Sprints Ltd v Comptroller of Customs and Another
| Jurisdiction | UK Non-devolved |
| Judge | Lord Clyde |
| Judgment Date | 16 December 1999 |
| Neutral Citation | [1999] UKPC J1216-2 |
| Court | Privy Council |
| Docket Number | Appeal No. 45 of 1998 |
| Date | 16 December 1999 |
[1999] UKPC J1216-2
Privy Council
Present at the hearing:-
Lord Slynn of Hadley
Lord Mackay of Clashfern
Lord Jauncey of Tullichettle
Lord Hope of Craighead
Lord Clyde
[Delivered by Lord Clyde]
The appellant, which is a member of the companies known as the Bourgeon group, applied to the first respondent, who is the Comptroller of Customs in Mauritius, to have the name "Chipie" registered as a trade mark in Mauritius. The application was made before the Act No. 15 of 1993 came into operation and the relevant authority for registration of trade marks was still the Comptroller. The application was opposed by the second respondent, who is the registered owner of the trade mark "Chipie" in a considerable number of countries throughout the world, but not in Mauritius. The first respondent refused registration and the appellant appealed to the Supreme Court. That court refused the appeal and the matter has now come before their Lordships' Board.
The argument has concerned two particular provisions of the relevant law, sections 4(1) and 10 of the Trade Marks Act. Section 4 provides that an application for registration may be made by any person who has a right to use a trade mark. The phrase "trade mark" is defined and there is no doubt that the name "Chipie" falls within the definition. Section 10 prohibits the registration of a mark upon the ground among others, that the use of it "would by reason of its being calculated to deceive or otherwise" be disentitled to protection in a court. So it follows that a person may have a right to a trade mark, but not be able to achieve the registration of it. On the other hand if he has no right to the mark in question, then he is not entitled to apply for registration and any application which he seeks to make must fail. One situation where it may be found that the applicant does not have a right is where someone else has the right and the property in the trade mark and the applicant has no right derived from him, as by way of licence.
The Comptroller of Customs' decision in the present case was embodied in a letter dated 22nd September 1992. In that letter he stated his reasons for his decision in these terms:-
"(a) The opponents have proved by documentary evidence that the trade mark 'chipie' has been registered in many countries specially in France since 1967 and in UK since 1979,
(b) Copies of catalogues submitted to this office substantiate that the trade mark has been widely advertised since 1987,
(c) Your client has no right to use the said trade mark,
(d) He is not the owner of the trade mark,
(e) Registration of the trade mark in his favour would be inappropriate inasmuch as the trade mark is calculated to deceive.
(f) The trade mark, by reason of its being calculated to deceive, is disentitled to protection in a court."
It may be noticed that in an affidavit dated 5th February 1993 the Principal Customs and Excise Officer, a Mr. Macdoombe, stated that prior to 22nd September 1992 the second respondent furnished evidence which established that:-
"(a) the second respondent had been using the mark 'CHIPIE' extensively well before the applicant,
(b) that the second respondent has secured registration of the mark CHIPIE across the world including the United States, France Britain, Spain, Sweden, Bangkok and Korea,
(c) that the registration of the mark CHIPIE has been secured in relation to the same articles as those sought by the applicant,
(d) that on several occasions, the second respondent has contracted with local enterprises for the manufacture of articles bearing the name 'CHIPIE'."
He then set out the same conclusions as were contained in the letter in paragraphs (c) to (f).
The conclusion that the appellant had no right to or property in the mark relates to section 4. The conclusion appears to have followed from the finding that the second respondent had the right and property in the trade mark. The first question in the appeal is accordingly whether that finding was sound.
It should be borne in mind at the outset that what is in issue here is the right to use the mark in Mauritius. The application was for registration in Mauritius and it is in relation to that country that the problem of the right to use the mark has to be addressed. The reference to a right in a trade mark in section 4 is a reference to a common law right. So far as the law in that respect is concerned Lord Morris of Borth-y-Gest observed in BALI Trade Mark [1969] R.P.C. 472 at p. 489:-
"Before 1875, when registration of trade marks began, there could be property in a trade mark: the right of property in a distinctive mark was acquired by a trader merely by using it upon or in connection with his goods irrespective of the length of such user and without proof of recognition by the public as a mark distinctive of the user's goods: that right of property would be protected by an injunction restraining any other person from using the mark."
