Multi-Access Ltd v Guanghzhou Wong Lo Kat Great Health Business Development Co Ltd

This is an appeal from decision BL O-220-19 of Mr Mark King, a Hearing Officer of the United Kingdom Intellectual Property Office (“UKIPO”), acting on behalf of the Registrar of Trade Marks, dated 29 April 2019 (“the Decision”). By the Decision, the Hearing Officer revoked two United Kingdom trade mark registrations numbered 1495166 and 1495167 (individually, “166” and “167” and collectively, “the Registrations”) on the grounds of non-use under section 46 of the Trade Marks Act 1994 (“the Act”). The registered proprietor of the registrations at the time of the Decision was Multi-Access Limited (“the Proprietor”), who is the appellant in these proceedings.

The Registrations were each registered for the following sign (“the Trade Mark”):

The applications to revoke the Registrations were filed by Guangzhou Wong Lo Kat Great Health Business Development Co Ltd (“the Applicant for Revocation” or “the Applicant”) and were given proceeding numbers 502021 and 502022, which were then consolidated. Revocation was sought in relation to various periods of non-use:

In the proceedings below, only the Proprietor filed evidence. There was no request for a hearing, so the Hearing Officer issued his Decision “following a careful consideration of the papers”. In summary, the Hearing Officer found that the Registrations had not been put to genuine use in the United Kingdom for the goods for which they were registered, and ordered that 166 be revoked from 10 July 1998 and that 167 be revoked from 3 July 1998. He also ordered that the Proprietor pay the Applicant’s costs in the sum of £1600.

The Proprietor appealed to this court, and I heard the parties on 29 October 2019. The Proprietor was represented at the hearing by Mr Christopher Hall of counsel, and the Applicant was represented by Mr Martin Krause of Haseltine Lake Kempner LLP. I also had the benefit of detailed written skeleton arguments, for which I am grateful. At my invitation, the Proprietor filed further written submissions on 5 November 2019 dealing with a number of points raised in the course of the hearing and the Applicant responded to those submissions in writing on 13 November 2019. That day, the Proprietor indicated it would not be filing any further submissions in reply.

The approach which the Court should take on an appeal from the Registrar of Trade Marks was not in dispute. Floyd J (as he then was) summarised the approach in Galileo International Technology, LLC v European Union (formerly European Community) [2011] EWHC 35 (Ch) at [11] to [14]:

“11.

This is an appeal brought pursuant to section 76 of the Act. Such appeals are not by way of a rehearing but are a review. The principles were set out by Robert Walker LJ in Bessant and others v South Cone Inc [2003] RPC 5, at paragraphs 17 to 30. Robert Walker LJ said at [28]:

"The appellate court should in my view show real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle."

12.

At paragraph 29, Robert Walker LJ said this:

"The appellate court should not treat a judgement or a written decision as containing an error principle simply because of its belief that the judgement or decision could have been better expressed."

13.

In that case the High Court judge had reversed the decision of a Hearing Officer. The Court of Appeal held that he had been wrong to do so. Robert Walker LJ in dismissing the appeal said this:

"I consider that the Hearing Officer did not err in principle, nor was he clearly wrong."

14.

I conclude that, unless I am satisfied that the Hearing Officer made an error of principle, I should be reluctant to interfere. I should interfere if I consider that his decision is clearly wrong, for example if I consider that he has drawn inferences which cannot properly be drawn, or has otherwise reached an unreasonable conclusion. I should not interfere if his decision is one which he was properly entitled to reach on the material before him.”

Counsel for the Applicant also drew my attention to a recent decision of the Supreme Court in Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15 at [78] to [81] (per Lord Hodge JSC, with whom Lady Hale PSC and Lord Kerr, Lord Sumption and Lord Briggs JJSC agreed):

“78.

Finally, before addressing directly the question whether the Court of Appeal was entitled to reverse Birss J’s finding of non-obviousness, I remind myself of the limits of an appellate court’s power to overturn the evaluation of a trial judge in this field. Where inferences from findings of primary fact involve an evaluation of numerous factors, the appropriateness of an intervention by an appellate court will depend on variables including the nature of the evaluation, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence: South Cone Inc v Bessant, In re Reef Trade Mark [2002] EWCA Civ 763; [2003] RPC 5, paras 25-28 per Robert Walker LJ.

79.

An experienced patent judge faced with a challenge to a patent on the ground of obviousness, and who has heard oral evidence including crossexamination, carries out an evaluation of all the relevant factors, none of which alone is decisive but each of which must be weighed in the balance in reaching a conclusion. In Biogen Inc v Medeva plc [1997] RPC 1, 45, Lord Hoffmann emphasised the need for appellate caution in reversing the judge’s evaluation of the facts where the application of a legal standard involved no question of principle but was simply a matter of degree. He held that it would be wrong to interfere with the judge’s assessment if no question of principle were involved.

80.

