Yellow Bulldog Ltd v A P & Company Ltd

Hearing dates: 25 November 2020

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.

Introduction

This is an appeal by Yellow Bulldog Ltd (“YBL”) against the decision, dated 4 June 2020, of Beverley Hedley, the Hearing Officer for the Registrar of Trade Marks at the United Kingdom Intellectual Property Office.

The Hearing Officer's decision dealt with three applications for the registration of trade marks. One of the applications was made by a predecessor of YBL and the benefit of the application was assigned to YBL. Nothing turns on the fact of an assignment and, for simplicity, I will refer to this application as having been made by YBL. The second application was made by YBL itself, rather than by a predecessor. These two applications were opposed by A P & Co Ltd (“AP”). The third application was made by AP and was opposed by YBL.

The Hearing Officer upheld AP's opposition to the applications made by YBL and YBL's applications for the registration of trade marks were refused. The hearing officer did not uphold YBL's opposition to the application made by AP and AP's application for the registration of a trade mark succeeded.

YBL now appeals to the High Court pursuant to section 76(2) of the Trade Marks Act 1994 and contends that the Decision of the Hearing Officer should be set aside and that the court should determine that YBL's applications for the registration of trade marks should succeed and the application by AP for registration of a trade mark should fail.

Mr Muir Wood appeared on behalf of YBL and Mr Marsden appeared on behalf of AP. Both Mr Muir Wood and Mr Marsden had appeared at a hearing before the Hearing Officer on 6 November 2019.

YBL's applications for registration

On 29 March 2018, YBL applied to register the following trade mark:

Trade Mark No: 3300610 (“610”)

Class 35: Retail services in connection with the sale of games software, video game programs, video game software, bags adapted to carry video apparatus, computer games programs downloaded via the internet [software], computer games programs [software], computer games software, video game computer programs, video game cartridges, headsets, wireless headsets, batteries, battery charges, cd's. dvd's, mugs, cups, stationery, figurines, bags, holdalls, wallets, clothing, footwear and headwear, t-shirts, caps, video game joysticks, video games apparatus, role playing games, hand held units for playing video games, hand held video games, handheld computer games, hand-held computer games, toys and playthings.

On 26 June 2018, YBL made a second application to register the following trade mark (the mark is identical to the above but the retail services in class 35 differ):

Trade Mark No: 3320527 (“527”)

Class 35: Retail store services, including online retail services, in connection with candles, special occasion candles, key rings (made of metal), metal statuettes, figurines (of common metal), video games, video game software, computer games, CDs, DVDs, battery charging equipment, disk storage wallets, remote control devices, magnets, gaming peripherals and accessories, cases and covers for mobile phones, tablets, laptop computers and netbooks, lap top bags, lanyards (straps) for mobile phones, Christmas lights, precious metals and their alloys, jewellery, precious and semi-precious stones, horological and chronometric instruments, cufflinks, key chains, coins, clocks and watches, decorative key rings, paper and cardboard, printed matter, bookbinding material, photographs, stationery and office requisites, except furniture, adhesives for stationery or household purposes, drawing materials and materials for artists, paintbrushes, instructional and teaching materials, plastic sheets, films and bags for wrapping and packaging, printers' type, printing blocks, stickers, transfers, posters, notebooks and journals, luggage and carrying bags, suitcases, bags, drawstring bags, messenger bags, travel bags, weekend bags, shopping bags, hiking bags, cosmetic bags, wash bags, hand bags, gym bags, canvas bags, school bags, tote bags, bum bags, game bags, sports bags, leather bags, backpacks, metal and plastic luggage tags, leather luggage straps, wallets, purses, credit card holders, leather key rings, costumes for animals, statues, figurines, works of art and ornaments and decorations made of plastic or wood, storage units, plastic key rings, coat hooks, non-metallic key rings, statues, figurines, plaques and works of art made of glass, gardening articles, tableware, cookware and containers, glasses, drinking vessels and barware, coin banks, articles for animals and pets, cups, mugs, plastic drink coasters, bottle openers, coasters, cookie jars, incense burners, statuettes, clothing, footwear and headgear, wristbands, jumpers, socks, hats, t-shirts, bathrobes, slippers, caps, beanies, snapbacks, hoodies, onesies, badges for wear, novelty badges, charms (other than for jewellery, keys, rings, or chains), carpets, rugs and mats, artificial ground coverings, floor mats, floor mats made of rubber, sporting articles and equipment, festive decorations and artificial Christmas trees, toys, games, playthings and novelties, video game apparatus, Christmas tree ornaments, Christmas baubles, snow globes, plush toys, peripherals and controllers for game consoles, arcade game machines, and miniature arcade game machines.

