Pathway IP Sarl (formerly Regus No. 2 Sarl) v Easygroup Ltd (formerly Easygroup IP Licensing Ltd)
| Jurisdiction | England & Wales |
| Judge | Mr Justice Henry Carr |
| Judgment Date | 21 December 2018 |
| Neutral Citation | [2018] EWHC 3608 (Ch) |
| Court | Chancery Division |
| Docket Number | Appeal Nos: CH/2011/0343 and CH/2011/0445 |
| Date | 21 December 2018 |
[2018] EWHC 3608 (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
Rolls Building
7 Rolls Buildings, Fetter Lane
London, EC4A 1NL
Mr Justice Henry Carr
Appeal Nos: CH/2011/0343 and CH/2011/0445
Mark Vanhegan QC (instructed by Kempner & Partners LLP) for the Appellant
Simon Malynicz QC and Stephanie Wickenden (instructed by Stephenson Harwood LLP) for the Respondent
Hearing date: 26 November 2018
Judgment Approved
Introduction
Unless familiar with the law of registered trade marks, you might think that it is relatively straightforward. Regrettably, you would be wrong. As illustrated by the recent judgment of Arnold J in Sky Plc v SkyKick UK Ltd [2018] EWHC 155 (Ch); [2018] RPC 5 (“the Sky case”), trade mark litigation can raise multiple legal issues of Byzantine complexity. In comparison with the Sky case, this judgment is a minnow. Nonetheless, it deals with some challenging issues, which require careful consideration.
This is an appeal from the decision of Mr M. Foley, an experienced hearing officer of the UK Intellectual Property Office (hereafter “UKIPO”), acting on behalf of the Registrar of Trade Marks, dated 6 June 2011 (“the Decision”). By the Decision the hearing officer revoked registered trade mark nos. 2160489 and 2208166 (individually “489” and “166” and collectively “the Trade Marks”) with effect from 5 January 2004 and 24 June 2005 respectively (“the Relevant Period”), for non-use under section 46 of the Trade Marks Act 1994 (the “Act”).
The Trade Marks are registered in respect of the sign “easyoffice” in various fonts and coloured backgrounds. The appellant is the registered proprietor of the Trade Marks. The specifications of both of the Trade Marks state that they are for “Provision of office facilities, rental of office equipment”. In 2009 the respondent made two applications for revocation of the Trade Marks for non-use. By the Decision, the hearing officer found no genuine use during the Relevant Period of the Trade Marks that fell within the scope of the registered specifications and concluded that the registrations should be revoked in their entirety.
The hearing officer interpreted the scope of the services in the specifications, i.e. “the provision of office facilities” and “rental of office equipment”, by reference to their natural and ordinary meaning. He then adopted a narrower interpretation of the specifications by reference to the Nice Classification lists in Class 35, which was the class in which the Trade Marks were registered. In so doing, he relied upon the judgment of the Court of Appeal in Altecnic Ltd's Trade Mark Application [2001] EWCA Civ 1928; [2002] RPC 34 (“the Altecnic case”).
The approach taken by the hearing officer, which had regard to the Nice Classification when considering the scope of the registered specifications, was in accordance with practice guidance published by the UKIPO and the European Union Intellectual Property Office (“EUIPO”) (the details of which are set out below). However, the appellant contends that this approach is wrong in law, in the light of the judgments of Arnold J in Omega Engineering, Inc v Omega SA [2010] EWHC 1211 (Ch); [2010] FSR 26 (“the Omega 1 case”); Omega Engineering, Inc v Omega SA [2012] EWHC 3440 (Ch); [2013] FSR 25 (“the Omega 2 case”) and Fil Ltd v Fidelis Underwriting Ltd [2018] EWHC 1097 (Pat) (“the Fidelis case”). Judgments in the Omega 2 case and the Fidelis case were handed down subsequent to the Decision of the hearing officer.
The appellant has also applied for permission to adduce the prosecution files for the Trade Mark applications as fresh evidence in the appeal. This is unusual, as save in very limited circumstances the prosecution history is irrelevant and inadmissible when considering revocation for non-use.