What is a question of principle in this context? An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. What is the nature of such an evaluative error? In this case we are not concerned with any challenge to the trial judge’s conclusions of primary fact but with the correctness of the judge’s evaluation of the facts which he has found, in which he weighs a number of different factors against each other. This evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge’s conclusion is outside the bounds within which reasonable disagreement is possible: Assicurazioni Generali SpA v Arab Insurance Group (Practice Note) [2002] EWCA Civ 1642; [2003] 1 WLR 577, paras 14-17 per Clarke LJ, a statement which the House of Lords approved in Datec Electronic Holdings Ltd v United Parcels Service Ltd [2007] UKHL 23; [2007] 1 WLR 1325, para 46 per Lord Mance.

81.

Thus, in the absence of a legal error by the trial judge, which might be asking the wrong question, failing to take account of relevant matters, or taking into account irrelevant matters, the Court of Appeal would be justified in differing from a trial judge’s assessment of obviousness if the appellate court were to reach the view that the judge’s conclusion was outside the bounds within which reasonable disagreement is possible. It must be satisfied that the trial judge was wrong: see, by way of analogy, In re B (A Child) (Care Proceedings Threshold Criteria) [2013] UKSC 33; [2013] 1 WLR 1911, paras 90-93 per Lord Neuberger, para 203 per Lady Hale.”

So far as is relevant, section 46 of the Act provides as follows:

“46.

Revocation of registration.

Section 100 of the Act provides as follows:

“100.

Burden of proving use of trade mark.

The Decision is set out in 46 paragraphs. After having summarised the background to the applications for revocation, the Hearing Officer set out the evidence filed by the Proprietor at [5] to [19] of the Decision.

The evidence before the Hearing Officer comprised four witness statements.

Ms Wong Kin Yee Agnes signed a witness statement on 17 September 2018. Ms Wong is a director of Wong Lo Kat (Enterprises) Limited. She is a descendant of Mr Wong Chak Bong, commonly known as Wong Lo Kat, the creator in the early 1900s of a secret formula for a herbal tea known as Wong Lo Kat. Ms Wong has been involved in the family herbal tea business since 1971. Her evidence was only in relation to dry goods: teabags, tea extracts and instant tea mix.

By a written licence dated 24 June 2016, the Proprietor granted a licence from 1 June 2011 to use the Trade Mark, including in the United Kingdom. The Hearing Officer referred to this as the WKLE

Ms Wong also exhibited to her witness statement nine invoices dated between 24 February 2013 and

Ms Wong also exhibited historical screenshots of the website to be found at www.tradewindsorientalshop.co.uk (“the Tradewinds website”) obtained from the Internet Archive for 16 March 2015, 16 January 2017 and 24 June 2017, as follows (showing the example from 16 March 2015; the others are relevantly identical):

Ms Wong also exhibited an undated poster, which lists Cheong Hing Tea Co Ltd as the UK distributor, stating that it was used to advertise sales of paper-packed herbal tea drinks from 1995:

The second witness statement relied on by the Proprietor was that of Mr Chan Hung To dated 19

Mr Chan is a director of the Proprietor. His evidence was in relation to canned herbal tea products in liquid form. He exhibited (among others) two further written licences:

The Hearing Officer noted comments in Mr Chan’s statement that due to the various licences in place, any goods bearing the Trade Mark used the Trade Mark with the consent of the Proprietor. Mr Chan provided sales figures for “canned herbal tea products” manufactured and sold pursuant to the HTHC Licence and exported to customers in the UK as follows:

Mr Chan further exhibited what he described as designs for the packaging applied to the canned herbal tea products exported to the UK, and dated August 2009, October 2010, March 2012 and November 2012, the earliest of which is shown here (but the others are relevantly identical):

Mr Chan also exhibited copied of invoices dated between 8 January 2010 and 28 March 2013 and shipping documentation dated prior to 11 April 2013, and stated that these demonstrate sale and shipment of products to the UK importer, Interlink Direct Ltd (“Interlink”), a UK-based importer of “oriental food and beverages”. The Hearing Officer noted that these invoices were addressed to the

The fourth and final witness statement relied on by the Proprietor was signed by Mr Fu Kit Kwok on 19 September 2019. The Hearing Officer referred to him as Mr Kwok, but the parties referred to him as Mr Fu, and so shall I. Mr Fu is a director of Interlink. Mr Fu’s evidence was also in relation to canned herbal tea products in liquid form. Mr Fu exhibited invoices dated between 15 January 2010 and 11 April 2013 for “Wong Lo Kat Canned Herbal Tea” which, the Hearing Officer noted, demonstrated that the products were shipped from Hong Kong to the UK. Mr Fu stated that the products were then sold by Interlink to its customers in the UK under a mark which he set out in his witness statement. That mark is a version of the Trade Mark with the first and third characters reversed.

At [20] to [22] of the Decision, the Hearing Officer set out the relevant sections of the Act which I have excerpted above, and the summary of the law relating to genuine use of trade marks in Arnold J’s (as he then was) decision in Walton International Ltd & Anor v Verweij Fashing BV [2018] EWHC 1608 (Ch) (“Walton”) at [114] and [115]. No criticism was made of the Hearing Officer’s explication of the law or the relevant test he had to apply.

