Rousselon Freres Et CIE v Horwood Homewares Ltd

This appeal is from the decision of Mr Mike Foley, the Hearing Officer of the Comptroller-General of Patents, Designs and Trade Marks, dated 1 August 2007 (“the Decision”) following a hearing in the early part of 2007. Mr Foley dismissed the consolidated applications made by the Appellant (“RF”) to invalidate two United Kingdom trade marks registered in the name of the Respondent (“HH”). These registered trade marks (“HH’s Marks”) are as follows:

The marks, in each case, are for the following:

RF’s applications for invalidity are based on three earlier United Kingdom registered trade marks dating from 1956, 1969 and 1990 each of which comprised of or included the word SABATIER (“RF’s Marks”). RF contends that Mr Foley was wrong to dismiss its applications. It submits that pursuant to section 5(2)(b) Trade Marks Act 1994 (“TMA”), there has at all times existed a likelihood of confusion between HH’s Marks and RF’s Marks, in particular RF’s registration for the SABATIER word mark and that, pursuant to section 47(2)(a) TMA, HH’s marks should be declared invalid.

By way of background, I mention that there is an association one of whose purposes is to protect, for its members, the use of any mark which contains the word sabatier. This is “Association des Proprietaires des Marques de Coutellerie incorporant le mot Sabatier” which translates as “Association of Proprietors of Cutlery Trade Marks incorporating the word Sabatier”. I shall call it “the Association”. In his skeleton argument for RF, Mr Vanhegan says this:

“The Association was formed by successors to the Sabatier family which started making and selling cooks’ knives in Thiers, France. Successive generations across several branches of the family continued to trade in Thiers, leading to independent use of the SABATIER name by a number of different businesses. The Association was formed in 1979 for the purpose of protecting the SABATIER name and conserving its distinctive character.”

That reflects the evidence recited by Mr Foley in paragraphs 9 and 10 of the Decision which does not appear to have been challenged.

It is to be noted that the Association members are independent of each other and, apart from their common interest in preventing others from using the name Sabatier, there is no commercial relationship between them. It is also to be noted that RF’s Marks are not collective or certification marks (as governed by section 49 and Schedule 1 and by section 50 and Schedule 2 TMA respectively).

RF is a member of the Association. It has not always been a member, but is a successor in title to marks belonging to Association members.

RF’s Marks are the following:

It is immediately apparent that the only possibility of confusion arises out of the presence of the word SABATIER in the various marks. In all other respects the marks are, as Mr Richard Arnold QC (who appears for HH) submits, completely different.

Section 5 TMA (headed “Relative grounds for refusal of registration”) provides as follows:

“5. - (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected

(2)

A trade mark shall not be registered if because –

(a)

……………

(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.”

An earlier trade mark is defined in section 6 TMA as follows:

“6. - (1) In this Act an "earlier trade mark" means –

(a)

a registered trade mark, international trade mark (UK), Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks”

Section 47 TMA (headed “Grounds for invalidity of registration”) provides as follows:

“47. - (1) …………

(2)

The registration of a trade mark may be declared invalid on the ground –

(a)

that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain……….”

I should also mention:

In paragraph 61 of the Decision, Mr Foley sets out (in a way which is standard in decisions of this sort) the guidance which he derives from the case law of the ECJ in Sabel BV v Puma AG [1998] RPC 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] 45 FSR. 77 and Marca Mode CV v Adidas AG & Adidas Benelux BV [2000] ETMR. 723. He then sets out the conclusions to be drawn from that case law: I do not think that there is anything contentious about his conclusions so far as they go which are to the following effect:

From these cases, one can see that non-origin confusion is not enough to establish a likelihood of confusion; rather, there has to be a likelihood of confusion about the origin of the goods or services.

It does not appear that, before giving his decision, Mr Foley was referred to two other decisions of the ECJ on which Mr Vanhegan now relies, namely Medion v Thomson Multimedia [2006] ETMR 13 and OHIM v Shaker di L Laudato & Co Sas (C-334/05 P, 12 June 2007).

The facts of Medion appear sufficiently from the Judgment of the Court to the following effect. Medion is the owner in Germany of the trade mark LIFE, registered on 29 August 1998, for leisure electronic devices. It has a multimillion euro turnover per annum in the manufacture and marketing of these products. Thomson belongs to one of the world’s leading companies in the leisure electronic devices sector. It markets some of its products under the name ‘THOMSON LIFE’. In July 2002, Medion brought an action before the Landgericht (Regional Court) Düsseldorf for trade mark infringement. It requested that Thomson be prevented from using the sign ‘THOMSON LIFE’ to designate certain leisure electronic devices. The Landgericht Düsseldorf rejected the application on the ground that there was no likelihood of confusion with the mark LIFE. Medion appealed to the Oberlandesgericht (Higher Regional Court) Düsseldorf, seeking to have Thomson prevented from using the sign ‘THOMSON LIFE’ for television sets, cassette players, CD players and hi-fi systems.

After setting out that background, the Judgment goes on to explain the position of the referring court in relation to Article 5(1)(b) of the EC Directive 89/104 [Article 5 of the Directive is reflected in section 10 of the addressing the question of infringement. However the same question as to likihood of confusion falls to be determined in Artcle 4(4)(b) of the Directive and section 5(2) of TMA] and to describe ‘Prägetheorie’ (the theory of the impression conveyed) the application of which had resulted in the current case-law of the Bundesgerichtshof (Federal Court of Justice). According to that case-law, in order to appreciate the similarity of the sign at issue, it is necessary to consider the overall impression conveyed by each of the two signs and to ascertain whether the common component characterises the composite mark to the extent that the other components are largely secondary to the overall impression. There will be no likelihood of confusion if the common component merely contributes to the overall impression of the sign. It will not matter whether the trade mark incorporated still has an independent distinctive role in the composite sign. According to the Oberlandesgericht, in the sector of the goods at issue in the proceedings before it, prominence is generally given to the name of the manufacturer. More specifically, in the main proceedings the name of the manufacturer ‘THOMSON’ contributes in an essential manner to the overall impression conveyed by the sign ‘THOMSON LIFE’. The normal distinctive character attaching to the element ‘LIFE’ is not sufficient to prevent the name of the manufacturer ‘THOMSON’ from contributing to the overall impression conveyed by the sign.

However, as the Judgment notes, the referring court recognises that the current case-law of the Bundesgerichtshof is not beyond debate. A different approach is favoured by some writers. It is in fact in line with the previous case-law of the Bundesgerichtshof itself, according to which likelihood of confusion must be found where the identical part has an independent distinctive role in the contested sign, is not absorbed by it, and is not relegated to the point of ceasing to call to mind the registered mark. The Oberlandesgericht itself claims that if this theory is to be applied to the main proceedings it must be found that there is a likelihood of confusion as the mark LIFE still has an independent distinctive role in the mark ‘THOMSON LIFE’.

Finally, as the Judgment notes, it is in doubt as to how, when applying the criterion of the overall impression conveyed by the signs, it is possible to prevent a third party from appropriating a registered mark by adding their company name. In that context the Oberlandesgericht Düsseldorf decided to stay the proceedings and to refer the question to the Court of Justice for a preliminary ruling.

The question for the Court, as formulated in the Judgment, was this:

“whether Article 5(1)(b) of the directive is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another and a registered mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, has an independent distinctive role therein.”

