Factual and Procedural Background
The case involves two appeals by Company A against decisions and orders of Judge Neuberger relating to trade mark registrations in class 25 (clothing). The first appeal concerns Company A's application to register the mark "DU PONT," filed in January 1995, opposed by Company B. The Registrar initially rejected the opposition, but Judge Neuberger allowed Company B's appeal. Company A obtained leave to appeal this decision.
The second appeal relates to Company B's application to register the mark "S.T. DUPONT" (stylised) in the same class, which was opposed by Company A. The Registrar upheld the opposition, but Company B's appeal was successful before Judge Neuberger. Company A was granted leave to appeal this decision as well.
The appeals are interconnected with overlapping evidence. The parties agreed that if the first appeal succeeded, the second must also succeed, but disagreed on the converse. The appeals were heard consecutively. A procedural dispute arose regarding whether the appeals from the Registrar constituted rehearings or reviews; the judge ruled they were rehearings, a conclusion ultimately deemed irrelevant to the outcome.
Legal Issues Presented
- Whether the trade mark "DU PONT" is registrable under sections 9, 10, and 11 of the Trade Marks Act 1938, particularly considering its status as a common French surname and its capacity to distinguish goods in the UK.
- The proper interpretation and application of sections 9 and 10 regarding surnominal objections and distinctiveness of trade marks.
- Whether the use of "S.T. DUPONT" by Company B infringes or passes off on Company A's rights under the law of passing off as per section 5(4)(a) of the Trade Marks Act 1994.
- The procedural scope of appeals under section 18 of the Trade Marks Act 1938, specifically whether such appeals are rehearings or reviews and the principles governing admission of fresh evidence on appeal under CPR rule 52.11.
Arguments of the Parties
Appellant's Arguments (Company A)
- Contended that the judge erred in allowing Company B to amend their notice of opposition to raise a surnominal objection late in the proceedings and to introduce fresh evidence without permitting Company A to respond similarly or remit the matter to the Registrar.
- Argued that the trade mark "DU PONT" was capable of distinguishing Company A's goods under section 10 and should be registrable in Part B of the register despite being a common French surname.
- Submitted that the telephone directory guidelines used by the Registrar were not decisive and that the relevant test was the mark’s capacity to distinguish goods in the UK, considering all circumstances.
- Denied that Company B’s limited use of "S.T. DUPONT" in menswear amounted to a substantial reputation sufficient to establish a section 11 objection or passing off.
- Asserted that section 12(2) could not be used to register unused marks for goods in a different class and that Company A’s use was in fabric, not clothes.
- Maintained that appeals under section 18 of the 1938 Act are governed by CPR rule 52.11 and should be treated as reviews, limiting fresh evidence admission.
Appellee's Arguments (Company B)
- Opposed registration of "DU PONT" on the grounds that it was a common surname not adapted to distinguish goods under sections 9 and 10, and that its use would cause confusion under section 11 due to Company B’s prior reputation in "S.T. DUPONT".
- Argued for allowance of the late amendment and fresh evidence on appeal, contending that the Hearing Officer had erred in refusing permission to amend.
- Claimed that the similarity of the marks and Company B’s use of "S.T. DUPONT" created a likelihood of deception or confusion, justifying refusal of Company A's application under section 5(4)(a) of the Trade Marks Act 1994 based on passing off.
- Contended that appeals under section 18 of the 1938 Act are rehearings with broader discretion to admit fresh evidence, not limited reviews under CPR rule 52.11.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Ciba Trade Mark [1983] RPC 75 |
Revision of Registrar’s guidelines on surnominal objections and telephone directory thresholds. |
Referenced to illustrate evolution of guidelines and their non-decisive nature in registration decisions. |
| Al Bassam Trade Mark [1994] RPC 315 |
Guidance on surnominal objections and application of Registrar’s Practice Guide in registration. |
Quoted to emphasize that Practice Guide is a useful tool but not determinative in oppositions under section 10. |
| W & G du Cros Ltd.'s Applications (1913) 30 RPC 660 |
Principles on registration and distinctiveness of trade marks. |
Accepted as consistent with the test focusing on UK position for distinctiveness. |
| Bagots Hutton & Co. Ltd.'s Application (1916) 33 RPC 357 |
Similar principles on distinctiveness and registration. |
Considered to remain applicable despite section 31 of the 1938 Act. |
| Reddaway's Application (1927) 44 RPC 27 |
Standards for interference with Registrar’s decision on registration. |
Applied to confirm that court should not interfere unless Registrar was clearly wrong. |
| Impex Electrical Ltd. v. Weinbaum (1927) 44 RPC 405 |
Further authority on registration and distinctiveness criteria. |
Referenced alongside other cases to support legal principles. |
| Aristoc Ltd v Rysta Ltd [1945] 62 RPC 65 |
Definition and scope of “trade” in trade mark use. |
Applied to reject certain arguments on trade mark use in relation to goods. |
| Esso Trade Mark [1972] RPC 283 |
Consideration of trade mark use on similar but different goods. |
Used to support relevance of use on related goods for distinctiveness. |
| Laura Ashley Trade Mark [1990] RPC 539 |
Use of trade mark on different but related goods and its relevance. |
Applied to assess extrapolation of distinctiveness from one class of goods to another. |
| Bali Trade Mark [1969] RPC 472 |
Interpretation of section 11 regarding deception, confusion, and disentitlement to protection. |
Central to analysis of section 11 objection and its application to the facts. |
| Smith Hayden & Co's Application [1946] 63 RPC 97 |
Test for likelihood of deception or confusion under section 11. |
Quoted to clarify legal test for section 11 objections. |