At [23] to [36] of the Decision, the Hearing Officer set out his findings of facts and his application of the law on genuine use to those facts. He started by reminding himself of the relevant periods to which evidence of genuine use must relate.

In relation to the section 46(1)(a) periods, the Hearing Officer noted the evidence of the origins of Wong Lo Kat herbal tea, and commented that it was sold around the world, including in the UK. He noted the comment of Ms Wong that no invoices or purchase orders for sales in the UK during the section 46(1)(a) period had been kept, except for the undated poster. He stated at [24] “[t]his clearly does not demonstrate use of the [Trade Mark] during the [section] 46(1)(a) periods”.

In relation to the section 46(1)(b) period, the Hearing Officer noted that the Act provides for the situation where use is commenced or resumed after the expiry of a five-year use period but before the application for revocation has been made – such use is sufficient to avoid revocation for non-use. He then examined the evidence of use during the second period, being 23 March 2013 to 22 March 2018.

In doing so, the Hearing Officer cited two decisions of Mr Daniel Alexander QC sitting as an Appointed Person. First, in Awareness Limited v Plymouth City Council (Case BL O/236/13) (“Awareness”), Mr Alexander said this:

“22.

The burden lies on the registered proprietor to prove use... However, it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal (which in many cases will be the Hearing Officer in the first instance) comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaken, having regard to the interests of the proprietor, the opponent and, it should be said, the public.”

and further at paragraph 28:

“28.

... I can understand the rationale for the evidence being as it was but suggest that, for the future, if a broad class, such as “tuition services”, is sought to be defended on the basis of narrow use within the category (such as for classes of a particular kind) the evidence should not state that the mark has been used in relation to “tuition services” even by compendious reference to the trade mark specification. The evidence should make it clear, with precision, what specific use there has been and explain why, if the use has only been narrow, why a broader category is nonetheless appropriate for the specification. Broad statements purporting to verify use over a wide range by reference to the wording of a trade mark specification when supportable only in respect of a much narrower range should be critically considered in any draft evidence proposed to be submitted.”

Second, the Hearing Officer noted Mr Alexander’s comments in Guccio Gucci SpA v Gerry Weber International AG (Case O/424/14) as follows (original emphasis):

“The Registrar says that it is important that a party puts its best case up front - with the emphasis both on “best case” (properly backed up with credible exhibits, invoices, advertisements and so on) and “up front” (that is to say in the first round of evidence). Again, he is right. If a party does not do so, it runs a serious risk of having a potentially valuable trade mark right revoked, even where that mark may well have been widely used, simply as a result of a procedural error. [...] The rule is not just “use it or lose it” but (the less catchy, if more reliable) “use it - and file the best evidence first time round - or lose it””.

At [28], the Hearing Officer cited Mr Alexander’s comments in Awareness and said this (original emphasis):

“If any question arises in UK proceedings as to the use to which a UK registered trade mark has been put, it is for the proprietor to show what use has been made of the mark. Therefore, the applications to revoke the registrations for non-use places a burden of proof on the proprietor to prove the use which has been made of the mark during the relevant period. It is clear from the guidance that a number of factors must be considered when assessing whether genuine use of the mark has been demonstrated by the evidence filed. The responsibility is on the proprietor to provide sufficiently solid evidence to counter the applications for revocation, a task which should be relatively easy to attain.”

Against that background of the nature of the assessment of genuine use, the Hearing Officer reviewed the Proprietor’s evidence:

At [33] to [36] of the Decision, the Hearing Officer said this:

“33.

All bar the 28 March 2013 invoice [to Interlink] are before the relevant period. Whilst I acknowledge that I may take into consideration evidence which casts light on the circumstances during the relevant period, invoices before rather than during the relevant period suggest that use has ceased. For the same reasons the evidence [that goods were sold between 2010 and 11 April 2013 and Mr Fu’s statement that goods were sold until June 2014] does little (if anything) to assist the [P]roprietor.

34.

I note that Mr [Fu] evidences a sale in April 2013 and states that there are subsequent sales until 2014 but no evidence to support this was filed. I also note that Mr [Chan], director for [sic] the [P]roprietor, provides invoices and sales figures for the period 8 January 2010 to 28 March 2013, but these merely overlap the beginning of the relevant five-year period by a few weeks. Further, the price of the goods during 2013 ($22,000) are considerably less than prior years ($193,000 for 2012, $322,000 for 2011 and $257,000 for 2010). It is reasonable to form the view that sales took place up to April 2013 and no further. If sales had taken place after this period, it is likely that such material and knowledge of the sales would exist and could have been submitted as evidence.

35.

Notwithstanding the above, the evidence as a whole does not create an overall picture that the registrations have been genuinely used in the UK. There is an absence of evidence that one would hope to see when assessing genuine use. For example, there are no sales figures for the UK, nor are there any advertising figures or examples of how the goods are being advertised in the UK with the consent of the [P]roprietor. The only example of the product being placed for sale in the UK is the advert placed on one UK website, apparently by a third party (see above).