That question has, of course, a resonance in the present case where HH’s Marks are a juxtaposition of another name (Judge/Stellar – albeit not a company name) and a registered mark which has normal distinctiveness (SABATIER – which according to RF, has the necessary distinctiveness).

The answer given by the ECJ is found at paragraphs 23 to 37 of the Judgment. The theory known as ‘Prägetheorie’ is rejected and the reply to the question is provided at paragraph 37:

“Accordingly, the reply to the question posed must be that Article 5(1)(b) of the directive is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein”

The Court does not, in this answer, say that the presence of an earlier mark in the contested mark necessarily means there is a likelihood of confusion; the question asked did not require it to do so.

However, it is necessary for the purposes of my own judgment to set out the reasoning of the Court in order to understand the implications of the decision for the present case. It is found in paragraphs 23 to 36:

“23 The essential function of the trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or service from others which have another origin (see, in particular, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28, and Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, paragraph 20).

24

The 10th recital in the preamble to the Directive emphasises that the protection afforded by the registered trade mark has the aim of guaranteeing the trade mark as an indication of origin and that in the case of similarity between the mark and between the sign and goods or services, the likelihood of confusion constitutes the specific condition for protection.

25

Article 5(1)(b) of the directive is thus designed to apply only if, by reason of the identity or similarity both of the marks and of the goods or services which they designate, there exists a likelihood of confusion on the part of the public.

26

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion within the meaning of this provision (see, in particular, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17).

27

The existence of a likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22; Lloyd Schuhfabrik Meyer, cited above, paragraph 18, and Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40, in addition to, in relation to Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), drafted in terms substantially identical to those of Article 5(1)(b) of the directive, the order of 28 April 2004 in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, paragraph 28).

28

The global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, in particular, SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and Matratzen Concord, paragraph 29).

29

In the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Matratzen Concord, paragraph 32).

30

However, beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element.

31 In such a case the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

32

The finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark.

33

If such a condition were imposed, the owner of the earlier mark would be deprived of the exclusive right conferred by Article 5(1) of the directive even where the mark retained an independent distinctive role in the composite sign but that role was not dominant.

34

This would be the case where, for example, the owner of a widely-known mark makes use of a composite sign juxtaposing this mark and an earlier mark which is not itself widely known. It would also be the case if the composite sign was made up of the earlier mark and a widely-known commercial name. In fact, the overall impression would be, most often, dominated by the widely-known mark or commercial name included in the composite sign.

35

Thus, contrary to the intention of the Community legislator expressed in the 10th recital in the preamble to the directive, the guarantee of the earlier mark as an indication of origin would not be assured, even though it still had an independent distinctive role in the composite sign.

36

It must therefore be accepted that, in order to establish the likelihood of confusion, it suffices that, because the earlier mark still has an independent distinctive role, the origin of the goods or services covered by the composite sign is attributed by the public also to the owner of that mark.”

Medion was referred to in OHIM v Shaker di L Laudata & C Sas. This case concerned a community trade mark and the effect of Article 8 of Council Regulation 40/94 concerning, again, likelihood of confusion. The Judgment contains a useful summary, at paragraphs 31 to 36, of certain aspects of the settled law concerning confusion and the need for a global appreciation of the existence of the likelihood of confusion. I do not need to set those out. But I should set out paragraphs 41 and 42:

“41

It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see order in Matratzen Concord v OHIM, paragraph 32; Medion, paragraph 29).

42

As the Advocate General pointed out in point 21 of her Opinion, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.”

I also mention at this stage the decision in Fiorelli Trade Mark [2007] RPC 18, a decision of Alan Steinfeld QC sitting as a deputy judge of this Division. It is relevant for a limited purpose, namely the reliance placed on evidence of parallel trading, that is to say evidence that goods have been traded for a significant period of time under two marks in the same market without there being any evidence of confusion between them by any members of the public. Mr Steinfeld accepted that parallel trading is a factor which can be taken into account in a global appreciation under section 5(2). On the facts of the case before him, he considered parallel trading to have been an important factor which should have been, but was not, taken into account by the hearing officer. He said this at paragraph 38:

“…it is the fact that if in a market which consists of designer clothes and accessories there has been parallel trading for very many years without any actual evidence of confusion in that market, that is in itself a factor to be taken into account when considering the risk of confusion between the two marks. Indeed, on the basis that “the proof of the pudding is in the eating” it might in certain circumstances be regarded as a decisive factor, particularly when the similarity between the two marks is not all that great.”

The Decision has a conventional structure containing a number of sections. In paragraphs 8 to 22 and paragraphs 40 to 47 of the Decision, Mr Foley reviews the evidence put in by RF in support of its application and in reply to HH’s evidence; in paragraphs 23 to 39 he reviews the evidence put in by HH. In paragraphs 49 to 58, Mr Foley deals with a preliminary point explaining why he had previously dismissed a request for a stay of RF’s applications. The remainder of the Decision (paragraphs 59 to 79) contains Mr Foley’s reasoning and his decision. Mr Foley states that he had found his decision “a difficult decision to make”. He held that, although there was identity between the majority of the goods covered by the respective marks in class 8 and some similarity between the marks, there was nevertheless no likelihood of confusion between HH’s Marks and RF’s SABATIER mark. He held that there was no similarity between RF’s class 8 goods and the goods covered by class 21 of HH’s Marks. On that basis, he dismissed the applications.

RF contends that Mr Foley erred in law and in principle. These errors are summarised in Mr Vanhegan’s skeleton argument. That summary does not precisely follow the grounds of appeal as set out in RF’s Appellant’s notice. I propose to deal with the case in the way it was put in submissions which followed the skeleton argument where they are put in the following way:

Mr Vanhegan recognises the weight which this court will attach to the decisions of Hearing Officers, especially one as experienced as Mr Foley. But he suggests that it is important to appreciate that it remains open, nonetheless, to an appellate court to interfere with the first instance decision even where there is no error of principle, citing from the judgment of Robert Walker LJ in REEF Trade Mark [2002] RPC 5 at paragraph 28, where after a lengthy consideration of the authorities and after referring to the multifactorial comparison which has to be made and the experience of the hearing officer, he said this:

“…….On the other hand the hearing officer did not hear any oral evidence. In such circumstances 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.”

Mr Arnold, however, refers to what Lord Walker (as he had by then become) said in BUD and BUDWEISER BUDBRAU TMs [2003] RPC 25 at paragraphs 52 and 53:

“52.

For the reasons which I have explained, I do not think that the hearing officer did make any significant error of principle which appears from his written decision. I do find his conclusion surprising and if this court had a free choice between the hearing officer’s decision and that of the deputy judge I would unhesitatingly choose the latter.

53.

However, this court does not have a free choice…”

He then quotes from the judgment of Buxton LJ in Norowzian v Arks Ltd (No 2) [2000] FSR 363 at 370 to the effect that a party should not come to the Court of Appeal, in the absence of an error of principle by the judge, in the hope that the impression formed by the Court of Appeal will be different from that of the trial judge. Since there was no error of principle and since the decision of the hearing officer was not one which was “clearly wrong”, the hearing officer’s decision was reinstated.

Mr Arnold draws the conclusion from that that a hearing officer needs to have made an error of principle before the court can reverse his conclusion and that such an error must be a significant one. There is at least a difference of emphasis in the way Lord Walker puts the position in these two judgments but, for reasons which will become apparent later, I do not need to consider whether that difference might lead to different answers in particular cases.

