Giorgio Armani SpA v Sunrich Clothing Ltd

This is an appeal from a decision and supplemental decision of the Hearing Officer (Ms Anne Corbett, for the Registrar) dated 21^st April 2010 and 26^th May 2010 respectively. In that decision she rejected the application of Giorgio Armani SpA (“Armani”) for the extension of protection of International Registration no. 926043 of the word mark AX to the UK under the Madrid Protocol in respect of any of the following goods, namely “clothing, shoes, headgear” in Class 25 of the UK Register. The extension was opposed by Sunrich Clothing Limited (“Sunrich”) which has its own mark registered in Class 25, that mark being “AXE”. The Hearing Officer refused to extend the registration on the footing that the marks were similar, the goods were similar or identical, and there was a likelihood of confusion. Accordingly the extension was refused under s5(2)(b) of the Trade Marks Act 1994.

This appeal is brought on two grounds. First, it is said that the opposition was a limited opposition only; it was limited only to the extent of men’s and boys’ clothing, and in the circumstances, even if the Hearing Officer was right in her decision under s5(2)(b) she should nonetheless have allowed the registration in respect of other goods in the class sought. Second, her actual decision on the merits is challenged on the footing that she perpetrated errors of reasoning and analysis when arriving at her conclusion.

At the appeal before me Armani was represented by Mr Giles Fernando; Sunrich was represented by Miss Fiona Clark. Although this was an application for extension of an international mark, and did not originate as a straight application under the English Act, the procedures and legislation are such that the present matter can be treated as though it was an English application. I can ignore the international element.

Armani made its application in an appropriate form. Sunrich filed a Notice of Opposition, and then an amended Notice, whose terms are important. It was on form TM7, which contains various questions which the opponent is required to answer in order to establish the grounds of opposition. The relevant questions and answers are as follows. For the sake of convenience I set them out in a table; in the form itself there is space below each question for the answer to be written.

In the subsequent formal documents within the proceedings, Armani took issue with the opposition and the allegations of likelihood of confusion, and propounded the full registration sought. However, it had understood that the registration was opposed only so far as it concerned men’s and boys’ clothing. When Sunrich put in a witness statement which suggested that the opposition was wider than that, and extended to the whole of the goods comprised in the application, the matter was apparently taken up with the Registry in a telephone conversation. The position was apparently clarified in a letter from a Case Work examiner in the Registry dated 22^nd December 2009 which identified the proceedings in question and went on:

“I refer to the above proceedings and the query regarding the grounds of Opposition against your client’s application. The Opponent’s agent has confirmed that their client is opposing the application in relation to ‘clothing for men and boys’, not all goods in Class 25 as indicated in the Witness Statement by Mickey Seghal. Their letter dated 21 November 2009, copied to yourselves, refers.

The Witness Statement does not require amendment unless the Opponent requests to rectify the statement in paragraph 8.

The Hearing Officer will only consider the Opposition against ‘clothing for men and boys’.”

The matter was duly dealt with without an oral hearing by the Hearing Officer. She records that she had received what purported to be evidence but which was largely submission, and a further written submission from Armani. She then delivered her decision against registration. Armani says that her decision did not reflect the fact that the opposition was clearly limited and did not extend to the full scope of the registration sought. I shall come to that in due course. It apparently raised the point in a telephone call to the Registry and there was some limited correspondence on the point. A Case Work examiner responded on 4^th May 2010:

“I refer to your recent telephone call to this Office which queried the Hearing Officer’s decision as far as the scope of the Opposition in terms of the relevant goods is concerned.

‘Clothing for men and boys’ is a subset of ‘clothing shoes and headgear’ and these goods are either identical or similar to the general category of goods as covered by the application, as was set out in paragraphs 19 and 20 of the Hearing Officer’s decision. That being the case, whilst the decision as written may not reflect the fact that Sunrich Clothing Limited’s Opposition is against ‘clothing for men and boys’ only, had it done so then the Hearing Officer’s finding would not have been any different.

The Hearing Officer will set out the above in a supplementary decision if the parties consider it to be necessary, though this may depend on whether there is any intention to appeal the substantive finding. Any request should be made within 7 days of the date of this letter, that is on or before 11 May 2010.”