36.

Taking all of the above into account, I am entirely satisfied that the [P]roprietor has not demonstrated that it has used the registrations in a way that is warranted to maintain or create a market for the registered goods during the relevant section 46(1)(b) period of 23 March 2013 – 23 March 2018.”

At [37] of the Decision, the Hearing Officer noted “this is typically the end of the matter”. However, he nevertheless went on to deal with an argument in relation to the specification. The Applicant had argued that even if the Proprietor had been able to establish genuine use, the use established would not have been for the goods covered by the Registrations. The Applicant argued before the Hearing Officer that most of the invoices related to “herbal tea” in the form of tea bags, instant tea and tea extracts. These products, the Applicant argued, are classified in Class 30 of the Nice Classification, not in Class 5 or Class 32. Thus, even if the use alleged had been established, the Registrations would still be vulnerable to revocation for non-use.

The Hearing Officer then set out extracts from Henry Carr J’s judgment in Pathway IP Sarl v Easygroup Ltd [2018] EWHC 3608 (Ch) (“Pathway”), and noted at [40] of the Decision:

The Hearing Officer then found (at [42]) that the specifications “beverages for medicinal purposes; all included in Class 5” and “beverages; all included in Class 32” did not lack clarity and precision. He held that they do not cover herbal tea either in bag or instant form “which are added to water (usually hot) to produce the end consumable product”. Therefore, even if he had found genuine use of the Trade Mark in relation to these goods, they are not the goods covered by the Registrations. The Hearing Officer then decided:

“And even if I am wrong about this, the respective [R]egistration[s] include the following restrictions, “all included in [C]lass 5” and “all included in [C]lass 32”. Therefore, the wording of the specification itself means that the use of the [Trade M]ark in relation to goods classified in other classes is irrelevant. Tea for making up into beverages, including herbal tea, is proper to [C]lass 30. This was also the position at the date of the applications which led to the [R]egistrations. In these circumstances, the judgment in Pathway … makes no difference.”

The Proprietor appealed the Decision on five grounds:

The Grounds of Appeal, the parties’ skeleton arguments and the submissions at and following the hearing all focussed on the section 46(1)(b) period. I therefore asked counsel for the Proprietor whether it pressed its appeal in relation to the section 46(1)(a) period and was told that it did, but “not too highly”.

This ground of appeal applies only to the section 46(1)(b) period.

Under its first ground of appeal, the Proprietor expressly accepted in its Grounds of Appeal that the Hearing Officer correctly identified the relevant five year period under section 46(1)(b) but submitted that the Hearing Officer then substituted an arbitrary period of less than five years in place of the correctly identified period. This was said to have occurred in [33] and [34] of the Decision, which I have set out in full above.

There is nothing in these paragraphs which suggests that the Hearing Officer had in mind any period other than the relevant period which he had correctly found at [2] and repeated at [23] of the Decision. He further set out the relevant period at [25]. He correctly calculated the relevant period at [31], at [33] and again at [34]. He again set out the correct dates for the relevant period at [36]. There is nothing in his review of the evidence, his comments at [33] or [34] or indeed elsewhere in the Decision that supports the notion that he misunderstood the period, or applied a different period. To the contrary, having correctly set it out, he correctly used it throughout the Decision.

I also do not consider that there is anything in the Proprietor’s argument that the Hearing Officer focussed on when use “stopped” rather than when use “occurred”. The Proprietor accepted that the Hearing Officer set out the correct provisions of the Act in relation to non-use, and the correct case law. There is nothing in the Hearing Officer’s Decision to suggest that he considered that genuine use had to continue throughout the relevant period, or a significant part of the period. What the Hearing Officer did find was that the very small amount of use at the beginning of the relevant period was insufficient to establish genuine use of the Trade Mark. At [33] (one of the two paragraphs of which the Proprietor complains), the Hearing Officer referred to the 28 March 2013 invoice. That invoice is for 2,260 units of “Wong Lo Kat Canned Herbal Drink” addressed to Interlink in Essex, UK. The Hearing Officer clearly did not ignore the evidence, because he referred to it at [33], and also at [17] and [29(c)]. His conclusion that sales took place up to April 2013 and no further does not support the submission that he applied the wrong test – it was merely a shorthand way of referring to his findings that the only sales during the relevant period were those up to April 2013. I will return below to a more detailed analysis of the evidence, as that is a separate ground of appeal.

In my judgment, the Hearing Officer applied throughout his Decision the correct section 46(1)(b) period and did not misdirect himself to consider whether use stopped rather than occurred during the relevant period. I reject this ground of appeal.

This ground of appeal applies only to the section 46(1)(b) period.

The Proprietor accepted that the Hearing Officer identified the correct legal test at [20]-[22] of the Decision, but submitted that the Hearing Officer erred at [35] when he rejected the evidence of use on the basis that “as a whole [it] does not create an overall picture that the [R]egistrations have been genuinely used in the UK”.

