SC Prodal 94 SRL v Spirits International NV

JurisdictionEngland & Wales
JudgeMr Justice Laddie
Judgment Date04 November 2003
Neutral Citation[2003] EWHC 2756 (Ch)
Date04 November 2003
CourtChancery Division
Docket NumberCase No: CH 2001 APP 0356

[2003] EWHC 2756 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

The Honourable Mr Justice Laddie

Case No: CH 2001 APP 0356

On Appeal From The Trade Marks Registry

In The Matter Of The Trade Marks Act 1994 and

In The Matter Of Uk Trade Mark Application No 2207412 For The Name Stalinskaya & Label And Device In Class 33 In The Name Of Sc Prodal 94 Srl and

In the MATTER of an Opposition thereto by Spirits International NV

SC Prodal 94 SRL
Appellant
and
Spirits International NV
Respondent

Mr Guy Burkill QC (instructed by Withers LLP for the Appellant)

Mr Andrew Norris (instructed by Blair & Co for the Respondent)

Hearing date: 4 November 2003

Approved Judgment

Mr Justice Laddie

Mr Justice Laddie

1

This is an appeal from the decision of the Hearing Officer, sitting for the Comptroller General of Patents, Trade Marks and Designs, dated 23 April 2003 by which he upheld an opposition to the registration of two trade marks.

2

The applicant for the trade marks, the appellant before me, is SC Prodal 94 SRL. The two trade marks consist of labels to be attached to bottles of vodka in which one of the most distinctive features is the word STALINSKAYA. The opposition was brought by Spirits International NV. Reliance was placed, in particular, upon section 5(2)(b) of the Trade Marks Act 1994, it being said that the marks applied for were similar to a number of prior registered marks, all being marks in which were prominently utilised the well-known trade mark STOLICHNAYA.

3

Mr. Burkill QC, who appears on behalf of the appellant/applicant accepts that the Hearing Officer correctly set out the factors which he had to take into account in deciding this opposition. Those are set out in paragraph 26 of the decision in which he says the following:

"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; Sabel BV v. Puma AG, page 224;

(b) the matter must be judged through the eyes of the average consumer of the goods/services in question; Sabel BV v. Puma AG, page 224, 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 page 84;

(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, page 224;

(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, page 224;

(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-Meyer Inc., page 132;

(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, paragraph 224;

(g) mere association, in the sense that the later mark brings the earlier marks to mind, is not sufficient for the purpose of section 5(2); Sabel BV v. Puma AG, page 224; and

(h) 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-Meyer Inc., page 134."

4

Those were the principles which he said he was to apply to deciding whether the objection under section 5(2)(b) was being made out. In particular it should be remembered that under that section:

"A trade mark shall not be registered if because

….

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those of which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes a likelihood of association with the earlier trade mark."

5

So, as I have said, Mr. Burkill accepts that the principles which the Hearing Officer had to apply in deciding whether or not there was sufficient likelihood of confusion to trigger the operation of section 5(2)(b) were accurately recorded in the decision under appeal. The argument is that having set out the correct tests or considerations which had to be borne in mind, the Hearing Officer failed to do that properly.

6

Before turning to the decision I think it is useful to have in mind the decision of the Court of Appeal in REEF Trade Mark [2003] RPC page 101 in which the court considered what the function of an appellate tribunal was in, amongst other things, appeals from the Trade Mark Registry. As Robert Walker LJ said in that case, an appeal from the Trade Mark Registry is not a rehearing. Because of that, particular respect must be given to the conclusions arrived at by the first instance tribunal. The appellate court should be wary of making different findings of fact on the same evidence and the appellate court has to take into account the undoubted expertise of those conducting trade mark hearings in the Registry. Thus (to use the words used in REEF there should be a real reluctance "to interfere in the absence of a distinct and material error of principle".

7

Furthermore, I think it is worth noting that Robert Walker LJ said that "the Hearing Officer was not obliged to disown all his knowledge of the day-to-day world in which we all live" and he further decried the practice of sifting through exhibits, which had not been the subject of cross-examination, to pick up scraps of information about the status of the market and to accord them much greater value than they bear on their face.

8

The Hearing Officer took note of the factors which he had identified as being the relevant factors to consider in determining whether section 5(2)(b) operated in this case and in his decision he goes through each of those factors...

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12 cases
  • Future Enterprises Pte Ltd v McDonald's Corp
    • Singapore
    • Court of Appeal (Singapore)
    • March 28, 2007
    ...to interfere in the absence of a distinct and material error of principle”. In SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), Laddie J expressed the same sentiments (at [19]) as It is not the duty of this court to overturn a decision of the Trade Mark Registry simply bec......
  • Cchg Limited T/a Vaporized Against Vapouriz Limited
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    • July 12, 2017
    ...undertake an “over-meticulous analysis” of the hearing officer’s decision, per Laddie J in SC Prodal 94 Srl v Spirits International NV [2003] EWHC 2756 at paragraph 9, after citation of observation to like effect in REEF at paragraph 29 per Robert Walker LJ, namely, “[t]he appellate court s......
  • Ozone Community Corporation v Advance Magazine Publishers Inc.
    • Singapore
    • High Court (Singapore)
    • January 15, 2010
    ...to interfere in the absence of a distinct and material error of principle'. In SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), Laddie J expressed the same sentiments (at [19]) as follows: It is not the duty of this court to overturn a decision of the Trade Mark Registry s......
  • Martek Biosciences Corp v Cargill International Trading Pte Ltd
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    • High Court (Singapore)
    • May 3, 2010
    ...similarities were upheld by the Court of Appeal (at [5]) which endorsed the approach in S C Prodal 94 SRL v Spiritis International NV [2003] EWHC 2756 (Ch) where Laddie J said: It is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to a co......
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