I turn now to the Decision in more detail.

In paragraphs 63 to 65 Mr Foley considers the specifications of the various marks and considers the question whether the class 21 goods covered by HH’s Marks are similar to the class 8 goods covered by RF’s Marks. I read these paragraphs as containing a finding that the goods covered by class 8 of HH’s Marks (or at least most of them) are identical or, in the case of horticultural goods, similar to the goods covered by the SABATIER and LION SABATIER marks; the position is not quite so clear in relation to the PROFESSIONAL SABATIER mark.

As to goods in class 21 of HH’s Marks, which were to be compared with goods in class 8 of RF’s Marks, Mr Foley holds that the former were neither the same as nor similar to the latter. He holds that the goods within the two classes are clearly different in nature and their intended uses. He holds that nonetheless they may (but he does not seem to go as far as saying that they actually do so) share the same channels of trade (a fact illustrated by HH having a trade in both). He holds that the notional end consumer is the same. The goods are complementary but are not in competition. In reaching his conclusion that the goods are not similar, he refers to something he records as having been pointed out by RF namely that when exhibiting at trade fairs, goods of the type found in class 21 are in a different section from knives. Mr Foley says, in paragraph 65 of the decision, that to him that “is an indication that the trade does not consider these to be goods in the same category or classification”.

In paragraph 66, Mr Foley discusses commonality between the respective marks. In relation to the LION SABATIER mark he concludes that it is more likely that this composite mark will be referred to as a SABATIER mark rather than as LION or LION SABATIER. He regards this as more of an academic than a real question since, if RF could not succeed in respect of its word-only mark, SABATIER, it could be in no better a position than in respect of its other two marks.

I need to set out paragraph 68 in full:

“68.

The words JUDGE and STELLAR do not “hang together” with SABATIER to make a meaningful whole, and even less so when presented in the logo form in which they have been registered. To my mind the positioning and difference in the style of font used and the “star” curve around the “S” suggests that SABATIER is a separate element. As far as I am aware, the words JUDGE and STELLAR are not descriptive of the goods, and by their relative positioning and size are the dominant, distinctive element. The corresponding graphical representations (judge’s head and star) serve to emphasize the words but also contribute to the overall visual impact. However, these elements do not overwhelm SABATIER. The question is as put by Geoffrey Hobbs QC in his decision sitting as the Appointed Person in Raleigh International Trade Mark, [2001] RPC 202 is whether the later mark "captures the distinctiveness of the opponents' mark”.

Two important points are established in that paragraph: First, the words JUDGE and STELLAR do not “hang together” with SABATIER to make a meaningful whole; and secondly, the arrangement of HH’s Marks serves to emphasise that the word SABATIER is a discrete element of those marks which is not overwhelmed by the other elements of HH’s Marks.

Mr Vanhegan says that this paragraph contains a finding of fact that the elements which Mr Foley identifies do not overwhelm SABATIER, a finding which he relies on when it comes to applying Medion. As to the question identified at the end of the paragraph, Mr Arnold says that Mr Foley later answers this question, in paragraphs 77 and 78, in a way favourable to HH. The central question identified by Mr Foley is whether SABATIER is a word which is distinctive for the goods for which it is registered. I will come to those paragraphs in due course.

In paragraph 72, Mr Foley refers to the suggestion by Mr Turner (managing director of HH) that SABATIER is descriptive of “a knife with a black handle and three rivets with a bird’s beak pommel”. Whilst accepting that handles of SABATIER knives from members of the Association are of this style, Mr Foley did not consider that that made the word SABATIER descriptive of a knife of this characteristic such that it would no longer serve to distinguish. He says this:

“There is no evidence that I can see that this establishes that SABATIER is anything but distinctive, and specifically when used in relation to knives. I have already considered [Mr Foley is here referring to paragraph 69 of the Decision] the question whether SABATIER is, prima facie, a distinctive mark in relation to the goods for which it is registered, and have found there to be no evidence that would lead me to a contrary view. The question is whether the applicants have established a reputation in the name, and whether that has enhanced the distinctive character of SABATIER such that it is deserving of a wider than normal scope of protection.”

Paragraphs 77 and 78 of the Decision are of significance. They are not long and, rather than attempt to summarise them, I set them out in full:

“77.

The applicants’ case exists in the argument that the additional words and graphical matter in the registered proprietor’s marks will be insufficient to indicate a different trade origin to the public. This relies on the premise that the word “SABATIER” will be picked out of the applicants' mark, and either through the strength of the applicants’ reputation in that word, or through poor recollection, the consumer will be confused into thinking it is the applicants’ mark. I have already commented on the uncertainty regarding the applicants’ reputation. I see no reason why the word SABATIER will be singled out for attention. Both JUDGE and STELLAR are well used and distinctive marks. They are not dominated by the SABATIER element. There are a variety of marks that incorporate SABATIER, used by different traders, which in my view is likely to focus attention on other elements in order to distinguish. But in any event, in the SABEL v PUMA case it was said that “The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.” which, if applied to this case would support the view that there is little likelihood of confusion.

78.

I find this to be a difficult decision to make, but taking the global approach advocated and balancing the competing factors, I come to the view that despite the identity in the use of the distinctive word SABATIER, the differences brought about by the other elements in the registered proprietors’ marks serve to distinguish. In reaching this decision I am mindful that by the time the applicants made these applications the marks had been on the register approaching five years, but more importantly, the registered proprietors use of SABATIER is not recent; there has been a long period of substantial use in parallel without any apparent or even claimed confusion. There may be reasons for this, but as Mr Steinfeld QC said [see paragraph 26 above] “the proof of the pudding is in the eating”. I do not consider that the public is likely to wrongly believe that goods bearing the JUDGE or STELLAR SABATIER marks to have come from the applicants or some linked undertaking. In my view there is no likelihood of confusion within the meaning of Section 5(2)(b), and the applications are accordingly dismissed.”

There are, in essence, two main issues in the appeal. The first relates to whether, particularly in the light of Medion, Mr Foley’s decision that there is no likelihood of confusion rests on an error of principle or is otherwise clearly incorrect in the light of the facts of the present case. The second relates to the similarity or otherwise of the class 21 goods with the class 8 goods. Although the first point is the more significant, the second is logically prior and I deal with it first. It is logically prior because it is only if the goods are similar that there the question of confusion arises. It is settled law, at least so far as a judge of my level is concerned, that there is a threshold of similarity which goods must pass before the applying the global assessment of the issue of likelihood of confusion. This was the approach adopted by Jacob J in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 in relation to infringement. I can see no reason for adopting a different approach in relation to section 5.

The application seeking to invalidate HH’s Marks so far as concerns the goods in class 21 of HH’s Marks depends on those goods being similar to goods within the class 8 goods of RF’s Marks. Mr Foley considers the issue at paragraph 65 of the Decision which I have already dealt with in outline at paragraph 34 above. He holds that the class 21 goods are neither the same as nor similar to the class 8 goods. Mr Vanhegan submits that, in coming to his conclusion, Mr Foley erred by (i) misreading the evidence before him and (ii) applying the wrong test.

Taking those alleged errors in turn:

Mr Vanhegan says that the evidence did not state that goods of the type found in class 21 were exhibited in different sections from knives at trade fairs and Mr Foley was not entitled to infer that this was so. The evidence (of Madame Bruchon) related to only one trade fair and was in fact correctly set out in paragraph 43 of the Decision as follows:

“43.