| Bass, Ratcliff & Gretton v. Nicholson & Son Ltd. (1931) 48 RPC 227 |
Property rights in trade marks acquired by use prior to registration. |
Used to explain historical basis of trade mark rights and relevance to section 11. |
| Eno v. Dunn (1890) 7 RPC 311 |
Section 11’s purpose to protect the public from deception regardless of rival traders' rights. |
Applied to support the public protection rationale behind section 11. |
| A.G. Spalding & Bros v A.W. Gamage Ltd (1915) 32 RPC 273 |
Foundations of passing off and false representation. |
Used to articulate requirements for passing off in the second appeal. |
| Tanfern Limited v. Cameron-MacDonald [2000] 1 WLR 1311 |
Nature and scope of rehearing versus review on appeal. |
Referenced to clarify the procedural character of appeals under the 1938 Act. |
| Hertfordshire Investments Limited v. Bubb [2000] 1 WLR 2318 |
Principles governing admission of fresh evidence on appeal under CPR 52.11. |
Applied to frame the court’s approach to fresh evidence in trade mark appeals. |
| Hunt-Wesson Inc.'s Trade Mark Application [1996] 1 RPC 233 |
Criteria and approach to admitting fresh evidence on trade mark appeals. |
Used to support a more relaxed approach to fresh evidence in trade mark appeals. |
| Club Europe Trade Mark [2000] RPC 329 |
Discretion to admit fresh evidence and application of overriding objective. |
Applied to reinforce principles on fresh evidence in trade mark appeals. |
| Wunderkind Trade Mark [2002] RPC 45 |
Effect of CPR Part 52 on nature of rehearing and review in trade mark appeals. |
Used to explain that Part 52 changed terminology but not substantive approach to appeals. |
| Dyson Limited v. The Registrar of Trade Marks [2003] EWHC 1062 |
Application of CPR 52.11 to trade mark appeals and scope of rehearing/review. |
Referenced to support the procedural analysis of appeals under the 1994 Act. |
| Assicurazioni Generali SpA v. Arab Insurance Group [2002] EWCA Civ 1642 |
Approach of the Court of Appeal to appeals and interference with discretion. |
Used to explain the court’s reluctance to interfere absent wrong principles or plain error. |
| Banks v. Cox (17 July 2000) |
Principles relevant to admission of fresh evidence on appeal post-Part 52 CPR. |
Quoted to highlight flexibility afforded by Part 52 in admitting fresh evidence. |
Court's Reasoning and Analysis
The court examined the grounds of opposition to Company A’s application to register "DU PONT," focusing on whether the mark was adapted to distinguish goods under sections 9 and 10 of the Trade Marks Act 1938. It considered the procedural propriety of allowing Company B to amend its opposition notice late to include a surnominal objection and the admission of fresh evidence, concluding that the judge erred in reversing the Hearing Officer’s refusal to permit the amendment due to prejudice and delay concerns.
The court analysed the significance of the telephone directory evidence showing "DUPONT" as a common French surname and rejected the rigid application of Registrar’s guidelines as conclusive. It emphasised that the relevant inquiry was the mark’s capacity to distinguish goods in the UK, considering all circumstances, including use and reputation.
On the issue of use, the court distinguished between use of "DU PONT" in relation to fabric and clothes, concluding that while Company A had established distinctiveness in fabric, there was insufficient evidence of use on clothes. The court rejected Company A’s argument that such use should be presumed or extended by analogy.
Regarding the section 11 objection, the court analysed whether Company B’s limited use of "S.T. DUPONT" had acquired sufficient reputation to cause confusion or deception. It applied established legal principles from the Bali case and related authorities, concluding that Company B’s use was too limited to establish a real risk of deception or disentitlement to protection, thus the section 11 objection failed.
In the second appeal concerning passing off under the Trade Marks Act 1994, the court accepted that Company A had reputation and goodwill in "DU PONT" for fabrics and that the marks "DU PONT" and "S.T. DUPONT" were similar enough to cause confusion. The court found that Company B’s use of "S.T. DUPONT" on clothes was liable to be prevented by passing off, as it would imply association with Company A’s established mark, warranting refusal of registration.
Procedurally, the court considered the nature of appeals under section 18 of the 1938 Act and the application of CPR Part 52, particularly rule 52.11. It rejected the judge’s conclusion that appeals under the 1938 Act were rehearings unaffected by CPR 52.11, instead holding that the statutory provisions and CPR rules coexist, with appeals generally proceeding by way of review subject to limited exceptions. The court clarified principles governing admission of fresh evidence, noting a somewhat relaxed approach in trade mark appeals but emphasizing the need for proportionality and fairness.
Holding and Implications
The court SET ASIDE the judge’s order allowing the amendment of the opposition and introduction of fresh evidence concerning the surnominal objection, thereby causing the section 9 and 10 objections to fail. It held that the mark "DU PONT" was capable of distinguishing Company A’s goods under section 10, but Company A had not demonstrated use on clothes sufficient to justify registration in Part A or B for that class.
On the section 11 objection, the court REJECTED Company B’s claim of disentitlement to protection due to confusion, finding the use too limited to establish a real risk of deception.
Regarding the second appeal, the court ALLOWED the appeal in favor of Company A, restoring the Registrar’s decision to refuse registration of "S.T. DUPONT" due to liability under the law of passing off.
Procedurally, the court clarified that appeals under section 18 of the 1938 Act are generally reviews under CPR rule 52.11, with the court exercising appropriate discretion in admitting fresh evidence, balancing the interests of justice and procedural fairness.
The decision directly affects the registration status of the marks in question between the parties but does not establish new precedent beyond clarifying procedural and substantive principles in trade mark law appeals.