Armani’s IP agents did respond, and on the same day they wrote back:

“Our clients do intend to appeal the substantive decision, and we would therefore be grateful for clarification that the mark will be protected for goods in Class 25 other than ‘clothing for men and boys’ on which the Opposition of Sunrich Clothing Limited was based. We believe that the mark should be protected in Class 25 (in addition to the other classes in respect of which there has been no Opposition ) for clothing for women and girls, shoes and headgear, alternatively for clothing, shoes and headgear (other than clothing for men and boys).

We look forward to receiving the above clarification…”

The Registry confirmed that there would be a supplementary decision, and there duly was. Armani now complain that that supplementary decision, like the first one, does not reflect the fact that the opposition was only limited, and the Hearing Officer was thereby in error. What she ought to have done was to acknowledge that all she had to decide was whether the limited opposition was valid, and grant registration of the application in relation to goods and services in respect of which there was no opposition. At the end of the day the Hearing Officer had not proceeded in the way which was promised in the letter of 23^rd December 2009.

In her first decision the Hearing Officer set out some uncontentious background. Then she turned to items under the heading:

“The objections under s5(2)”

and set out the section and some law. In paragraph 13 she set out a number of factors which she needed to take into account, extracted from the authorities. No complaint is made that she made an error in relation to those factors. Amongst those she listed were:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors…

(b)

the matter must be judged through the eyes of the average consumer of the goods/services in question…

(c)

the average consumer normally perceives a mark as a whole and does not seem to analyse its various details…

(d)

the visual, aural and conceptual difficulties of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components…

(e)

a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa…

(f)

there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it…”

Then in paragraph 14 she added:

“14.

In essence the test under s5(2)(b) is whether there are similarities in marks and goods which, when taking into account all the surrounding circumstances, would combine to create a likelihood of confusion. The likelihood of confusion must be appreciated globally and I need to address the degree of visual, aural and conceptual similarity between the marks, evaluating the importance to be attached to those different elements and taking into account the degree of similarity in the goods, the category of goods in question and how they are marketed.”

No issue is taken as to that formulation.

In paragraph 15 she might be thought to be dealing with the scope of the opposition. Miss Clark says she got it right; Mr Fernando says this demonstrates how she misdirected herself as to the scope of the opposition. The paragraph reads:

“15.

Although its Notice of Opposition contains no such indication, in its evidence filed in reply to GA’s evidence, SCL states that its objection to the application is directed solely at the goods for which protection is sought in class 25. I proceed on this basis.

16.

For ease of reference, I set out the respective goods:

[she then provided a 2-column table with ‘GA’s application’ (clothing shoes and headgear) in one and ‘SCL’s earlier mark’ (clothing for men and boys) in the other].”

That is all she said explicitly about the scope of the opposition. She then turned to a section of her decision entitled “Similarity of Goods”. In paragraph 19 she dealt with a particular point made by Armani:

“19.

GA also submits that ‘although in each case the goods fall within Class 25, they are not identical in that the Opponents’ specification is effectively a subset of the Applicant’s’. I reject this argument also…as clothing for men and boys of the earlier mark is included as the more general category clothing as appears in GA’s application, these goods are identical.”

In paragraph 21 she comments that the respective goods would be bought by the general public and would be bought in a variety of ways, and records that:

“…bearing in mind the manner in which clothing goods will normally be purchased, it is the visual impression of the marks that is the most important. This would normally be from a clothes rail, a catalogue or a website rather than by oral request. Notwithstanding this, aural and conceptual considerations remain important and should not be ignored.”

Then she deals with “Similarity of marks”. In paragraph 23 she finds that:

“The common presence of the two letters AX creates an inevitable degree of visual similarity, however the letter E in SCL’s mark has an impact which is not lost in the overall impression of the respective marks. This is particularly so given that both marks are very short marks…where small differences may have a somewhat disproportionately large effect on similarity.”

Then, having referred to another case, she finds:

“in my view…from a visual perspective the respective marks are similar to a reasonable degree”.

In paragraph 25 she turns to a submission that AX is an acronym which would be recognised as such, so that a customer would pronounce the mark as the two separate letters and not as one would pronounce the hand tool “axe”. She said:

“There is no evidence that consumers would know the mark to be an acronym with such meaning. And whilst I accept that it is possible that some people, on seeing it, may articulate the mark as separate letters, nothing is placed between them, such as a full-stop or other symbol, to indicate that the mark is an acronym rather than a word. Absent such separators, it is my view that the easily pronounceable combination of the vowel A followed by the consonant X would lead most people to articulate the mark as having the sound ‘acks’ which is aurally identical to SCL’s mark.