……..Ms Bruchon states that these trade fairs are massive and divided into product areas. At Exhibit 1 she provides an extract from the Ambeinte Fair held in February 2006 saying that this attracted some 147,000 visitors and had more than 4,500 exhibitors. She highlights that her company was located in the kitchen/professional knives section, whereas the registered proprietors were exhibiting under the stainless steel cookwares section……”

At this Fair, it was indeed the case that RF was exhibiting under the kitchen/professional knives section and HH were exhibiting under the stainless steel cookware section (a sub-division of the cookware section). It is common ground that both RF and HH were, at the Fair, exhibiting among other products kitchen knives. Accordingly, Mr Vanhegan submits, the fact that they were exhibiting in different areas was not determinative of the similarity or otherwise of the goods in which they were dealing. HH were, after all, exhibiting knives with their other products. Mr Vanhegan says that it was impermissible to draw any inference about the attitude of the trade from the existence of the two sections referred to. The Fair was massive with thousands of exhibitors with tens of thousands of consumer goods under the same roof. He submits that it is hardly surprising that fine distinctions can be drawn between various suppliers of goods. To draw an inference from this arrangement as to the general attitude of the trade to the similarity or otherwise of the goods is, he says, plainly wrong. Moreover, at the Birmingham 2005 Spring Fair, HH and Sabatier et L’econome (another Association member) exhibited in the same hall.

Some care needs to be taken not to confuse concepts and thereby to impute to Mr Foley something which he did not say. At this stage in his Decision, he was looking at the classification by the trade of goods which, on one view, could be seen as within one classification (broadly speaking, kitchenware) or which, on another view, could be seen as in separate classifications (eg (i) utensils for preparing food, in particular knives (ii) utensils for cooking food, in particular saucepans and (iii) other kitchen-ware such as washing-up bowls and pepper mills). He was perfectly entitled, it seems to me, to take into account in assessing that classification the evidence about one or two fairs which, although very large in the case of Ambeinte, might been seen as reflecting an obvious difference in reality. Mr Foley would have been able to see from the exhibit to Madame Bruchon’s witness statement that there were a significant number of exhibitors in the knives section and a significant number of exhibitors in the stainless steel cookware section. It is not surprising that he would therefore conclude that there was, at some level, a classification by the trade which put knives into one class and saucepans into another. It is not to detract from that classification when it is realised that a single exhibitor wishing to display knives and saucepans exhibits in only one class. What one might think, however, is that a retailer attending the Fair to buy knives would head for the knives section rather than the stainless steel cookware section unless he was set on seeking out HH in particular. Whether I would reach the same conclusion as Mr Foley or not, I do not consider that his finding that the trade does not consider knives and cookware to be in the same category or classification is one which it is open, on appeal, to overturn.

It does not necessarily follow from this finding by Mr Foley that all or some of the class 21 goods are not similar to the class 8 goods in the present case. That may turn on whether Mr Vanhegan is correct about the second alleged error on the part of Mr Foley.

But remaining for the time being with the first alleged error, Mr Vanhegan also submits that even if the inference which he says Mr Foley has drawn could properly be drawn, it would not be relevant. He says that Mr Foley is clearly proceeding in paragraph 64 on the basis that the average consumer of the goods in question was not restricted to the professional: the attitude of the trade therefore has no bearing on the similarity or otherwise of the goods since that attitude is not determinative of the understanding of the average consumer. I would add to that, that even if the market had been the professional, that would be the professional chef whose own perspective may be very different from the professional dealer in the goods ie the retailers. This argument is, it seems to me, closely connected with the second alleged error and I will deal with it in that context.

Finally, Mr Vanhegan submits that the evidence before Mr Foley establishes that the goods within class 21 of HH’s Marks were, so far as the average consumer was concerned, sold side by side with goods of class 8. Thus in catalogues and shops one sees goods of class 8 being sold alongside goods of class 21. I do not think these examples help Mr Vanhegan as much as he might like. Taking them in turn:

It is not easy to see how these examples (other than the John Lewis display) establish that class 21 items are sold side by side with class 8 items nor, therefore, how they assist in establishing that these goods, or any of them, are “similar”. These examples are matters which should have been taken into account in Mr Foley’s overall assessment; there is nothing to suggest that they were not taken into account for instance in reaching the conclusions that the goods have the same notional end consumer, share the same channels of trade and are complementary. These examples do not support the proposition that Mr Foley has misread the evidence and that his conclusion is therefore open to challenge.

The second alleged error is that Mr Foley applied the wrong test. Mr Vanhegan says that Mr Foley appears, in paragraph 65 of the Decision, to be asking himself whether the class 8 and class 21 goods were considered by the trade to be goods of the same category or classification when he should have been asking himself whether the goods were similar for the purposes of the average consumer when considering the likelihood of confusion.

I agree with Mr Vanhegan that the correct question is the one which he has articulated and not the one which he says Mr Foley actually addressed. That does not, I think, make evidence about how the trade viewed the position entirely irrelevant to how the average consumer sees the matter. In the absence of any other evidence, it may be seen as an accurate indication of the way the public perceives the matter although it might carry little weight against evidence pointing in a different direction. And as will be seen in a moment, account may be taken of how the trade classifies goods in examining how different goods compete with or are complementary to, each other. It could also provide confirmation of a conclusion reached quite apart from that evidence and it would not be wrong for Mr Foley to refer to it for such a purpose. I agree with Mr Arnold when he says that the view of the trade which supplies consumers at large is also of some relevance in that it is likely that the trade either adopts or educates the public’s perception of those goods. As he says, the perceptions of the trade and of the public are not likely to be fundamentally different and so the trade’s view is pertinent.

If Mr Foley applied the wrong test in the way Mr Vanhegan suggests, it strikes me as odd that he did so, given that (i) he had identified, in paragraph 64 of the Decision, that it is the public at large and not the professional who are the relevant consumer base so far as concerns the class 8 goods (of both HH and RF) (ii) his finding that the goods reach the consumer in the same retail outlets in the same way (iii) as with its class 8 goods, HH’s class 21 goods are also directed at the public at large and not the professional and (iv) there is recognition that the goods may share the same channel of trade. Mr Foley certainly does not say, at least not expressly, that he is judging similarity from the perspective of the trade. It would be strange if he were doing so since he recognises that the notional end consumer is the public and not the professional. As I have already said, Mr Foley was entitled to take account of the evidence concerning trade fairs and to draw the inference which he did. I do not think that Mr Foley can be seen as applying the wrong test simply because he took into account factors which would be relevant if that had been the correct test. I do not, therefore, agree with Mr Vanhegan that the fact that he did make that inference shows that Mr Foley applied the wrong test.

The question then is whether, on the evidence before him, Mr Foley, in applying the correct test, reached a conclusion (that the goods are not similar) which he was not entitled to reach.

