whom Lady Hale PSC and Lord Kerr, Lord Sumption and Lord Briggs JJSC agreed):
“78. Finally, before addressing directly the question whether the Court of Appeal was entitled to reverse Birss J's finding of non-obviousness, I remind myself of the limits of an appellate court's power to overturn the evaluation of a trial judge in this field. Where inferences from findings of primary fact involve an evaluation of numerous factors, the appropriateness of an intervention by an appellate court will depend on variables including the nature of the evaluation, 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: South Cone Inc v Bessant, In re Reef Trade Mark [2002] EWCA Civ 763; [2003] RPC 5, paras 25–28 per Robert Walker LJ.
79. An experienced patent judge faced with a challenge to a patent on the ground of obviousness, and who has heard oral evidence including cross-examination, carries out an evaluation of all the relevant factors, none of which alone is decisive but each of which must be weighed in the balance in reaching a conclusion. In Biogen Inc v Medeva plc [1997] RPC 1, 45, Lord Hoffmann emphasised the need for appellate caution in reversing the judge's evaluation of the facts where the application of a legal standard involved no question of principle but was simply a matter of degree. He held that it would be wrong to interfere with the judge's assessment if no question of principle were involved.
80. What is a question of principle in this context? An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. What is the nature of such an evaluative error? In this case we are not concerned with any challenge to the trial judge's conclusions of primary fact but with the correctness of the judge's evaluation of the facts which he has found, in which he weighs a number of different factors against each other. This evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge's conclusion is outside the bounds within which reasonable disagreement is possible: Assicurazioni Generali SpA v Arab Insurance Group (Practice Note) [2002] EWCA Civ 1642; [2003] 1 WLR 577, paras 14–17 per Clarke LJ, a statement which the House of Lords approved in Datec Electronic Holdings Ltd v United Parcels Service Ltd [2007] UKHL 23; [2007] 1 WLR 1325, para 46 per Lord Mance.
81. Thus, in the absence of a legal error by the trial judge, which might be asking the wrong question, failing to take account of relevant matters, or taking into account irrelevant matters, the Court of Appeal would be justified in differing from a trial judge's assessment of obviousness if the appellate court were to reach the view that the judge's conclusion was outside the bounds within which reasonable disagreement is possible. It must be satisfied that the trial judge was wrong: see, by way of analogy, In re B (A Child) (Care Proceedings Threshold Criteria) [2013] UKSC 33; [2013] 1 WLR 1911, paras 90–93 per Lord Neuberger, para 203 per Lady Hale.”
Relevant sections of the Act
So far as is relevant, section 46 of the Act provides as follows:
“46. Revocation of registration.
(1) The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of...
To continue reading
Request your trial
-
Decision Nº O/251/20 from Intellectual Property Office - (Trade market), 22 April 2020
...Ltd [2018] EWHC 3608 (Ch) and most recently in Multi-Access Ltd v Guanghzhou Wong Lo Kat Great Health Business Development Co Ltd [2019] EWHC 3357 (Ch). In Avnet Incorporated v Isoact Limited, [1998] F.S.R. 16, Jacob J held: “In my view, specifications for services should be scrutinised car......