Chronology
This case has taken an extraordinary amount of time to reach this stage. A brief chronology was helpfully provided by Mr Vanhegan QC, who appeared for the appellant. I set out what I regard as uncontroversial dates and events.
| 10 March 1998 | BAA Limited (which became BAA plc, a predecessor in title of the appellant) filed an application for 489 for the “provision of serviced office accommodation, business services”, in Class 35 |
| 8 April 1998 | UKIPO objected to the specification. |
| 15 May 1998 | Following correspondence with the examiner, the appellant changed the specification of 489 to “Provision of office facilities, rental of office equipment”, still in Class 35. |
| 4 January 1999 | 489 was registered. |
| 9 September 1999 | BAA Limited filed an application for 166 for the “Provision of office facilities, rental of office equipment”, in Class 35. |
| 23 June 2000 | 166 was registered. |
| 21 September 2009 | The respondent filed applications for revocation of 489 and 166. It relied on sections 46(1)(a) and (b) of the Act. It sought revocation of 166 with effect from 24 June 2005 and revocation of 489 with effect from 5 January 2004. |
| 8 April 2010 | The applications for revocation were consolidated. |
| 14 October 2010 | Hearing before the hearing officer. |
| 6 June 2011 | Decision of the hearing officer who found no genuine use falling within the scope of the registered specifications and decided to revoke 166 with effect from 24 June 2005 and 489 with effect from 5 June 2004. |
| December 2011 | The parties consented to an adjournment of the appeal in the light of a pending reference to the Court of Justice of the European Union (“the CJEU”) in Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator Trade Mark) ECLI:EU:C:2012:361; [2013] RPC 11 (“the IP Translator case”). |
| 19 June 2012 | Judgment of the Grand Chamber of the CJEU in the IP Translator case. |
| 17 December 2012 | The appellant changed its name to Pathway IP SARL. |
| 8 May 2014 | The respondent changed its name to Easygroup Ltd. |
| 5 January 2018 | The appellant made an application to adduce fresh evidence in the appeal. |
| 26 November 2018 | Hearing date of the appeal. |
Two points emerge from this chronology. First, the appellant needs to show genuine use within the Relevant Period between 21 September 2004 and 20 September 2009. Secondly, after the IP Translator case had been decided by the CJEU, the appellant did not seek to relist its appeal until receiving a letter from the respondent dated 31 January 2017 asking for confirmation that the appeal was no longer being pursued. Although the appeal had been adjourned, there was no stay. The respondent contended that the reason why the appeal was not prosecuted was because, while the appeal was pending, the Trade Marks remained on the Register and from the perspective of third parties and the public they were valid and enforceable. This is strongly denied by the appellant, who claims that settlement discussions were continuing at least until 2017. Even if I had the material to decide this dispute, which I do not, I regard it as irrelevant to the issues on this appeal. The respondent has not applied to strike out the appeal and therefore, it has to be decided.
Relevant sections of the Act
Section 46 of the Act provides as follows (so far as relevant):
“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 completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
…
…
(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.”
Section 100 of the Act provides as follows:
“100 Burden of proving use of trade mark.
If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.”
The Decision of the hearing officer
The Evidence
After having given the background to the consolidated applications, the hearing officer summarised the evidence at [8] – [17] of the Decision. This consisted of four witness statements.
Mr Holah, a partner at Field Fisher Waterhouse LLP, made two witness statements, both dated 22 March 2010, which differed only in relation to one exhibit. Exhibited to these witness statements was a Counterstatement dated 3 December 2007, made in relation to previous revocation proceedings brought against BAA Limited by Nuclei Ltd (to whom the Trade Marks were subsequently assigned by BAA Limited) in respect of 166. The Counterstatement served by BAA Limited asserted at paragraph [1] that the then proprietor provided serviced office facilities and equipment at Gatwick Airport under and by reference to 166. The Counterstatement asserted at [4] – [5] that:
“4. The Proprietor has made genuine use of the Mark for all services for which it is registered in class 35. Attached and marked Annex 2 are various Easyoffice Occupation Agreements with licence periods commencing from 26 April 1999 to 1 August 2007. These are black and white copies of colour documents which have been redacted to remove commercially sensitive...
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