Mr Vanhegan would say that Mr Foley could not properly reach the conclusion which he did. He submits that there were other matters on which he addressed Mr Foley but which are not mentioned in the Decision all of which were matters which should be taken into account in accordance with Canon when considering the similarity of goods. Mr Vanhegan lists them in his skeleton argument for this appeal:

The list comes from the judgment of Jacob J in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 296-297 (cited by the Advocate-General in his Opinion in Canon [1999] RPC 117 at paragraph 45). In relation to factor f., Jacob J does not in fact refer to the extent to which goods complement each other, although he does say that this enquiry may take into account how those in the trade classify goods. The Advocate-General does not refer to complementariness either, although the Court does mention it as a factor in paragraph 23 of its Judgment in Canon: the factors relating to the goods include “their nature, their end users and their method of use and whether they are in competition with each other or are complementary”.

Mr Foley’s findings include a finding that there is identity in relation to factors b. and d. and a finding in relation to factor f. that the goods are to some extent complementary but certainly not in competition. I say to some extent because Mr Foley says only that knives and cookware “may be complementary insofar as one contains what is prepared with the other”. Mr Vanhegan says that those findings alone are sufficient for Mr Foley to find that there was some degree of similarity. Further, he says that if Mr Foley had properly considered factors a., c. and e., he should have found further similarity. According to Mr Vanhegan, Mr Foley was wrong to find the nature and uses of the goods to be different: frequently they are both metallic consumer durables that will be stored and used in the kitchen and used for the preparation of food. The conclusion should therefore be that their natures are similar. As to use, although pans are not used to chop and knives are not used to cook, both are used to prepare food for eating. Weighing up the factors, Mr Foley gave excessive weight to his wrongful finding about the trade’s perception and failed to have sufficient regard to (a) his findings that the class 21 goods and the good for which RF’s Marks are registered have the same end consumers, the same channels of trade and complementary uses and (b) to the evidence of the manner in which the goods are sold.

Mr Arnold correctly points out that the knives and cookware only have the same end users to the extent that the use is for the preparation of food which would encompass the use of a cooker. A cooker, he says, is clearly not similar to a knife. I certainly agree that common sense (that wobbly touchstone) tells us that a cooker is not similar to a knife. I suppose that evidence could be so strong that one is driven to the conclusion that a cooker is similar to a knife for trade mark purposes, but one is entitled to start with the common sense, or perhaps I should say prima facie and self-evident, proposition that a cooker is not similar to a knife. Equally, I consider that in the absence of evidence either way it would be unsurprising to find a hearing officer in Mr Foley’s position reaching the conclusion that knives and cookware are not similar: it is only if the totality of the evidence applying the global approach can lead to only one conclusion, namely that the goods are similar, that Mr Foley’s decision can be upset. Further, although one can see the complementariness of knives and cookware, the connection is rather more distant in the case of some of the class 21 goods. For instance a knife and washing-up bowl could be seen a complementary only in the sense that the bowl may be used to clean the knife but the bowl is not used in the preparation of food (although I suppose it could be used to wash vegetables).

As to the channels of trade, Mr Arnold suggests that there are differences in the channels of trade and how goods are displayed. He accepts that the goods would more than likely have the same or similar channels of trade so far as the public is concerned, but says that the earlier channels would be quite distinct and even at the retail end they might well be displayed in quite different parts (placing reliance on the Ambeinte trade fair). Indeed, as in the example of the John Lewis display, knives are hung against a wall whereas pots and pans are on free-standing shelves on the floor (albeit close by to the knife display).

In my judgment, the evidence before Mr Foley was not such as could result in only one finding, namely that the class 21 goods (or at least some of them) covered by HH’s Marks are similar to the class 8 goods covered by RF’s Marks. He was entitled to find, on the evidence, that the goods are not similar. It is not necessary for me to say whether I would have reached the same conclusion.

Accordingly, in the absence of any error of principle on the part of Mr Foley, which I find to be the case, the decision that those goods are not similar cannot be upset.

I turn now to principal issue in dispute – whether, particularly in the light of Medion, Mr Foley’s decision that there is no likelihood of confusion between the SABATIER mark and HH’s Marks rests on an error of principle or is otherwise clearly incorrect. This issue has two threads: whether the mark Sabatier is distinctive at all; and if it is whether it retains any independent distinctiveness in HH’s Marks.

Mr Vanhegan says that Mr Foley, having made the findings of fact which he has, has fallen into error by characterising (as he does in paragraph 68 of the Decision) the dominant, distinctive elements of HH’s Marks as being the words JUDGE and STELLAR. Having fallen into that error, he then carries out the wrong comparison. Although purporting to carry out the global approach and balancing the competing factors, Mr Foley in fact compares RF’s Marks (in particular, the SABATIER word mark) with those dominant distinctive elements of HH’s Marks and disregards the effect of the existence of the word SABATIER in HH’s Marks.

Mr Foley’s reasoning is based on what he perceived as RF’s case before him namely that the additional words and graphical matter in HH’s Marks is insufficient to indicate a different trade origin to the public, an argument resting on the premise, according to him, that the word SABATIER will be picked out of HH’s mark, leading the consumer to be confused into thinking that it is RF’s mark (see paragraph 77). Mr Foley sees no reason why the word SABATIER should be singled out for attention since both JUDGE and STELLAR are well used and distinctive marks not dominated by the SABATIER element. Indeed, he has already decided in paragraph 68 that it is JUDGE and STELLAR which are the dominant, distinctive elements of HH’s Marks. He is clearly saying at this point of the Decision that SABATIER is not dominant and will not be “picked out” or “singled out”.

I do not think it is quite fair to Mr Foley to describe him, as Mr Vanhegan does, as having made a comparison by reference to the elements of HH’s Marks disregarding the word SABATIER. Mr Foley has at the very least attempted to adopt the global approach required by Sabel and other cases and to balance the competing factors; in doing that he cannot but have taken into account the presence of the word SABATIER in HH’s Marks. Mr Foley’s point is that, in conducting that balancing exercise, the other elements are, in his view, sufficient to establish that there is no likelihood of confusion.

The question is whether that was a view Mr Foley was entitled to reach on the evidence before him and in the light of case law of the ECJ. In addressing that question, it is necessary (in the light of Medion) to see whether the word SABATIER has an independent distinctive role in the composite sign. It is the case that Mr Foley does not say expressly that it does have such a role, but neither does he say expressly that it does not have such a role. Mr Arnold submits that not only does Mr Foley not find expressly that it has such a role but also that he did not impliedly do so either. As to that, Mr Vanhegan responds that Mr Arnold is simply not correct.

There are a number of factors in support of Mr Vanhegan’s position.

In the light of those references, it is clear that Mr Foley regards the word SABATIER has having a normal degree (although no more than a normal degree) of distinctiveness. Further it is not easy to conclude, in the light of factors a, b, c, e and f, other than that Mr Foley must consider that the word SABATIER does have an independent distinctive role in HH’s Marks. This is so notwithstanding what he says in paragraph 68 where he says that JUDGE and STELLAR are the dominant, distinctive elements; it is important to note that that is a conclusion which he appears to draw simply from (i) the fact that those words are not descriptive and (ii) their relative positioning and size. Moreover, he says in the very next sentence that these elements (albeit in his language the dominant, distinctive elements) do not overwhelm SABATIER. If, in saying that JUDGE and STELLAR are the dominant, distinctive elements, Mr Foley was intending to say that SABATIER had no independent role, paragraph 78 of the Decision would not make sense. In that paragraph, he says that he finds the decision a difficult one to make and recognises the need to apply the global approach and to balance competing factors. But if SABATIER has no independent distinctive role, the decision is not a difficult one; rather, it is a perfectly straightforward one where Mr Foley would have had no difficulty at all in deciding that there was no likelihood of confusion.