The Proprietor submitted that the Hearing Officer applied an “overall picture” test, and that that test is not to be found in the Act or case law on genuine use. Further, the Proprietor suggested that the

“overall picture” test may have related to the Hearing Officer’s alleged shortening of the relevant period. I have already found that that is not what the Hearing Officer did, so I need say no more about that submission.

The Applicant submitted that, by using the phrase “overall picture”, the Hearing Officer was not applying (nor suggesting he was applying) a test different to those he set out at [20]-[22] of the Decision, but rather was expressing the global assessment that he was bound to make in reaching his decision, following the guidance set out at [115(6)] of Walton. The Proprietor would appear to accept that the tribunal must assess the totality of the evidence – at paragraph 3(d) of its Grounds of Appeal, it criticised the Hearing Officer for failing “to appreciate the totality of the evidence that was before him”.

I agree with the Applicant’s submissions. Walton at [115(8)], referring to Case C-141/13 P Reber Holding & Co KG v OHIM [EU:C:2014:2089], notes that not every proven commercial use of a mark may automatically be deemed to constitute genuine use. Rather, the tribunal assessing genuine use must take into account “all the relevant facts and circumstances”: Walton at [115(6)]. Walton enumerates non-exhaustively facts and circumstances which may be relevant – including at (f) “the evidence that the proprietor is able to provide”. At [35] of the Decision, the Hearing Officer found “an absence of evidence that one would hope to see when assessing genuine use” – and listed sales figures, advertising figures and examples of how the goods were advertised in the UK. These would appear to be references to the decision of Mr Alexander in Guccio Gucci, which the Hearing Officer set out at [27] of the Decision.

In my judgment, the Hearing Officer did not apply the wrong test – rather, he stated the test correctly and conducted an holistic analysis of the totality of the evidence before him in order to take into account all the relevant facts and circumstances. This is further made clear by his statement at the beginning of [36] – “[t]aking all of the above into account”. The Hearing Officer applied the correct test correctly. I therefore reject this ground of appeal.

Again, this ground of appeal applies only to the section 46(1)(b) period.

In its Grounds of Appeal, the Proprietor particularised this ground as set out above at paragraph 35. In its skeleton argument, and its counsel’s oral submissions, the Proprietor adopted a different approach, working through the evidence, and criticising the Hearing Officer’s findings in relation to it.

As noted above, the Proprietor did not avail itself of a hearing before the Hearing Officer. Rather, the Hearing Officer had before him the evidence, and the written submissions of the parties (all of which were also before me). The Proprietor’s submissions before the Hearing Officer state upfront in paragraph 3 “[t]he Proprietor relies on its evidence”. Those submissions then go on to critique the Applicant’s written submissions. Nowhere in those written submissions does the Proprietor set out its positive case of the use which it says it can prove. As section 100 of the Act makes clear, it is for the Proprietor to prove genuine use. Hearing Officers of the UKIPO will be assisted by Proprietors who set out clearly the use that is relied on, the goods/services for which it is claimed that use is made, and where that evidence is to be found in the witness statements.

The Applicant for registration accepted that the Hearing Officer’s analysis of the evidence was “pithy” but described that as “not uncommon” in Registry decisions. Further, the Applicant submitted that an absence of detailed analysis did not mean the Hearing Officer overlooked the evidence.

The Proprietor’s attack on the Hearing Officer’s treatment of the evidence started with Ms Wong’s evidence. The Proprietor’s main criticism was that the Hearing Officer had failed to recall Ms Wong’s evidence that “[a]ny products bearing the Trade Mark … manufactured and distributed pursuant to the WKLE Licence and subsequently placed on the United Kingdom market are and have been placed on the United Kingdom market with the consent of Wong Lo Kat (Enterprises) Limited”, as Ms Wong had set out in paragraph 4.7 of her witness statement. Since Wong Lo Kat (Enterprises) Limited was licensed by the Proprietor, any products on the UK market were said to be there with the consent of the Proprietor, an “important evidential point which the Hearing Officer failed to appreciate”. I return to this below.

The Proprietor also criticised the Hearing Officer’s treatment of the invoices exhibited to Ms

The Proprietor’s criticisms of the Hearing Officer’s handling of Mr Chan’s evidence started with the submission that the Hearing Officer failed to note that both the WKLE Licence and the HTHC Licence covered use of the Trade Mark in the UK – the WKLE Licence being for tea bags, tea extracts and instant drink mixes (dry goods) and the HTHC Licence covering drinks in liquid form. I do not accept this criticism. The Hearing Officer accurately set out the coverage of the WKLE Licence at [6] of the Decision. Whilst his treatment of the HTHC Licence is not as clear, [13] to [16] of the Decision which deal with the HTHC Licence clearly indicate that the products being referred to are “canned herbal tea products”. As no other “drinks in liquid form” are alleged to have been sold under the HTHC Licence, I do not consider that the Hearing Officer can be criticised for referring to “canned herbal tea products” rather than “drinks in liquid form”.

