Wineapp Ltd v Benedict Johnson
| Jurisdiction | England & Wales |
| Judge | Mr Justice Edwin Johnson |
| Judgment Date | 21 March 2022 |
| Neutral Citation | [2022] EWHC 620 (Ch) |
| Docket Number | Case No: CH-2021-000144 |
| Court | Chancery Division |
[2022] EWHC 620 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
APPEALS (ChD)
IN THE MATTER of an Appeal by the Appellant from the Decision of June Ralph,
Hearing Officer, Intellectual Property Office, dated 26th May 2021 in Trade Mark
Opposition No. OP000418626
The Rolls Building
7 Rolls Buildings
Fetter Lane
London, EC4A 1NL
THE HONOURABLE Mr Justice Edwin Johnson
Case No: CH-2021-000144
Chris Pearson (instructed by Seddons Solicitors) for the Appellant
Paul Harris (instructed by Dehns Solicitors) for the Respondent
Hearing date: 8 th March 2022
(Remote hearing by MS Teams)
Approved Judgment
Introduction
This is an appeal against the decision of the Hearing Officer (Ms. June Ralph) in this matter dated 26 th May 2021.
On 26 th September 2019 the Respondent to this appeal, Benedict Johnson (“the Respondent”) applied to register the trade mark which is set out on the left hand side of paragraph 6 below. The mark was published in the Trade Marks Journal on 11 th October 2019 in class 43 for Sommelier services.
On 4 th December 2019 the Appellant in this appeal, Wineapp Limited (“the Appellant”), opposed the application under section 5(4)(a) of the Trade Marks Act 1994. The Appellant opposed the application on the grounds that the Respondent's mark and services amounted to passing off. The Appellant relied upon the unregistered mark, which is set out on the right hand side of paragraph 6 below. The Appellant's case was that it had used this mark in its business since November 2018.
By her decision (“the Decision”) the Hearing Officer decided that the opposition of the Appellant failed, and that the application could proceed registration. The Decision was made without an oral hearing, on the papers in the application.
References to Paragraphs in this judgment are, unless otherwise indicated, references to the paragraphs of the Decision. Italics have been added to quotations.
The marks in issue
The marks in issue are as follows:
Representation
| Applicant's mark | Opponent's sign |
 |  |
On the hearing of the appeal the Appellant was represented by Chris Pearson, counsel. The Respondent was represented by Mr. Harris, senior partner in the Respondent's solicitors (Dehns). I received skeleton arguments from both advocates. I am most grateful to the advocates for their assistance on the hearing of the appeal.
The evidence before the Hearing Officer
The evidence before the Hearing Officer, filed by the parties, was as follows:
(1) A witness statement of Marco Nardone, a director and chief executive of the Appellant, dated 30 th July 2020.
(2) A short witness statement in response of Benedict Johnson, the Respondent and director of WinesApp Limited, dated 1 st December 2020.
(3) A second witness statement in reply of Marco Nardone, dated 4 th February 2021.
Subsection (4), in its material part, and subsection (4A) of Section 5 of the Trade Marks Act 1994 (“the Act”) provide as follows:
“(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met,…..”
“A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.
(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.”
Section 2 of the Act provides as follows:
“(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.
(2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.”
Mr. Harris emphasized to me in his oral submissions that the present case is a case brought by the Appellant in the tort of passing off. It is not a claim for infringement of a trade mark, in which remedies are sought under the Act. I accept the point. I am not dealing with a claim of infringement of a registered trade mark. The question of the materiality of this point to what I have to decide is a question to which I return later in this judgment.
The Decision
In determining whether the Appellant had made out its case in passing off, the Hearing Officer directed herself by reference to the well-known statement of the three elements of the tort made by Lord Oliver in the Jif Lemon case ( Reckitt & Colman Products Ltd v Borden Inc. (No. 3) [1990] 1 WLR 491), at 499D-H:
“Neither the appellants nor the respondents contend that the principles of law are in any doubt. The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”
In Paragraph 16 the Hearing Officer quoted the following summary of the three essential requirements of the tort of passing off, as set out in Discount Outlet v Feel Good UK [2017] EWHC 1400 IPEC. Sitting as a Deputy Judge of the High Court, Her Honour Judge Melissa Clarke said this, at [55]:
“55. The elements necessary to reach a finding of passing off are the ‘classical trinity’ of that tort as described by Lord Oliver in the Jif Lemon case ( Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation. The burden is on the Claimants to satisfy me of all three limbs.”
In Paragraph 17 the Hearing Officer went on to direct herself with regard to establishing the likelihood of deception, by reference to the following guidance provided by Halsbury's Laws of England, Volume 97A (2012 Reissue), at paragraph 309:
“To establish a likelihood of deception or confusion in an action for passing off where there has been no direct misrepresentation generally requires the presence of two factual elements:
(1) that a name, mark or other distinctive feature used by the plaintiff has acquired a reputation among a relevant class of persons; and
(2) that members of that class will mistakenly infer from the defendant's use of a name, mark or other feature which is the same or sufficiently similar that the defendant's goods or business are from the same source or are connected.
While it is helpful to think of these two factual elements as successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to:
(a) the nature and extent of the reputation relied upon;
(b) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business;
(c) the similarity of the mark, name etc. used by the defendant to that of the plaintiff;
(d) the manner in which the defendant makes use of the name, mark etc. complained of and collateral factors; and
(e) the manner in which the particular trade is carried on, the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances.”
In assessing whether confusion or deception is likely, the court attaches importance to the question whether the defendant can be shown to have acted with a fraudulent intent, although a fraudulent intent is not a necessary part of the cause of action.”
This paragraph is now paragraph 636 in the 2021 reissue of Volume 97A in Halsbury's Laws. The two...
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