In these circumstances, I am unable to read the Decision as a whole other than in a way which attributes to Mr Foley the view that SABATIER in HH’s Marks does have an independent distinctive role.

In order to neutralise the risk that I might reach the conclusion that SABATIER did retain an independent distinctive role in HH’s Marks, Mr Arnold spent some time arguing that SABATIER by itself is not, and was not even at the time of its registration in 1969 (in the case of SABATIER) distinctive at all (a related point being whether Sabatier had become, at least by the time of the registration of HH’s Marks on 10 March 2000, a common name in the trade). This is a matter which is subject to HH’s respondent’s notice in which it is sought to uphold the Decision on the grounds that the word SABATIER was at all material times devoid of any distinctive character alternatively was of very low distinctive character for the class 8 goods in question such that the mere presence (amongst other elements) of this word in HH’s Marks would not give rise to the existence of the likelihood of confusion between HH’s Marks and RF’s Marks. If that is correct, then the view which I have just said must be attributed to Mr Foley that SABATIER has an independent distinctive role is not a sustainable view; if SABATIER is not distinctive at all it clearly cannot have such an independent distinctive role.

In front of Mr Foley, there was no issue that there had been actual and genuine use of the SABATIER mark by RF. This had been conceded by HH for the purposes of the applications. Reading that skeleton argument alone, or in conjunction with the pleadings, the clear impression given is that “SABATIER” is acknowledged to be a valid mark which has been used, the issue – and the only issue – being whether there was a likelihood of confusion. It was not said that there was not any distinctive mark at all with which HH’s Marks were capable of being confused. Notwithstanding that HH’s Counterstatement was amended three times, on no occasion did HH seek to plead that SABATIER was not distinctive or should be revoked as being the common name in the trade in consequence of the acts or inactivity of RF and its predecessors.

The actual argument before Mr Foley does, however, seem to have moved some way towards an attack on the mark. Thus, HH argued before Mr Foley that the SABATIER mark should be held to have little distinctiveness because it was descriptive of a type of knife, that is to say one with a black handle and three rivets with a bird’s beak pommel; but that argument did not succeed. On that issue, Mr Foley decided (see paragraph 72 of the Decision) that SABATIER was not descriptive of a knife or those characteristics such that it could no longer serve to distinguish.

Mr Vanhegan says that HH did not seek to argue that on the evidence before Mr Foley the mark had become generic – or the common name in the trade either as a result of RF’s acts or omissions or at all – or that it had become so as at any particular date. He says that it was wrong, therefore, for Mr Arnold to criticise Mr Foley for addressing only the descriptive argument. Mr Arnold says that he understands that the point was argued. It was not, as I have said, an issue which had been identified in the pleadings.

HH did argue before Mr Foley that as a result of the use of various forms of the Sabatier mark, the consumer had been educated to place no reliance upon the SABATIER sign alone as indicating any particular trade source. In this context, it is to be noted that there was no evidence from RF of a single instance of confusion for the 13 years during which HH had sold knives bearing the word Sabatier. Advertisements containing both Stellar and Lion products had even appeared in the same journal on facing pages. It seems from the evidence before Mr Foley, that such education as the consumer did receive could only be derived from the various uses made by RF itself of marks using SABATIER and of use made by HH itself of that word in its marks. There is very little, if any, evidence of other use as will be seen in a moment.

I have been taken through a lot of the material available at the hearing before Mr Foley. I have also been referred by Mr Arnold to a certain amount of pre-registration material which Mr Vanhegan says was not before Mr Foley and is not admissible on this appeal. That material comprises witness statements from various individuals to whom I will refer simply by their last names: Tocher, Hart, Maturi-Bailey. There are also extracts from Housewares Magazine and HBC – Datapack. Finally, there is the report of the decision in K. Sabatier Trade Mark [1993] RPC 97.

It should be noted that in paragraph 8 to 48 of the Decision, Mr Foley sets out a summary of the evidence which was before him on the invalidity applications by RF. He does not make any reference to the pre-registration material. Nonetheless, this material was mentioned to Mr Foley and it may be that he actually had copies of it. Mr Vanhegan says that it is important to understand why that material was mentioned. Since I agree with that, I will summarise Mr Vanhegan’s explanation:

It is clear that the pre-registration material was not, in fact, deployed by either party as part of the evidence on the substantive applications. RF did not seek to do so and no doubt if HH had sought to do so, RF would have objected or, if it had not objected, it would have sought an opportunity to put in evidence in answer and to cross-examine the witnesses. There has been no application by HH to adduce this evidence on this appeal.

The evidence is, in any event, very unsatisfactory and not really of the sort which one would expect to see on an application of this sort. It consists of short statements making very general observations; the Registry might find this sort of evidence helpful when assessing whether to register a mark but in the context of what I might call proper litigation it would be unsafe to place much reliance on it, especially if untested by cross-examination. Moreover, as Mr Vanhegan points out, it is in some respects inconsistent with the evidence which HH actually filed. Thus, all of the witnesses (in their statements dated June 2000) refer to Judge Sabatier and Stellar Sabatier as being brands known to them. Evidence filed by Mr Rosati, marketing director of HH, shows that these brands (in contrast with Judge P Sabatier and Stellar P Sabatier) were not launched until after June 2000.

I do not propose to allow any reliance to be placed on this pre-registration material.

The following emerges from the evidence before Mr Foley (and, were I to allow the pre-registration material to be relied on, from that evidence too):

I have mentioned the trade mark search in a number of paragraphs. The results of those searches, even if account should be taken of them, do not really assist HH as they refer only to claimed use or honest concurrent use. I do not know the evidence in any of the cases on which the claimed use or honest concurrent use was based. The search provides no firm basis for establishing use or a lack of distinctiveness following from it.

The evidence also includes a number of short witness statements which Mr Arnold relies on to show a lack of distinctiveness including

I have already mentioned Mr Foley’s conclusion that SABATIER was not descriptive of a knife of those characteristics set out in Mr Turner’s witness statement such that it could no longer serve to distinguish. There was material on which Mr Foley was entitled to reach that conclusion; indeed, I would have reached the same conclusion myself. His decision cannot be successfully challenged on the basis that Sabatier was not distinctive because it had come to mean a particular type of knife with those characteristics. If SABATIER was not, or has ceased to be, distinctive, it is for some other reason.

Mr Vanhegan accepts that companies other than RF have each registered trade marks in various countries, including the UK, containing the word Sabatier in conjunction with another word or sign. But he says that all of these marks are in the ownership of members of the Association. RF’s position, which is not accepted by HH, is that RF was in no position to object to this since there had been concurrent use of this sort over a long period of history. However, so far as the UK is concerned, RF’s case is that there is no evidence of use, or at least any substantial use, of marks containing the word Sabatier in the UK except (a) RF’s own use and (b) HH’s use by way of products manufactured by the Portuguese manufacturer. It is also RF’s case that there is no example of use in the UK of the word Sabatier on its own other than by RF itself as to which it is certainly the case that there is evidence of such use. It is also the case that there is no evidence of the extent of any use of the marks registered in the names of other Association members.