The Proprietor also criticised the findings of the Hearing Officer in relation to whether the goods on the UK market were sold with the consent of the Proprietor. The Proprietor submitted that there was clear evidence from Ms Wong (referred to above at paragraph 52) and of Mr Chan, which stated, “as a matter of fact” that the Proprietor gave consent to all use in the UK. I also reject this criticism, although not in totality. I start with Ms Wong. The Hearing Officer raised his concerns on this issue at [32] of the Decision in relation to the Tradewinds website. His primary criticism of this aspect of Ms Wong’s evidence was that there was no indication of how many products were sold, nor any corroborating evidence to show that sales in the UK actually took place, or their extent. In my judgment, this was sufficient for him to reach his conclusion that there was no genuine use of the Trade Mark. As a secondary criticism, he held that there was no evidence that the Tradewinds website obtained the relevant product from a company authorised by the Proprietor. That finding was correct as far as it went. But it did ignore the further statement of Ms Wong in paragraph 5.5 of her witness statement that “I confirm that the products shown … are products manufactured and sold pursuant to the WKLE Licence”. So the Hearing Officer did have before him evidence that the products shown on the Tradewinds website were at least initially genuine products, even if there was no evidence of from whom the Tradewinds website had acquired them. However, it is clear from [32] of the Decision that the Hearing Officer considered this to be a reason for a finding of no genuine use in addition to the primary reason I have set out above. The Hearing Officer said this (emphasis added):

“it is not clear whether this offer for sale resulted from the [P]roprietor’s actions or from a third party independently obtaining products from China/Hong Kong. If the latter, this would not amount to genuine use of the mark by the [P]roprietor”.

The use of “if” clearly indicates that this was not the primary finding on which the Hearing Officer relied. Therefore, to the extent the Hearing Officer fell into error on this minor point, it is not sufficient to infect his analysis to the extent I could be satisfied that the Decision was “wrong”.

I turn now to Mr Chan’s evidence. I can find in the Decision no criticism of the evidence provided by Mr Chan which suggests that the Hearing Officer found that the products to which he referred were not put on the UK market by or with the consent of the Proprietor. I therefore consider that there is nothing in this criticism.

The Proprietor further criticised a number of other findings of the Hearing Officer at [31] and [32] of the Decision – I reject these criticisms for the reasons given below:

The Proprietor also criticised the Hearing Officer’s treatment of the evidence of Mr Fu, specifically at [34] of the Decision where he records “I note that Mr [Fu] evidences a sale in April 2013 and states that there are subsequent sales until 2014 but no evidence to support this was filed”. The Proprietor submitted that this sentence is internally inconsistent, because it confuses evidence and exhibits. I read the Hearing Officer to be saying here that he had before him Mr Fu’s evidence of subsequent sales, but he did not have any other evidence (such as invoices) to support that statement. I therefore reject this criticism. I also reject the criticism that the Hearing Officer simply rejected Mr Fu’s evidence. I do not consider the Hearing Officer to have rejected Mr Fu’s evidence – rather, what he did, and did expressly, was to consider that insufficient evidence had been adduced to meet the Proprietor’s burden of proving genuine use. This is clear from his reference in the last sentence of [34] to the likely availability of invoices etc if sales had been made.

I also reject the Proprietor’s criticism of the Hearing Officer’s reliance on Awareness. Counsel for the Proprietor submitted that the Hearing Officer relied on this case to provide justification for rejecting any evidence that was not supported by documentation. In my judgment, that is not what the Hearing Officer did. Rather, he considered the evidence before him carefully, and decided that it did not meet the Proprietor’s burden of proving genuine use.

I therefore reject this third ground of appeal.

The Hearing Officer did fail to address one area of the evidence and submissions that in my view he ought to have addressed. It is clear from the various images of packaging provided that the evidence of use relied on by the Proprietor was not always use of the Trade Mark as registered. Whilst the Trade Mark appears on the tea bag packaging shown above at paragraph 14 above and on the packaging shown on the Tradewinds website (paragraph 15 above), the sign shown on the instant tea

I should add for completeness that, in the course of preparing for the hearing, during the hearing, and since the hearing, I have reviewed the evidence that was before the Hearing Officer, the submissions he had before him, and the written and oral submissions before me. Had I found that the Hearing Officer had improperly assessed the evidence, I am entirely confident that were I to undertake the analysis myself, I would also have revoked the Registrations for non-use. That is, I am entirely comfortable that the Hearing Officer reached the correct decision.

As the Proprietor conceded, at its best, the only evidence in relation to the section 46(1)(a) period was the unchallenged statement by Ms Wong that tea bags, tea extract and instant drink mixes bearing the Trade Mark were sold “to various trading companies which in turn sold those products to companies that imported those product into the United Kingdom”. In light of Mr Alexander’s comments in Awareness, and modern practice before the UKIPO and EUIPO, the mere say so of an interested party, even in a witness statement, is manifestly insufficient to justify continuation of a statutory monopoly in favour of a trade mark proprietor, when unaccompanied by any relevant documentation.