Their Lordships adopt that as an accurate statement of the position at common law. Accordingly what is required in the present case is evidence of user of the mark by the second respondents in Mauritius. Moreover while, as was indicated in the passage quoted, the length of the user may be immaterial this is particularly the case where the mark is already in use as a trade mark by a trader elsewhere in the world. Proprietorship of the mark can then be proved by a minimal user in the country where the mark is proposed to be registered. A limited user in the UK, even without any public user, has been sufficient to stop the registration in the UK of a mark owned by a foreign firm ( In the Matter of a Trade Mark of the New Atlas Rubber Co. Ltd. (1918) 35 R.P.C. 269). The general proposition is vouched by a number of cases in other jurisdictions, such as The Seven Up Company v. O.T. Ltd. (1947) 75 C.L.R. 203, 211, Thunderbird Products Corporation v. Thunderbird Marine Products Pty. Ltd. [1974] 131 C.L.R. 592, Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd. [1979] R.P.C. 410, Karu Pty. Ltd. v. Jose (1994) 30 I.P.R. 407, and Hong Kong Caterers Ltd. v. Maxim's Ltd. [1983] H.K.L.R. 287, 296.
It is evident from the material produced before the Comptroller that the second respondent had been using the trade mark "Chipie" in many countries throughout the world before the appellant began to use it in Mauritius. Indeed the second respondent produced a lengthy list of the registrations it had made of the mark in a wide range of countries. Of particular significance is the fact that these countries included several with which Mauritius has particularly close connections, such as the United Kingdom, France, South Africa and countries in the Far East. That user and those registrations related to the same kind of goods as those in respect of which the appellant was seeking to register the mark. The Comptroller of Customs was unquestionably entitled to hold as he did that the second respondent had been using the mark extensively well before the appellant.
The next question accordingly is whether there is evidence to prove at least a minimal user of the second respondent's mark in Mauritius. From the material which was placed before the Comptroller it is clear that labels displaying the name "Chipie" were sent to Mauritius by the second respondent and applied to garments manufactured in Mauritius by a firm called Cogimex (Mtius) Ltd. This was clearly done on a significant scale. Furthermore there was a number of invoices produced relating to sales transactions passing between the second respondent and Cogimex in the course of which the former used the name "Chipie". Mr. Rivalland stated on affidavit that Cogimex supplied the second respondent with "Chipie" trousers, jeans and jackets from 1987 to 1991. A question was raised by counsel for the appellants regarding the propriety of taking account of manufacturing work where such work was carried out within an exclusive export zone, that is to say a zone set apart for the purposes of fiscal provisions in which goods manufactured exclusively for the export market could be carried on. But that has not been presented as a live question in the present case and there is no finding that in fact the manufacture on which the second respondents found was conducted in such a zone. A broader issue was raised whether manufacture for export would qualify as a user for the relevant purpose. In that connection it was pointed out that there was no equivalent to section 31 of the Trade Marks Act 1938 in Mauritius. But in In re Evans Sons, Lescher and Webb Ltd. (1934) 51 R.P.C. 423 it was held that an intention to apply a mark to goods which were to be exported was sufficient to make the mark one which was used or proposed to be used for the purposes of registration in the UK, so that the fact that the goods in question were for export was recognised as not being of consequence even before the introduction of section 31. It appears that section 31 was rather to affirm the existing law than to innovate upon it Carnival Cruise Lines Inc. v. Sitmar Cruises Ltd. (1994) 120 A.L.R. 495, Gummow J. at p. 511.
Their Lordships are satisfied that the foregoing activities amounted to a user of the second respondent's mark in Mauritius since 1987, that is before the appellant began to use it, and that that user was quite sufficient to give the second appellant the right to the mark in Mauritius so as to make it impossible for the appellant to claim a right for the purposes of section 4(1). That the appellant has developed an association with the "Chipie" mark for itself since 1990 provides no counter to the second respondent's position. The rights of the legal owner of the mark cannot...
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