Insofar as it is suggested that Sabatier has become a common name in the trade, that must be established by cogent evidence. Without using the words “common in the trade”, Mr Foley did, of course, address the question of distinctiveness. In doing so, he addressed the evidence before him; he specifically mentioned Mr Edenborough’s submission that there was a profusion of knives on the UK market which bore the word Sabatier either alone or in combination and he dealt with the absence of any evidence of actual confusion. He was aware of, and referred to, the witness statements which I have mentioned above other than the pre-registration materials. And yet he held that Sabatier had not lost its distinctiveness. This was, I consider, a conclusion which he was entitled to come to on the evidence before him. If it is said that the question whether Sabatier had become a common name in the trade was not specifically addressed, I would say that the answer was implicit in what Mr Foley did say. But if that is wrong, I would answer it by saying that the evidence was not sufficient to establish that it had become a common name.

The question of common name in the trade is particularly relevant to section 46(1)(c) TMA. But for HH to be entitled to claim revocation of the Sabatier mark on the basis that is had become a common name in the trade, it would have to show that that was so in consequence of acts or inactivity on the part of RF (or its predecessors in title). It may be that HH will seek to show precisely that in a revocation action, but it could not, I think, expect to succeed if it produced nothing save the evidence adduced before Mr Foley. Even if it were, contrary to my view, correct that the evidence established that Sabatier was a common name in the trade, there is nothing to show that it was as a result of RF’s acts or inactivity; it cannot therefore be maintained that HH is entitled to revocation of the Sabatier mark and that therefore the mark lacks distinctiveness.

There is one other aspect of Mr Foley’s approach which I should mention. Mr Foley’s starting point was section 72 TMA and the presumption that RF’s Marks were valid when originally registered. Although Mr Arnold would say that the registration of Sabatier was invalid because it lacked distinctiveness even in 1969, that was not a matter which he pushed in this appeal: it is enough, he says, to show that the mark lacked distinctiveness in March 2000 in order to establish that there was no likelihood of confusion. So far as concerns 1969, the evidence before Mr Foley was, in my judgment, wholly inadequate to establish a lack of distinctiveness at that time. Clearly Mr Foley considered that to be the case when he says that Sabatier is prima facie distinctive (ie because of the section 72 presumption) and that he has found no evidence which would lead him to a contrary view. Accordingly, if it is said, as Mr Arnold says, that Sabatier was not distinctive in March 2000, he must show why the position has changed since 1969.

In my judgement, Mr Foley was entitled to reach the conclusion that Sabatier was a distinctive mark as he did. In particular, it remained distinctive in March 2000. I agree with Mr Vanhegan when he says that a person challenging the distinctiveness of a registered trade mark must show on the evidence more than just some use by one or more others; the challenger must show that the mark has become generic or incapable of distinguishing. HH has failed to do that on the evidence.

I return now to the independent distinctive role which finds its place in Medion. That was a case which concerned the juxtaposition of a well-known company name, Thomson, with the registered mark, LIFE. The question for the Court was raised, and answered, in that context. Similarly, in paragraph 30 of the Judgment (see paragraph 24 above), the composite mark given by way of example is one which includes the earlier mark and the company name of a third party. But the reasoning of the decision applies equally to other types of composite mark. As the examples in paragraph 34 of the Judgment shows, the composite mark might comprise of the earlier mark and a widely-known mark of a third party or a widely-known commercial name. And it is to be noted, as appears from the same paragraph, that “the overall impression would be, most often, dominated by the widely-known mark or commercial name included in the composite sign”. There can be no suggestion, therefore, that the dominance of the well-known mark or commercial name of itself destroys whatever independent distinctive role the earlier mark might otherwise have.

The Court in Medion was clear in its rejection of any precondition to a finding of likelihood of confusion that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark. In the present case, such a precondition would, of course, mean that there is no likelihood of confusion because, on Mr Foley’s findings of fact, SABATIER was not the dominant element of HH’s Marks. Although as noted in paragraph 23 above, the actual answer given by the Court related to the absence of such a precondition, it is clear from the decision that there will be a likelihood of confusion if the earlier mark retains an independent distinctive role in the later composite mark.

In this context, paragraph 34 of the Judgment is of great importance in stating that this independent distinctive role will be present in the examples given. There is no material difference between those examples and the present case, (see paragraph 93 below). It may be that, in some circumstances, an earlier mark may not retain any independent distinctive role, a possibility which is consistent with the language of paragraph 31 (“……..it is quite possible…”) and paragraph 31 (“….the overall impression produced …..may lead….”). But that would surely be an exceptional case. As it is said in paragraph 36 “ in order to establish the likelihood of confusion, it suffices that, because the earlier mark still has an independent distinctive role, the origin of the goods or services covered by the composite sign is attributed by the public to the owner of that mark”. Thus where the earlier mark is a word mark, and that earlier mark forms part of a composite mark itself comprising words (whether with or without a further device), it may be difficult, or so it seems to me, to resist the conclusion that the earlier mark does indeed retain an independent distinctive role.

Mr Arnold submits that Medion is simply a particular application of the ECJ’s earlier case-law which I have already mentioned. I agree with that, as does Mr Vanhegan. But it is a particular application which shows how the ECJ regards a composite mark which includes an earlier mark which retains an independent distinctive role. Of course, the actual test which must not be lost sight of remains whether, because of similarity of marks, there is a likelihood of confusion. The court in Medion does not in any way abandon that test. It does not say that a composite mark which contains an earlier mark will always carry a likelihood of confusion; rather, it says that there is such likelihood if the earlier mark has an independent distinctive role. However, the assessment whether the earlier mark does have such a role is, I consider, something which has to be decided before answering the question whether there is a likelihood of confusion. To elide the question of an independent distinctive role with the question of the likelihood of confusion runs the risk of answering the former question by first providing an answer to the latter. That would be to answer the question “Is there a likelihood of confusion” with the answer “Yes, if there is a likelihood of confusion” when the answer should be “Yes, if the earlier mark retains an independent distinctive role”.

In the present case, the word SABATIER does, I consider, retain an independent distinctive role in HH’s Marks. Although Mr Foley does not state that as a conclusion, it is, for reasons already given, a conclusion which he must consider to be correct. In the present case, JUDGE and STELLAR are, as Mr Arnold confirmed, well-known names in the trade. The reasoning in Medion applies to a composite mark comprising of an earlier mark, such as SABATIER, in juxtaposition with JUDGE or STELLAR. It is not, in my judgment, possible, consistently with the conclusion that the word SABATIER in HH’s Marks retains an independent and distinctive role, to maintain that there is no likelihood of confusion between RF’s SABATIER mark and HH’s Marks.

In my judgment, Mr Foley has erred in principle by failing to apply, or give sufficient weight to, the approach laid down in Medion to the facts of the present case so far as concerns the SABATIER mark. I do not criticise him for that error: his attention was not drawn to Medion which had been reported before the hearing nor to OHIM v Shakar di L Laudato & Co Sas which was decided after the hearing but before the Decision. But the error is a significant error which, in my judgment, vitiates the basis on which he formed the view which he did. I am free to substitute my own decision which is to the effect that the applications to invalidate HH’s Marks under section 47(2) TMA succeed so far as concerns the registration in respect of goods in class 8 on the basis that there is a likelihood of confusion of HH’s marks with RF’s SABATIER mark.

These conclusions make it strictly unnecessary to determine whether Mr Vanhegan is right in what he says about some of the errors (see a. to g. in paragraph 28 above) on the part of Mr Foley which he alleges. I think, nonetheless that I should deal with at least some of them.

