Sunrider Corporation (t/a Sunrider International) v Vitasoy International Holdings Ltd

Following the judgment which I handed down on 22 January 2007, I now need to deal with the relief which ought to be granted. I have received some further written submissions.

The first issue relates to the extent to which the VITALITE class 32 mark should be allowed to stand. It is accepted by Mr Onslow for Vitasoy that both herbal drinks and syrups (or other preparations) for making herbal drinks should remain in the specification. In the light of observations I had made in my draft judgment (which did not appear in the final judgment) Mr Malynicz says that syrups which are not for making into beverages at all should also be allowed to remain. Whilst not seriously challenging the view that such a syrup is not similar to a drink within the VITA class 32 specification, Mr Onslow submits that such a syrup is not within class 32 in the first place and therefore such a syrup should not be placed in the VITALITE class 32 specification.

The basis for that submission is that class 32 is concerned with drinks and preparations for making drinks. A syrup which is not one to be used for making drinks could not be within “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”. Mr Onslow gives examples of various products which might be thought of as syrups and places them in other classes: thus syrups for cough medicines go in class 5; honey and treacle go in class 30, together with “sauces (condiments)” which would take in maple syrup; jams go in class 29; and malt extract in class 5. He notes that there is nothing in the evidence about this at all.

Mr Malynicz says that there is no “right” class for syrups (ie syrups other than for making beverages) at all. If syrups for making herbal drinks are within class 32, there is, he says, nothing wrong with leaving syrups as a whole in that class as there is no self-evidently better class.

The real question it seems to me is not the slightly abstract question whether a syrup other than for making a beverage could ever be placed in class 32, but whether the original, wide, VITALITE class 32 specification includes such a syrup. If it does not, then such a syrup must remain outside any revised specification and care must be taken to ensure that the drafting of the new specification does not accidentally bring in something which was previously not included. Conversely, if such a syrup is included in the original specification, it should remain included if there is no risk of confusion of that syrup with any of the VITA class 32 drinks (in which context my draft judgment indicated my view that there was no risk of confusion).

I do not propose to decide whether class 32 could ever properly include a syrup other than for making into a drink. What I do decide however is that such a syrup does not fall into the original VITALITE class 32 specification. Both references in the VITALITE class 32 specification are juxtaposed with reference to drinks (“syrup” and “preparations for making drinks”; “nutritional syrups” and “herbal drinks”). The entire specification is qualified by “all included in class 32”. Even if it is possible for a syrup to be included in class 32, that would be quite exceptional - a syrup does not naturally fall within any of the words of class 32, in particular not within the words “syrups or other preparations for making beverages”. There is plenty of scope for the application of the original VITALITE class 32 specification to syrups without the need to include syrups other than those for making beverages in apparent contradiction of the closing words of class 32.

In my judgment, therefore, the VITALITE class 32 specification should be restricted to

“syrups and other preparations for making herbal drinks, all being nutritional supplements in liquid form; herbal drinks, nutritional syrups for making herbal drinks, all being for sale on a one to one basis directly to consumers and not through retain outlets; all included in class 32”.

The next issue is whether I should make a declaration of invalidity the result of which will be to leave in place the specification which I have just set out, or whether I should give Sunrider the option of surrendering its mark to the extent necessary to conform with that specification.

Mr Malynicz suggests that it is commonplace to make the sort of order which he now seeks, that is to say, to allow surrender of the mark with a proviso for a declaration of invalidity if such surrender is not effected within a stated time. That is what Mr Foley did in the present case; and, he says, it is what Mr Richard Arnold QC did in Hormel Foods Corp v Antilles Landscape Investments NV [2005] EWHC 13, [2005] RPC 28 at para [132]. However, what happened in that case was that the defendant, in closing submissions, said that it was prepared to surrender the offending part of the registration and, on that basis, the claimant through its counsel indicated that it would not pursue its claim for invalidity of that part. It dos not support the proposition that a person can, by surrendering part of his registration, defeat a subsisting claim for invalidity.

Whether or not I have power to impose on Vitasoy an option for Sunrider to effect a partial surrender and make a declaration only if it does not, it is a power which I do not think it correct to exercise in the present case. In relation to class 32, in contrast with classes 5 and 29, Mr Foley himself does not appear to have given Sunrider the option to surrender, although it is open to me to adopt a different course in allowing, as I do, Sunrider’s appeal in part. However, the possibility of surrender is one which has been raised only following my judgment. Vitasoy has succeeded in resisting the appeal – and thus in upholding in part Mr Foley’s decision on invalidity – and should be entitled to a declaration which reflects that. Mr Onslow has shown in his written submission why there might, in theory, be a difference in practical consequences. If and to the extent that there is in the present case any difference in the practical results of surrender and declaration of invalidity, then I see no reason why Vitasoy should not be entitled to the full benefit of the decision which it has obtained. If there are no differences in practice on the facts of this case, then Sunrider is not in any way disadvantaged by a declaration as compared with a surrender.

I would ask counsel to draft a Minute of Order reflecting this judgment and my earlier judgment, together with the costs order that I made at the last hearing.