Tripadvisor LLC v Handsam Ltd

JurisdictionEngland & Wales
JudgeMr Justice Warren
Judgment Date07 July 2016
Neutral Citation[2016] EWHC 1659 (Ch)
CourtChancery Division
Docket NumberCase No: CH-2016-000014
Date07 July 2016

[2016] EWHC 1659 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

7 Rolls Buildings

Fetter Lane,

London EC4A 1NL

Before:

Mr Justice Warren

Case No: CH-2016-000014

Between:
Tripadvisor LLC
Appellant/Opponent
and
Handsam Limited
Respondent/Applicant

Barbara E Cookson ( Solicitor Advocate of Filemot Technology Law Ltd) for the Appellant/Opponent

Jonathan Moss (instructed by Counterculture Partnership LLP) for the Respondent/Applicant

Hearing date: 21 April 2016

Mr Justice Warren

Introduction

1

This is an appeal by the Appellant/Opponent (" TripAdvisor") against the decision dated 15 December 2015 of Mr Oliver Morris acting as a Hearing Officer of the Trade Mark Registry (" the Decision"). Mr Morris held that the logo mark of the Respondent/Applicant (" Handsam") for 'handsam Schooltripsadvisor' should be registered for certain goods and services on the ground that there was no confusion with TripAdvisor's marks. He upheld the opposition in relation to other goods and services.

2

References to paragraph numbers in the format [n] are to the paragraphs of the Decision unless otherwise appears.

3

The relevant marks are set out in [1] and [3] and appear below. I will refer to the 'handsam Schooltripsadvisor' mark as "the Handsam mark".

TRIPADVISOR

4

Handsam applied for registration of the Handsam mark for the following goods and services:

Class 16: Magazines; Books; Leaflets; Printed guides; Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.

Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.

Class 41: Advisory services relating to education; Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.

Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.

5

Mr Morris' conclusions were as follows:

i) The opposition succeeded in respect of:

Class 16: Magazines; Books; Leaflets; Printed guides.

Class 41: Advisory services relating to the organisation of events; Advisory services relating to the organisation of field trips and visits.

ii) But the opposition failed in respect of:

Class 16: Printed manuals; Printed matter for educational purposes; Teaching materials for education; Printed matter for instructional purposes.

Class 35: Business advice; Business management advisory services; Advice relating to business information systems; Consultancy relating to business management; Business advisory services for educational establishments.

Class 41: Advisory services relating to education.

Class 45: Consultancy services relating to health and safety; Information services relating to health and safety; Fire safety consultancy services.

The principles applicable on appeal

6

The relevant applicable principles on this appeal are well known. Usually, it will be necessary to show that the hearing officer made a distinct and material error of principle in making his decision or that it was clearly wrong, that is to say a decision which no reasonable hearing officer could have reached. I must be circumspect in the way indicated in the case-law some of which I mention briefly:

i) Digipos Store Solutions Group Limited v. Digi International Inc, a decision of Daniel Alexander QC sitting as the appointed person. He referred to the need for a distinct and material error of principle in the decision in question or the need to show that the hearing officer was clearly wrong. He set out what Robert Walker LJ (as he then was) had said in Reef Trade Mark [2003] RPC 5 at [28]:

"…an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance to interfere in the absence of a distinct and material error of principle."

7

Mr Alexander then went on to say this:

"….. As Lord Hoffmann said in Biogen v. Medeva [1997] RPC 1 at [45], appellate review of nuanced assessments requires an appellate court to be very cautious in differing from a judge's evaluation. In the context of appeals from the Registrar relating to section 5(2)(b) assessing similarities between marks, attributing too much or too little discernment to the average consumer or giving too much or too little weight to certain factors in the multi-factorial global assessment are not errors of principle warranting interference."

8

And so an appeal is not, at least ordinarily, to be treated as a rehearing rather than a review.

9

Further, in Fine & Country Ltd v Okotoks Ltd [2014] FSR 11, Lewison LJ reiterated the great reluctance that appellate courts should have in overturning multi-factorial assessments made by first instance judges, saying this at [50]:

"The Court of Appeal is not here to retry the case. Our function is to review the judgment and order of the trial judge to see if it is wrong. If the judge has applied the wrong legal test, then it is our duty to say so. But in many cases the appellant's complaint is not that the judge has misdirected himself in law, but that he has incorrectly applied the right test. In the case of many of the Grounds of Appeal this is the position here. Many of the points which the judge was called upon to decide were essentially value judgments, or what in the current jargon are called multi-factorial assessments. An appeal court must be especially cautious about interfering with a trial judge's decisions of this kind…"

10

Lewison LJ was dealing with very different subject matter from the present case, but what he said applies with even greater force to an appeal from the registry to the High Court than it does to appeals from a lower court to the Court of Appeal.

Section 5 Trademarks Act 1994

11

The relevant parts of section 5 Trademarks Act 1994 (headed Relative grounds for refusal of registration) are as follows:

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

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

(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.

(3) A trade mark which—

(a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."

Preliminary points

12

The first preliminary point is this. Although the complaint does not feature in the Grounds of Appeal, Ms Cookson's skeleton argument describes the errors of principle which she asserts were made by Mr Morris, saying that "In essence, the Hearing Officer seems to have prejudged the appeal and determined its likely success at paragraph 10". What Mr Morris said at [10] was this:

"Whilst some of the other goods and services of the earlier mark may be closer (some are even identical), when one bears in mind the reputation of the earlier mark(s), the above term is likely to represent where the opponent has the greatest prospect of success. Of course, I will return to the other goods and services later and explain why the opposition would succeed or fail, as the case may be."

13

I fail to understand how that can be said to be prejudging anything. I disregard this pejorative, and incorrect, description of Mr Morris' full and careful reasoning (without myself prejudging whether that reasoning was flawed in some way).

14

The second preliminary point is that the Grounds of Appeal appear to introduce new evidence in the form of a more recent screen-shot of TripAdvisor's webpage. It is entirely unclear to me why this has been added. In any case, Mr Moss objects to its inclusion since it could easily have been adduced at the hearing. There is not, in any case, any application to me to allow this page in as new evidence. It is clearly new evidence, in spite of suggestions to the contrary in correspondence. I ignore it.

The Grounds of Appeal

15

There are, essentially, two grounds of appeal by TripAdvisor relating to the allowed goods and services alleging errors of law by Mr Morris in relation to section 5(2)(b) and section 5(3) Trade Marks Act 1994. In summary it is said that Mr Morris failed to conduct the necessary global assessment required by section 5(2) and that he incorrectly applied the case law when considering the link necessary to bring the opposition within section 5(3). There is no appeal against the decision rejecting claims of passing-off within section 5(4) and a claim of bad faith within section 3(6). There is no cross-appeal relating to the disallowed goods and services.

Section 5(2): no global assessment

16

It has not been altogether easy for me to appreciate what points are live or not. The Grounds of Appeal are quite extensive but Ms Cookson's skeleton argument does not address all of those Grounds and her oral submissions had a different focus and, likewise, did not address all of the Grounds of Appeal. I do not believe that I was actually taken to the Grounds of Appeal at the hearing, and only briefly to the skeleton...

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