As to a. (Mr Foley wrongly concluded that he was required to find a dominant and distinctive element with respect of each of HH’s Marks with which (and only with which) to compare with RF’s Marks), I do not understand Mr Foley as having concluded that he was required to find a dominant and distinctive element with respect of each of HH’s Marks. He does not expressly say that this is a requirement, let alone identify the sense in which a dominant and distinctive element is to be understood. Indeed, what he actually does say seems to me to be inconsistent with this alleged error since he recognises that the need to compare the marks as a whole be balanced by the need to have regard to the distinctiveness and dominance of the individual elements.

As to b. (he wrongly concluded that the dominant and distinctive elements of HH’s Marks were the words JUDGE and STELLAR respectively, and thus that there was no likelihood of confusion between those marks and RF’s Marks), I think that Mr Foley is really saying no more than that, to him, JUDGE and STELLAR produce the most impact so that his overall impression is dominated by JUDGE and STELLAR. He is not saying that those words are so dominant that SABATIER has no independent distinctive role. Notwithstanding the factors relied on in the grounds of appeal and by Mr Vanhegan in his submissions, I do not consider that Mr Foley’s conclusion (on the basis of what I think he is saying) is open to challenge.

As to c. (he wrongly considered that the absence of actual evidence of confusion was determinative of the answer to the question as to whether there was a likelihood of confusion under section 5(2) TMA), it is true that Mr Foley relies on parallel trading, citing the passage from Fiorelli which I too have set out at paragraph 26 above. From paragraph 74 of the Decision it is clear that Mr Foley does not regard concurrent use as necessarily determinative but sees it as one of the factors to be taken into a global appreciation of a likelihood of confusion. On the evidence, he finds that there is clear unchallenged evidence of parallel trading by the use of JUDGE SABATIER and STELLAR SABATIER over many years and seems to regard that, on the facts of the present case, as at least a very important, if not an overwhelming, factor: he adopts “the proof of the pudding is in the eating” approach adopted by Mr Steinfeld in Fiorelli.

There is a dispute between Mr Arnold and Mr Vanhegan whether the question of a likelihood of confusion is an abstract question rather than whether anyone has been confused in practice. Mr Vanhegan relies on what was said by Laddie J in Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 at paragraphs 22 to 26, especially paragraph 23. Mr Arnold says that that cannot any longer be regarded as a correct statement of the law in the light of O2 Holdings Ltd v Hutchison 3G Ltd [2007] RPC 16. For my part, I do not see any reason to doubt what Laddie J says. O2 v H3G was a case considering infringement, not invalidity, and although there is of course some commonality between matters relevant to each, it is correct, in the context of infringement, to look only at the particular circumstances of the alleged infringement. In contrast, in cases of validity, it is necessary to look across the whole range of goods covered by the registration. The Court of Appeal was unimpressed by the suggestion that the abstract test applicable to validity applies in the case of infringement, but it did not give even a hint that the validity test as understood was incorrect: see paragraph 34 of the judgment of Jacob LJ.

It is not, in fact, necessary to decide that point for, whichever test applies, I do not consider that parallel trading in the present case is sufficient to lead to the conclusion that SABATIER lacks distinctiveness (so that it therefore also lacks an independent distinctiveness role in HH’s Marks). Use of HH’s Marks (in contrast with earlier marks such as JUDGE P SABATIER) did not start until after June 2000 so far as the evidence before Mr Foley goes. The evidence does not establish the extent of sales or explain market share of HH’s products. There is no evidence of any trader selling both RF’s and HH’s knives. In these circumstances, I do not think that it can properly be said that the evidence of parallel trading was sufficient, even in combination with the other evidence, to show that there was no likelihood of confusion. If I am right in my conclusion on the effect of Medion, then Mr Foley was in error in giving the substantial weight which he did to parallel trading and in relying as he did on “the proof of the pudding is in the eating”.

As to the other complaints levelled against Mr Foley, I have rejected f. (similarity of goods in classes 8 and 21). As to d and g, these do not, in my view, display any error of principle; rather they are to be taken into account in any reconsideration of the likelihood of confusion if errors are identified which require such reconsideration. I do not consider them further as separate grounds for justifying reconsideration of Mr Foley’s decision. As to e. (failure properly to apply the interdependency principle), Mr Foley was clearly aware of the principle which appears from his summary of the applicable law. He appreciated that the goods were to all intents and purposes identical and he accurately identified the similarities and differences in the marks. I do not consider that the Decision displays any error of principle in relation to this aspect of the case.

So far, I have dealt with HH’s Marks on the basis of similarity with RF’s SABATIER mark. Mr Arnold invites me, in his skeleton argument, to deal also with RF’s case based on its other two marks. No attack, so far as I am aware, has been made in these proceedings on the validity of LION SABATIER or PROFESSIONAL SABATIER. Mr Foley concluded in paragraph 66 of the Decision in relation to the LION SABATIER mark that it is more likely that the composite mark would be referred to as a SABATIER mark rather than as LION or LION SABATIER. I see no reason to think that he would not have reached the same conclusion in relation to PROFESSIONAL SABATIER; he did not deal with it separately since Mr Edenborough had directed his argument to the LION SABATIER mark. I note as an aside that if Mr Foley had considered that SABATIER were not distinctive, he would be unlikely to have said that the LION SABATIER would be referred to as a SABATIER mark (or rather non-mark).

This conclusion does not, however, lead to the conclusion that there is a likelihood of confusion between LION SABATIER (or PROFESSIONAL SABATIER) and HH’s Marks in the same way that there is a likelihood of confusion between SABATIER and HH’s Marks. The reasoning in Medion does not apply to the composite Sabatier marks – the earlier composite mark is simply not present in HH’s Marks and can therefore have no independent distinctive role in HH’s Marks. The issue is simply whether there is a likelihood of confusion between the two composite marks.

Mr Foley saw this issue of confusion with RF’s composite marks as academic since he considered that if RF could not succeed in relation to its SABATIER mark, it could not succeed in relation to its other marks (on the footing, of course, that SABATIER did indeed retain distinctiveness). He was right in that in the sense that, if RF succeeded in relation to SABATIER, it did not need to rely on its other marks. However, in the light of Mr Foley’s own reasoning, it does not necessarily follow that failure in relation to SABATIER would have meant failure in relation to LION SABATIER. For instance, in reaching his conclusion Mr Foley relied on his findings about the reputation of SABATIER and its being entitled to no protection beyond the norm. He might, on the evidence, have said something very different about LION SABATIER which, on the evidence, might be seen as having a reputation beyond the norm. It may well be that, had Mr Foley addressed the matter, his reasoning in relation to SABATIER would have lead him to the same conclusion in relation to LION SABATIER (ie that there was sufficient to distinguish the two composite marks and to eliminate any likelihood of confusion); he did not, however, express such a conclusion.

I do not propose to resolve this issue myself and decline Mr Arnold’s invitation.

RF’s appeal is allowed on the basis that there is a likelihood of confusion between its SABATIER mark and each of HH’s Marks so far as concerns goods in class 8 but not class 21.

Mr Arnold has indicated that he will make an application that HH’s Marks are not invalidated pending the outcome of the various attacks on the validity of RF’s Marks. The arguments each way have been outlined in both his and Mr Vanhegan’s skeleton arguments. I will hear further argument on this in due course.