26.

The word AXE is an everyday English word which, for most people, will bring to mind a type of hand tool. SCL’s evidence refers to an entry in the Collins English Dictionary (5^th Ed.) which confirms that AX is an alternative, American, spelling of that word. GA does not accept that the ‘adoption of ‘Ax’ as an alternative spelling of the word ‘Axe’ in the United States has any bearing on the position in the UK’. Whilst for some the Americanisation of the English language is something to be resisted, for others it is welcomed and adopted freely but I have no evidence of how well-known the alternative spelling might be nor have I been provided with any instances of it in use. For those who are aware of the alternative spelling, both marks will have the same conceptual meaning. For those who are unaware of it, I do not consider that AX will bring to mind any particular image.”

Then she has a short section headed “The distinctive character of the earlier mark” and concludes that the distinctiveness of Sunrich’s mark has not been enhanced through use such that it had any reputation. Then she reaches her conclusion on “Likelihood of confusion”:

“28.

In reaching a decision on whether there is a likelihood of confusion, I must make a global assessment based on all relevant factors. I have found that identical or similar goods are involved, that there is a reasonable degree of visual similarity and aural identity between the marks. From a conceptual viewpoint the message is more mixed with some likely to consider this aspect identical and others finding no similarity.

29.

On a global appreciation and considering all relevant factors including imperfect recollection, I consider the average consumer would mistake one mark for the other and be confused as to the economic origin of the goods sold under the respective marks. The opposition based on s5(2)(b) of the Act therefore succeeds.” (The emphasis appears in the decision)

That is her material conclusion in her first decision. In her supplementary decision, she starts by setting out her understanding of why she was asked to deliver it:

“2.

Following the issue of my decision, it was brought to my attention that my findings under s5(2)(b) were not entirely clear. Thus, I issue this supplementary decision to clarify my findings under s5(2)(b) of the Act.

3.

In dealing with the objection under s5(2)(b), I stated:

[she then sets out paragraph 15 of her earlier decision – see above.]”

She then observes that she set out the respective goods of each party’s registration/application and cites from Yerse SA’s application (OHIM, 23/01/2006):

“Clothing for women is considered similar to ready-made clothing for men and children. These goods share the same nature, the same method of use, the same manufacturers, the same distribution channels and the same outlets, even if they are sometimes displayed in different parts. Furthermore, certain items are designed for or suitable to both sexes, e.g. unisex clothing, not distinguished or distinguishable on the basis of sex in [sic] appearance. It is also not unusual for women and men of small-sized figure to look for a piece of clothing in children’s department [sic] in order to find a suitable size.”

And she herself continues:

“Thus while SCL set out its view, in its Notice of Opposition, that it considered GA’s application, insofar as it covered clothing for men and boys, to be identical or similar to the goods covered by its earlier mark, I found, at paragraph 19, that ‘clothing’ within GA’s application is identical to ‘clothing for men and boys’ of SCL’s earlier mark. At paragraph 20, I found that ‘shoes and headgear’ are similar goods to ‘clothing for men and boys’ on SCL’s earlier mark.

6.

By way of clarification I confirm that the opposition succeeds in respect of all of the goods in GA’s specification as applied for in class 25. That being the case, the application may proceed to registration insofar as it seeks protection for goods in classes [identifying other classes in respect of which the application was made] but is refused in respect of all the goods for which registration is sought in class 25.”

Logically this comes first, because if I am with Armani on the merits of the actual decision then the other procedure-related question does not arise. So I will deal with it first.

I approach this task bearing in mind that this appeal is a review only. For the appeal to succeed in relation to the actual decision on similarity and confusion I must be satisfied that the Hearing Officer erred in principle; I cannot simply substitute my judgment for hers because I would have come to a different view.

Mr Fernando’s submission was that the Hearing Officer had made three errors which qualified as matters in respect of which he could appeal. They were:

She gave no weight to the absence of conceptual similarity.

He said that if one took a correct view of these matters it would be seen that there would be no confusion within the meaning of section 5(2)(b).