In relation to the section 46(1)(b) period, the Proprietor’s evidence was better, but it was still scant, uncertain, often uncorroborated and of low value, even when taken in its totality. For a period as recent as 2013 to 2018, and for fast moving consumer goods such as these, had there been use, there ought to have been ample evidence of that use.

I therefore have no doubts that the Hearing Officer’s conclusion on the evidence was entirely safe – I am certainly not satisfied that in his treatment of the evidence he failed to take into account relevant matters, that he took into account irrelevant matters, or that he was “wrong”.

Given my findings above, it is not necessary for me to deal with this ground of appeal. However, as it was argued, and as matters may go further, I set out below my conclusions on this ground of appeal, which applies to both of the Registrations and to both of the section 46(1)(a) periods and to the section 46(1)(b) period.

In its Grounds of Appeal, the Proprietor set out its position as follows:

“the Hearing Officer’s obiter conclusion in paragraph [42], that the [P]roprietor had not shown use of the [R]egistration[s] in relation to the goods registered, was wrong.”

In its written and oral submissions, the Proprietor put its case in more detail. The Proprietor submitted that the Hearing Officer ultimately concluded that he should ask himself whether the words “beverages” and “beverages for medicinal purposes” were “clear and precise”. The Proprietor accepted that the Hearing Officer’s approach was the correct one, and agreed with the Hearing Officer’s conclusion (at [42] of the Decision) that the words were “clear and precise”. The Proprietor then submitted that the tribunal should ask whether the sales of tea bags, tea extracts, and instant tea

The Proprietor criticised the Hearing Officer for failing to consider the question at all in relation to canned (liquid) herbal tea – and submitted that, had he done so, it would have been “immediately apparent” that a can of liquid herbal tea is a “beverage”. Further, the Proprietor submitted that “it is well known that Chinese herbal tea is perceived as having medicinal benefits, at least by a significant proportion of the public”. No evidence was before the Hearing Officer (or me) to this effect.

In relation to tea bags, tea extracts and instant tea (dry goods), the Proprietor submitted that the average consumer simply refers to “tea”, and “tea” is a “beverage” - it is irrelevant what form it takes. Thus, the Proprietor submitted that the Hearing Officer ought to have found that the average consumer would consider the evidenced sales to be sales of “beverages” in Class 32 and “beverages for medicinal purposes” in Class 5. The Proprietor therefore submitted that the Hearing Officer’s conclusion at [42] was wrong. There was no criticism of the method by which he got to his conclusion – the Proprietor disagreed only with the conclusion.

Although briefly stated (no doubt because, as the Proprietor notes, given the Hearing Officer’s other conclusions these findings were obiter), I do not consider the Hearing Officer’s conclusion in relation to tea bags, instant tea or tea extracts (dry goods) to be “wrong”. The Hearing Officer had no evidence before him of how the market perceived tea bags etc, so he needed to reach a conclusion without the benefit of any evidence. He made no error of law or of principle in doing so. He noted that “beverages” do not cover herbal tea in either a bag or instant form, concluding that the goods shown in the evidence were not a sub-category of the goods registered. He had before him no evidence to the contrary. There is nothing in the Proprietor’s submissions to justify interfering with that part of the Decision.

As I have noted, the Proprietor also criticised the Hearing Officer for not referring to canned (liquid) herbal tea in his analysis. There is some force in that criticism. The Applicant accepted that the Hearing Officer did not deal with this issue in his Decision. In my judgment, he ought to have. The Applicant made its position clear on this issue in its written submissions which were before the Hearing Officer – the issue was raised in relation to the evidence of Ms Wong, Mr Chan and Mr Fu. It was therefore a criticism raised squarely in relation to the canned (liquid) herbal tea products referred to by Mr Chan and Mr Fu, and it should have been dealt with. The Hearing Officer’s failure to address himself to the canned (liquid) herbal tea was a relevant error. It does not vitiate his decision in relation to tea bags etc, and does not change his overall conclusions in relation to revocation. But it does necessitate that I make findings on whether proof of genuine use of the Trade Mark on canned (liquid) herbal teas would be use of the Trade Mark for the goods for which it was registered.

Before turning to the facts before the Hearing Officer, it is necessary to address the law in some detail. The question I need to answer is to what extent, if any, is the Nice Classification to be taken into account in interpreting the specification in the Registrations. The starting point is the decision of Henry Carr J in Pathway. The opening paragraph of that judgment is as follows:

“Unless familiar with the law of registered trade marks, you might think that it is relatively straightforward. Regrettably, you would be wrong. As illustrated by the recent judgment of Arnold J in Sky Plc v SkyKick UK Ltd [2018] EWHC 155 (Ch); [2018] RPC 5 ("the Sky case"), trade mark litigation can raise multiple legal issues of Byzantine complexity. In comparison with the Sky case, this judgment is a minnow. Nonetheless, it deals with some challenging issues, which require careful consideration.”

I note for completeness that neither party wanted me to delay my decision until the Court of Justice rules on the reference to it in the Sky case referred to by Henry Carr J, and neither party embraced my offer of a reference on this point to the Court of Justice.

