Rousselon Freres Et Cie v Horwood Homewares Ltd

JurisdictionEngland & Wales
JudgeMR JUSTICE WARREN,Mr Justice Warren
Judgment Date24 April 2008
Neutral Citation[2008] EWHC 881 (Ch)
CourtChancery Division
Docket NumberCase No: CH/2007/APP/0561
Date24 April 2008

[2008] EWHC 881 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

MR JUSTICE WARREN

Case No: CH/2007/APP/0561

Between:
Rousselon Freres Et Cie
Appellant
and
Horwood Homewares Limited
Respondent

Mark Vanhegan (instructed by Messrs Collyer Bristow LLP) for the Appellant

Richard Arnold QC and Michael Edenborough (instructed by Messrs Mathys and Squire) for the Respondent

Hearing dates: 6th,7th, &11th February 2008

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.

MR JUSTICE WARREN Mr Justice Warren

Introduction

1

This appeal is from the decision of Mr Mike Foley, the Hearing Officer of the Comptroller-General of Patents, Designs and Trade Marks, dated 1 August 2007 (“the Decision”) following a hearing in the early part of 2007. Mr Foley dismissed the consolidated applications made by the Appellant (“RF”) to invalidate two United Kingdom trade marks registered in the name of the Respondent (“HH”). These registered trade marks (“HH's Marks”) are as follows:

a. No 2,225,281 filed on 10 March 2000 for the mark “JUDGE SABATIER” in classes 8 and 21

b. No 2,225,287 filed on 10 March 2000 for the mark “STELLAR SABATIER” in classes 8 and 21.

The corresponding devices are as follows:

2

The marks, in each case, are for the following:

a. Class 8: Cutlery, forks and spoons, hand tools for culinary and for horticultural use; knives.

b. Class 21: Domestic utensils and containers; pots, pans, steamers, kettles, all non-electric and all for culinary or domestic use; glassware, porcelain, earthenware for domestic or culinary use; tableware, brushes, sponges, non-electric cleaner.

3

RF's applications for invalidity are based on three earlier United Kingdom registered trade marks dating from 1956, 1969 and 1990 each of which comprised of or included the word SABATIER (“RF's Marks”). RF contends that Mr Foley was wrong to dismiss its applications. It submits that pursuant to section 5(2)(b) Trade Marks Act 1994 (“ TMA”), there has at all times existed a likelihood of confusion between HH's Marks and RF's Marks, in particular RF's registration for the SABATIER word mark and that, pursuant to section 47(2)(a) TMA, HH's marks should be declared invalid.

4

By way of background, I mention that there is an association one of whose purposes is to protect, for its members, the use of any mark which contains the word sabatier. This is “Association des Proprietaires des Marques de Coutellerie incorporant le mot Sabatier” which translates as “Association of Proprietors of Cutlery Trade Marks incorporating the word Sabatier”. I shall call it “the Association”. In his skeleton argument for RF, Mr Vanhegan says this:

“The Association was formed by successors to the Sabatier family which started making and selling cooks' knives in Thiers, France. Successive generations across several branches of the family continued to trade in Thiers, leading to independent use of the SABATIER name by a number of different businesses. The Association was formed in 1979 for the purpose of protecting the SABATIER name and conserving its distinctive character.”

That reflects the evidence recited by Mr Foley in paragraphs 9 and 10 of the Decision which does not appear to have been challenged.

5

It is to be noted that the Association members are independent of each other and, apart from their common interest in preventing others from using the name Sabatier, there is no commercial relationship between them. It is also to be noted that RF's Marks are not collective or certification marks (as governed by section 49 and Schedule 1 and by section 50 and Schedule 2 TMA respectively).

6

RF is a member of the Association. It has not always been a member, but is a successor in title to marks belonging to Association members.

7

RF's Marks are the following:

a. No 759,851 filed 23 November 1956 for the stylised mark PROFESSIONAL SABATIER in class 8 for “Kitchen knives and butchers knives” thus:

b. No 940,831 filed on 8 April 1969 for the word mark SABATIER in class 8 for “Kitchen knives, cooks' knives, butchers' knives; forks for cooking, carving and roasting; and sharpening steels, (not being machines)”

c. No 1,514,055 filed 30 September 1990 for the mark SABATIER LION in class 8 for “Kitchen knives, cooks' knives, butchers' knives; forks for cooking, carving and roasting; sharpening steels (not being machines); all included in Class 8” and the device thus:

8

It is immediately apparent that the only possibility of confusion arises out of the presence of the word SABATIER in the various marks. In all other respects the marks are, as Mr Richard Arnold QC (who appears for HH) submits, completely different.

The relevant statutory provisions

9

Section 5 TMA (headed “Relative grounds for refusal of registration”) provides as follows:

5.— (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected

(2) A trade mark shall not be registered if because –

(a) ……………

(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.”

10

An earlier trade mark is defined in section 6 TMA as follows:

6. — (1) In this Act an “earlier trade mark” means –

(a) a registered trade mark, international trade mark (UK), Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks”

11

Section 47 TMA (headed “Grounds for invalidity of registration”) provides as follows:

47. — (1) …………

(2) The registration of a trade mark may be declared invalid on the ground –

(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), ( 2) or (3) obtain……….”

12

I should also mention:

a. Section 46(1)(c) which provides for revocation of the registration of a trade mark where, 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.

b. Section 72 which provides that registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.

The authorities

13

In paragraph 61 of the Decision, Mr Foley sets out (in a way which is standard in decisions of this sort) the guidance which he derives from the case law of the ECJ in Sabel BV v Puma AG [1998] RPC 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] 45 FSR. 77 and Marca Mode CV v Adidas AG & Adidas Benelux BV [2000] ETMR. 723. He then sets out the conclusions to be drawn from that case law: I do not think that there is anything contentious about his conclusions so far as they go which are to the following effect:

a. the likelihood of confusion must be appreciated globally, taking account of all relevant factors; Sabel BV v Puma AG,

b. the matter must be judged through the eyes of the average consumer of the goods/services in question; Sabel BV v Puma AG, who is deemed to be reasonably well informed and reasonably circumspect and observant —but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind; Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV,

c. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; Sabel BV v Puma AG,

d. the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components; Sabel BV v Puma AG,

e. a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,

f. there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it; Sabel BV v Puma AG,

g. in determining whether similarity between the goods or services covered by two trade marks is sufficient to give rise to the likelihood of confusion, the distinctive character and reputation of the earlier mark must be taken into account; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,

h. mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of Section 5(2); Sabel BV v Puma AG,

i. further, the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; Marca Mode CV v Adidas AG & Adidas Benelux BV,

j. but if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.

14

From these cases, one can see that non-origin confusion is not enough to establish a likelihood of confusion; rather, there has to be a likelihood of confusion about the...

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