Miss Clark supported the reasoning and conclusions of the Hearing Officer in all material particulars. In particular she supported the conclusion on pronunciation, and defended the conclusion that the average consumer would not see the mark as an acronym. What the Hearing Officer carried out was the sort of multifactorial assessment which could not be interfered with on appeal.

The relevant legislative provision is Section 5(2) of the 1994 Act, which provides:

“A trade mark shall not be registered if because:… (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 mark is protected,

there exists a likelihood of confusion of the public, which includes the likelihood of association with the earlier trade mark”

I do not consider that the first criticism of Mr Fernando is justified. Conceptual similarity is one of the factors to be taken into account in considering the likelihood of confusion. It is capable of having its own force, and is also capable of operating to reinforce, or lessen (as the case may be) the confusion arising from similarity in visual appearance. The Hearing Officer considered conceptual similarity in paragraph 26. She concluded that the two words were capable of connoting the same underlying object (an axe, the hand tool), and although she does not articulate it she apparently considered that the average consumer, with the qualifications now well laid down in authority, would be aware of both. This, if correct, is capable of undermining the case of Armani which is that AX is a meaningless word while AXE has a meaning with the effect (on Armani’s case) that the visual similarity is reduced or removed. The Hearing Officer weighed the matter and has reached a finding about this which she was entitled to reach and which does not demonstrate any error of principle. Her conclusions were fed into the overall picture at paragraph 28 in a manner which again does not demonstrate an error of principle. She did what was required of her.

Next Mr Fernando complains about how the Hearing Officer dealt with the mark as an acronym. This was an important part of his case. If he could establish that the mark would naturally be read as an acronym it would sound very different, and he would be able to couple that with the dissimilarities in appearance to make a strong case for non-confusion. He complains that the Hearing Officer did not take into account positive evidence of the mark’s being used as an acronym and points to evidence before her which he said qualified under that head. In support of the mark Armani had submitted a joint witness statement of two of its directors, apparently based in Switzerland, which they said was based on personal knowledge and reports by managers and external advisers (not identified). It relied on use of the mark “AX” since 2005 in relation to goods and services in Armani’s “A|X Armani Exchange” stores, and refers to use elsewhere of the use of its “A|X Armani Exchange” trade mark. The deponents say that the “dominant part of the A|X Armani Exchange trade mark is the A|X element, and the mark is commonly used in this form:” and it then sets out the initials A|X in larger type with the word “Armani” under the A and “Exchange” under the X (in much smaller type so as to fit). For those reasons customers are said to perceive the mark as two letters A and X. A reproduction is produced which shows the letters AX in equal size and without the intervening vertical bar on the left breast of a T-shirt.

What that evidence shows is that Armani has used a mark with the letters AX in it but with a separator (the vertical bar). That may well more naturally be perceived as an acronym and not a word, and its use as an acronym is reinforced where the two full words are placed underneath the letters. However, by itself that says little or nothing about how the letters without the bar would be pronounced. No evidence of long-standing customer perception was produced. So that does not help Mr Fernando. There was the one piece of the evidence of the use of the mark without the separator on a shirt, but that says nothing special as to how customers would pronounce it. No evidence is given of how members of the public actually pronounce the mark without the separator. Accordingly, the Hearing Officer was correct in saying there is no evidence that customers would treat the mark in suit as an acronym, and she is justified in then forming her own view of how people would use it. She comes to the conclusion that some would and most would not treat it as an acronym. That is a justifiable finding too, with which this court will not interfere, especially if the character combination involves a mixture of cases as in “Ax” (the mark is not confined to capitals).

Nor can it fairly be said that the Hearing Officer over-emphasised the absence of punctuation in coming to this conclusion. Her view was one which she was entitled to reach. If she had wanted to she might have relied on the punctuated version (with the vertical bar) as what one would naturally do if one wanted to make sure the letters were pronounced as an acronym, in further support of her view.

The next two criticisms (see (iii) and (iv) above) both have the same root, namely the existence or otherwise of a conceptual underpinning. They both rely on the submission that AX (or Ax) is not a known word. If it is not then there is no conceptual link between the two marks, and if AX is not a known word in English then the consumer is more likely to pronounce it, and conceive it, as an acronym.