In due course, AP opposed YBL's applications. In this judgment, all references to sections are to sections of the Trade Marks Act 1994. AP relied on the absolute ground for refusal in section 3(6) and the relative ground for refusal in section 5(4)(a).

As will be seen, the Hearing Officer upheld AP's opposition pursuant to section 5(4)(a) and she then considered the opposition pursuant to section 3(6) in the light of that conclusion. Accordingly, I will refer to the opposition under section 5(4)(a) before I refer, briefly, to the opposition under section 3(6).

In relation to its opposition pursuant to section 5(4)(a), AP contended that it had used the sign GEEKCORE throughout the UK since November 2014. AP said that it had used its sign in relation to:

“Retail and wholesale services including on-line and mail order retail and wholesale services in connection with the sale of video games, video games cartridges, video game software, video game apparatus, gamin apparatus and instruments, computer games, computer games software, handheld video games, handheld computer games, headsets for video and computer games, batteries, battery charges, compact discs, digital versatile discs, audiovisual recordings, cases for smartphones and tablet computers, clothing, footwear and headgear, toys, games, playthings, watches, ties, gloves, cufflinks, fancy dress costumes, jewellery, bags, wallets, purses, swimwear, electronic gadgets, usb drives, lighting equipment and apparatus, magazines, comics, printed matter, books, stationery, Christmas decorations, mugs, textile goods, blankets, rugs, towels, bedding, linen, kitchenware products, household and kitchen utensils, cutlery, office equipment, office desk toys and gadgets, posters, stickers, umbrellas, key rings, novelty gift items, food and drink, alcoholic beverages, board games, figurines, plush toys, biscuit containers, cups, corkscrews, cooking apparatus and instruments.”

AP contended, for the purposes of section 5(4)(a), that use by YBL of its proposed trade marks would lead to misrepresentation and damage to the goodwill of AP's business by virtue of loss of sales.

In relation to its opposition pursuant to section 3(6), AP referred to earlier dealings between YBL and AP and asserted that YBL had been aware of AP's sign when it applied for registration of its suggested trade marks and this amounted to bad faith on the part of YBL. There was evidence before the Hearing Officer as to the earlier dealings between YBL and AP. The Hearing Officer dealt with the opposition pursuant to section 3(6) after she had dealt with the opposition under section 5(4)(a). She held that it was not necessary to consider the opposition pursuant to section 3(6) but she expressed the view that the opposition under section 3(6) did not have any stronger prospects of success than the opposition under section 5(4)(a). If she had not upheld the opposition pursuant to section 5(4)(a), she would not have upheld the opposition pursuant to section 3(6). On YBL's appeal against the Hearing Officer's conclusion as to section 5(4)(a), AP no longer seeks to rely on its earlier opposition under section 3(6) and it is not necessary for me to refer any further to the opposition under section 3(6), or the Hearing Officer's findings in relation to it, for the purpose of dealing with YBL's appeal.

YBL filed a counterstatement in relation to AP's opposition to YBL's applications for registration. YBL did not admit that AP had the requisite goodwill for the purposes of section 5(4)(a) or that there would be...