The Hearing Officer deals with the underpinnings of this point in paragraph 26 of her first decision. She points out that “Ax” as a word would be a known word to some but not all. To those to whom it was known it would summon the same image as the English “Axe”. She does not make a finding that the average consumer would or would not know it, but the average consumer is taken to be reasonably well informed, and I think that she is making an equivalent finding to a finding that such a consumer would know of both uses. Since neither party put in any evidence about that she was entitled to form her own view on it. I think that she did so. She did not err in principle in doing so. So she found that there was a word which would be known here, with a similar underlying concept to the English “axe”, and did not err in that respect.

In paragraphs 28 and 29 the Hearing Officer drew the factors together and came to her conclusion. It was one which she was entitled to reach as a result of her prior reasoning and findings and is one which cannot be successfully attacked.

Accordingly the appeal against her decision on similarity and confusion fails.

That makes it necessary to consider this point, which was in fact the point that took up the bulk of the time on this appeal. Put shortly, the point is this. Sunrich’s amended form TM7 seemed to limit the class of goods in relation to which registration was opposed. That was how Armani read it, and it claims to have run its case accordingly. When Sunrich seemed to be departing from this stance the point was taken up, and the case officer is said to have made it clear that opposition would be considered in relation to the limited class of goods (clothing for men and boys) only. From this Armani was entitled to assume, and did assume, that even if the opposition was successful (which ultimately it was) it would only be an opposition to a limited class of goods, and registration could and would take place in relation to the balance of the goods and services in the category of goods described under class 25 in the application. The Hearing Officer is said to have overlooked this in her first decision, and then overlooked it again in her second decision. She treated the opposition as if it were opposition to the whole of the class 25 goods (all clothing). Armani says that this was unfair and wrong as a matter of practice and procedure, and furthermore it produces a result which is contrary to Article 13 of the Trade Mark Directive. The argument increased in refinement as the hearing went on, but that is the gist of it.

Miss Clark’s answer to this was that a study of the two decisions demonstrated that the Hearing Officer was aware of the point and actually gave effect to the position so far as she could (which, in the circumstances, was not at all) in terms of the registration ordered. The authorities and principles applicable to registration demonstrated that the Hearing Officer was entitled, if not obliged, to take the specification as she found it, and was not entitled to re-write it herself (save possibly to apply blue pencil deletions which were uncontroversial as a result of her decision), and it was for the applicant to present an amended specification, probably in an unconditional application to amend, if it wanted a cut-down specification as a result of the limited opposition. It had never done that, or if the correspondence between the two decisions was to be taken as involving Armani proposing an alternative wording, that was rejected. Accordingly the Hearing Officer was justified in rejecting the application so far as it involved a registration under Class 25 (clothing).

The first point I need to deal with is whether Miss Clark is right in saying that the Hearing Officer actually dealt with the point in the sense that she understood that there was limited opposition (limited in the sense of its being limited to part only of the clothing class sought by Armani). I do not consider that she is right. Paragraph 15 demonstrates that the Hearing Officer rightly appreciated that the opposition did not extend to classes other than class 25 (though she is wrong in saying that the Notice of Opposition contains no such indication - in my view it did) but contains no acknowledgement that she was to consider opposition limited to a subset within Class 25 of clothing itself. I do not consider that paragraph 16 demonstrates such an acknowledgement. If she was steering herself by the formal evidence and submissions of the parties that might be understandable, because the main Armani material did not clearly draw the distinction, but the letter of 23rd December (which preceded Armani’s written submissions) is clear in what it records about the scope of the opposition advanced and the opposition which Armani was told that the Hearing Officer would consider. Miss Clark also submitted that the Registry’s letter of 4th May demonstrates that the Hearing Officer did understand and deal with the point, albeit she said it was infelicitously expressed. I do not think that that is right either. The letter itself actually acknowledges that the point was not expressly dealt with.

The second decision does not take it up either. It seems to be dealing with a case that was not apparently made. She is dealing with a “similarity of goods” point, not one going to the limit of the opposition posed.

Accordingly in my view the point is not dealt with or reflected in the decisions. The Hearing Officer has apparently decided more than she was asked to decide, and has (in this respect) apparently not decided the issue between the parties. I find that on the basis of the Notice of Opposition, and what passed thereafter (recorded in the December letter) the scope of the opposition should have been an opposition to the mark in suit in relation to men’s and boys’ clothing only, and not in relation to clothing beyond that.

Normal principles of fairness ought to require that that position be redressed. The Hearing Officer has gone beyond a determination of the dispute between the parties, and decided something that did not apparently need deciding and a case that Armani did not think it had to meet. That produces an unfair position which would require this court to act appropriately on an appeal.

However, Miss Clark says that it would still be wrong so to act. The core of her case at this point is that the Hearing Officer is not obliged to do anything other than to take the specification proposed by the applicant at face value, and was not obliged to carry out the amendments which successful partial opposition would otherwise require, other than straightforward deletions (which presumably would explain why the Hearing Officer was right to allow registration of the mark in all the other classes applied for - she merely blue-pencilled Class 25). Armani should have proposed alternative wording, and as it had not done so there was no wording on which the Hearing Officer could rule or make a determination. It was not for her to come up with it. At one stage she even said that Armani was put to some sort of election. Any amendment application (limiting the goods in respect of which the mark was applied for) had to be unconditional, so if formulated such an application would have the effect of abandoning the full registration which was Armani’s primary case. The basis of this last point shifted during the course of the hearing, probably because it would be manifestly unattractive if the mere fact of a limited opposition were to put the applicant in a false dilemma during the application. Its effect was modified in the course of the hearing to a requirement that wording be proposed at some relevant stage so that it can be considered, in the absence of which the whole application would fail (at least in relation to the class in question). That point of time, too, shifted. Miss Clark eventually accepted that it did not have to be at the beginning of the hearing, and could be at the end, but it still had to be an unconditional application. Then she further conceded that the election did not have to be so unconditional that it would prevent an appeal on the issue between the parties. But her bottom line was that there has been no appropriate alternative unequivocal wording for the specification on which the Hearing Officer could base a decision in favour of registration for a more limited class. In the absence of such a proposal the application falls to be dismissed in relation to the whole class.

This shifting ground in my view demonstrates something unsatisfactory about the whole thesis. Miss Clark starts (logically speaking) by acknowledging the force and effect of Article 13 of the Trade Mark Directive (89/104), but claimed to have authority on her side in relation to how limited oppositions should be resolved, so it is necessary to consider both.

Article 13 (which it was common ground applied to this application, though Miss Clark said one had to consider how and at what stage) provides:

“Where grounds for refusal of registration … exist in respect of only some of the goods or services for which that trade mark has been applied for .., refusal … shall cover those goods or services only.”

It was not suggested that in this case the Hearing Officer was entitled to take any relative grounds point herself, and she did not do so. She was to, or was supposed to, rule on the objections made.

Thus far, therefore, it seems that the parties have some control over the scope of the debate at an opposition hearing. The applicant decides what it wants to apply for, and (so far as relative grounds are concerned) the opponent decides what it wants to object to and why. That which is not objected to (being outside the grounds of the objection) ought to be allowed (subject to other points that might be taken about it, an aspect which does not arise here). The Hearing Officer will decide the points taken by the objector. So far as the grounds raised are good, (but only that far) the application will not be allowed.

I do not think that Miss Clark objects to any of this. Her point seems to come in at the stage of ascertaining what is appropriate for registration. By the end of the appeal she seemed to be saying the following things - an alternative wording needed to be introduced at the hearing below if it was to be considered at all; an alternative wording has to be in the form of an unconditional application to amend the specification; there was no such application; so that is an end of the matter, and a revised wording cannot be introduced on an appeal.

Miss Clark relies heavily on the decision of Mr Richard Arnold (as he then was) as the Appointed Person in Sensornet Ltd’s Trade Mark Application [2007] RPC 7. That was a case of an objection taken by the examiner, and not opposition proceedings such as these. The procedural tangle into which the proceedings had got themselves is not the same as in the instant case. What Miss Clark seeks to get from this case is the existence of an obligation on the applicant to propose amendments, and that an application to amend must be unconditional.

Mr Arnold suggested a regime which should operate where, in ex officio proceedings, an examiner considered that there was a potential bar to registration in respect of some, but not all, of the goods in the class for which registration was sought. He held that the registration should be allowed to the extent of the unopposed to goods. If the permitted goods could be successfully achieved by the deletion of goods with the metaphorical blue pencil then that could and should be done. That did not require an amendment of the specification (see paras. 52-53). The same should, in his view, apply in opposition hearings (para. 57).

Then in paragraph 59 he turned to the situation where the problem could not be fixed by the application of a blue pencil:

“59 …. In Hyde I held that there was no difference in principle between applying a blue pencil to the existing specification on the one hand, and amending the specification either by adding a disclaimer or by re-drafting the specification so as to define a narrower class of goods or services within a broader class on the other hand. On consideration of MISTER LONG, and Nettec and further reflection, however, I am less convinced that this is correct. It seems to me that it is arguable that: (i) the applicant rather than the registrar has control over the wording of the specification; (ii) the registrar has no power to order the applicant to alter the wording of the specification; (iii) section 37(3) requires the registrar during examination to afford the applicant an opportunity to amend the specification, but the onus is upon the applicant to take that opportunity; (iv) there is no such requirement during opposition proceedings, but nevertheless the applicant can avail himself of the facility for self-help afforded by section 39 [which provides for amendments of an application, inter alia so as to limit the specification]; (v) in the absence of an application to amend the specification (or perhaps an undertaking or offer to apply to amend), the registrar must take the wording of the specification as he finds it; and (vi) if a specification is re-worded after publication, that might prejudice third parties in manner that mere deletion of some of the goods or services would not, which would be a reason for requiring amendment pursuant to s.39 and r.18. For the purposes of the present appeal, it is not necessary to come to a conclusion on this issue. I shall therefore not explore it any further.”

All this is self-avowedly obiter, and would not be binding on me even if it were not, but it is obviously entitled to respect. I shall consider below the extent to which it assists on the facts of the present case.

Miss Clark also relied on what Mr Arnold said (again obiter) about the non-availability of conditional applications to amend. At paragraph 64 he queried whether such applications were permissible, but since the parties had agreed that they were in his case, he remitted the matter in accordance with their agreement. He did, however point out that the Court of First Instance did not allow it, and if section 39 of the English Act were construed in the same way as the European apparent equivalent then it would not be allowed here either (para. 65). He did not actually decide the point, however, and Miss Clark took me to one of the cases that he referred to, namely Ellos v OHIM [2004] ETMR 7. The Court there found that Art 44(1) of Regulation 40/94 allowed the withdrawal of a trade mark application or the restriction of goods or services contained therein, and held:

“61.

Thus, the power to restrict the list of goods or services is vested solely in the applicant for the Community trade mark who may, at any time, apply to the Office for that purpose. In that context, the withdrawal, in whole or in part, of an application for a Community trade mark must be made expressly and unconditionally.

62.

In the present case, the applicant proposed to withdraw the goods within Class 25 from the application for the Community trade mark ELLOS if the Board was considering rejecting such an application … Nevertheless, the applicant did not make the withdrawal expressly and unconditionally. Accordingly, the applicant cannot be held to have made a partial withdrawal of the application in question for a Community mark.”

The examiner had (inter alia) refused registration in Class 25, and the Board of Appeal had refused an appeal in relation to that. The CFI upheld that decision. Why it was that the applicant sought to withdraw the application below if it was going to lose that Class anyway is not apparent, but if those were the simple facts then it is not surprising that the CFI thought that such a conditional application was inappropriate. Be that as it may, I do not consider that the CFI should be taken as laying down a rule which would stand in the way of procedures in the present case designed to ensure the determination of the real dispute if those procedures require something short of an unconditional application for amendment.

In Astex Therapeutics v OHIM [2009] ETMR3 an appellant to the CFI made a conditional application to amend its specification in the CFI itself. The Court held that applications to amend had to be made to OHIM, and had to be unconditional. To allow the amendment in the Court would have amounted to changing the subject matter of the proceedings, which was prohibited by the Rules of Procedure. Miss Clark relied again on the principle that applications for amendment had to be unconditional. I accept that this is the case in proceedings in OHIM, but I was not taken to all OHIM’s procedures in order to establish quite how far that goes, and in any event the present proceedings are in the UK Registry, not in OHIM. Accordingly, this case does not go as far as Miss Clark would like it to go.

In the circumstances there is no case law binding on me which deals with the point I have to decide, and I have to decide it on the footing of the statutory provisions as to applications and amendment, such rules of procedure as govern the proceedings, and on the footing of normal requirements of procedural and substantive fairness. Mr Arnold’s views do not really deal with the sort of situation which arises in the present case. So far as they indicate that the Hearing Officer has to take the specification as he or she finds it, he is not dealing with a case where there needs to be a debate in inter partes proceedings about the scope of the permitted registration. If applied too literally the concept would prevent the proper resolution of part of the real dispute.

What the present situation involves is the proper identification and resolution of the dispute arising out of the opposition, and the following points apply:

The sort of procedures that can be adopted to achieve this are referred to in the decision of Mr Geoffrey Hobbs as the Appointed Person in Citybond Trade Mark [2007] RPC 13. At paragraphs 17 to 20 he set out a range of possibilities in which a dispute as to residual wording could be determined. They ranged from the applicant deciding to limit its application to some different specified wording in an unconditional amendment application (paragraph 19) to a deferment of the question of alternative wording to the stage after consideration of the formulated objection (paragraph 20), with other possibilities in between. In that last context he refers to the delivery of an interim decision. I respectfully agree with and adopt what he says about the various procedural possibilities. I do not set them out again here because it is unnecessary to do so. It will be noted that, contrary to one of the positions adopted by Miss Clark, they do not rule out a fallback position which has not yet been articulated in an unconditional amendment application. The unarticulated thesis underlying all of Mr Hobbs’ case management possibilities is the need to adopt the procedure appropriate for the case. His proposals, correctly in my view, do not involve tying the applicant down to a form of words at a stage which is unfairly premature, and they do involve enabling the Hearing Officer to decide the issues that need deciding and to adopt, and require, case management decisions which achieve that.

Applying those points and objectives, it is my clear view that Armani has not had the benefit of having the registration to which it is entitled under Article 13. The opposition has succeeded, but only to the extent of preventing the registration applying to men’s and boys’ clothing. The Hearing Officer’s decision has failed to give effect to the extent to which it succeeded, not least because she does not seem to have appreciated that it was a partial opposition case to which Article 13 applies. That probably explains why she did not raise the point in her first decision, but it is a shortcoming nonetheless. The point was taken by Armani between the two decisions, but that still did not lead to procedural steps being taken to resolve it.

Miss Clark’s answer to this point is that Armani ought to have proposed an unconditional amendment, and did not do so. It is now too late for it to do so. Armani is accused of running a “fallback” position on this appeal which it did not run below, and it is now too late. It was not clear to me when it became too late - I think she would say the last opportunity was after the first decision - but that is the essence of this part of her case.

That is not a good point. Armani could be criticised for one thing procedurally, and that is that neither its evidence nor its formal written submissions focused on the partial nature of the opposition or proposed a wording which would be appropriate if the opposition were successful. If it had done that then I strongly suspect that the point would have come out in the wash at the first stage. However, it certainly did take the point in a manner which gave rise to the December letter, and it got an assurance that it was a partial opposition that would be considered. With hindsight it may be said that what ought to have happened at that point was some case management to decide how and when to deal with what happened if the limited opposition succeeded. That did not happen, but it would be grossly unfair if the consequence of that was that Armani was shut out from proposing some alternative wording. It is even unfairer when Armani appreciated what had apparently happened and did actually propose some alternative wording, and yet still the point was not addressed.

The upshot is that the scope of Armani’s Article 13 entitlement has not been given effect to, contrary to the provisions of Article 13 and contrary to the principles of fairness. True it is that it has not made an unconditional application to amend the specification, but I do not regard that as fatal. It could even be obstructive to sensible decision-making at this stage. Suppose Armani made such an application and it turned out that there was a well-founded objection as to whether that precise formulation gave proper effect to the limits of the opposition. Would it then lose the whole of its registration application? That would probably be absurd. Would it then be able to mount another amendment application to fix the first problem? That would be cumbersome; and what if the opponents fashioned a limited objection to that? There would then have to be a third application, and so on. I do not think that the answer to the technical or procedural problems lies in that overly formalistic method of resolving the dispute, especially in the present case. The answer to this part of the appeal does not lie in Armani’s failure to make an unconditional amendment application.

I therefore find that the Hearing Officer erred in failing to give proper effect to the fact that the opposition in this case was limited only, and erred in ruling against the whole of the Class 25 part of the application. She ought to have appreciated the scope of the opposition and provided a mechanism for ensuring that she was able to give a ruling as to what was left of the registration after the successful opposition. I shall therefore allow that part of the appeal of Armani. The question of the extent to which its registration application can go forward will have to be determined. My present view is that the matter should be remitted to the Hearing Officer so that that can be done, but I will hear submissions from any party who proposes a different technique for dealing with the matter.