It is not necessary or appropriate for me to set out here [47] to [120] of Henry Carr J’s Pathway judgment where he dealt with this issue but I gratefully adopt from it the following passages relevant to the issues before me.

At [56] of Pathway, Henry Carr J summarised the conclusions of the Court of Appeal in Altecnic Ltd’s Trade Mark Application (No. 2126884); Reliance Water Controls Ltd v Altecnic Ltd [2001] EWCA Civ 1928 as follows:

“In summary, the Court of Appeal relied upon the practice of the Registry and OHIM [now the EUIPO] in dealing with amendments to an application by treating the class number in the application for registration as part of the application and held that:

i)

The Registrar is entitled to treat the class number in the application as relevant to the interpretation of the scope of the application, for example, in the case of an ambiguity in the specification of goods;

ii)

On ordinary principles of construction, the application has to be read as a whole to determine its meaning and effect and the application includes the class number;

iii)

The fact that the Nice Classification System has been devised to serve exclusively administrative purposes does not mean that the selection of one or more class numbers has to be totally ignored in deciding, as a matter of construction of the application, what the application is for and whether it can properly be amended;

iv)

If the specification expressly refers to the class e.g. "all included in Class X" that is a stronger case for interpretation of the application by reference to the class number;

v)

However, that is not the only kind of case in which the class number can be taken into account by the Registrar, nor should the Registrar have to ignore the class number which the applicant (or his advisers' on his behalf) have included.”

Henry Carr J then considered Arnold J’s (as he then was) decision in Omega Engineering Incorporated v Omega SA [2010] EWHC 1211 (Ch) (“Omega 1”), in which Arnold J questioned whether Altecnic was correctly decided, but did not express any view on the issue. Henry Carr J summarised Arnold J’s conclusions as follows (at [67] of Pathway):

“In summary, Arnold J considered that the ratio of the Altecnic case was confined to the proposition that a statement by an applicant for registration in his application form as to the class of the goods in respect of which registration was sought formed part of the application and was to be taken into account in interpreting the scope of the application at least during prosecution; [22]. It did not decide whether the decision applied in the context of infringement, which remained an open question. On this appeal, the appellant reserved the right to contend that Altecnic was wrongly decided, but that is not a matter for this court.”

Then, having reviewed Arnold J’s decisions in Omega 1, Omega Engineering Incorporated v Omega SA [2012] EWHC 3440 (Ch) (“Omega 2”) and Fil Ltd & Anor v Fidelis Underwriting Ltd & Ors

Henry Carr J then set out his “reasons for limiting the scope of the specification by reference to the Nice Classification class number”, first by reference to Chartered Institute of Patent Attorneys (C307/10, EU:C:2012:361) (the “IP Translator case”) (at [81] to [91). He summarised the propositions established by IP Translator at [92] of Pathway:

“In summary, the IP Translator case established that:

i)

Whilst Directive 2008/95 contains no reference to the Nice Classification and, consequently, imposes no obligation or prohibition on Member States with regard to its use for the purposes of registration of national trade marks, the obligation to use that instrument stems from Art.2(3) of the Nice Agreement, which was adopted pursuant to Art.19 of the Paris Convention and Directive 2008/95; recital 13.

ii)

The competent Office of the countries of the Special Union, which encompasses almost all the Member States, is to include in the official documents and publications relating to registrations of marks the numbers of the classes of the Nice Classification to which the goods or services for which the mark is registered belong.

iii)

The requirements of clarity and precision must be taken into consideration when considering registered trade marks as well as applications;

iv)

As well as the competent authorities, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties;

v)

General indications of the class headings to identify the goods and services for which the protection of the trade mark was sought were not precluded, provided that such identifications were sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought;

vi)

Different approaches to the use of the general indications of the class headings of the Nice Classification might lead to a difference in the extent of the protection of a national trade mark if it is registered in several Member States, and of the protection of the same mark if it was also registered as a Community trade mark. This ran the risk of undermining legal certainty both for the applicant and for its competitors;

vii)

Therefore, the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought was not precluded, provided that such identification is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.”

Henry Carr J then said this (emphasis added):

“93.

In the light of the IP Translator case and its subsequent codification by amendments to the Trade Mark Regulation (EU) 2017/1001 and Trade Mark Directive (EU) 2015/2436, the respondent's case is that class numbers cannot be ignored, as they can play a significant role in designating goods and services with clarity and precision and in ensuring certainty for economic operators when viewing the Register. The respondent does not contend that the class numbers will always be necessary to achieve clarity and precision in the specification, as in many cases the words chosen will be sufficiently clear and precise. In such cases, the scope of the specification will be clear from the ordinary and natural meaning of the words chosen. In those cases, the class number is merely confirmatory and does not change the meaning of the terms used.

94.

However, because in some instances the words chosen may be vague or could refer to goods or services in numerous classes, the class may be used as an aid to interpret what the words mean with the overall objective of legal certainty of the specification of goods and services. For example, the word "valves" which was considered in the Altecnic case can refer to goods which may be included in 11 different classes of the Nice Classification, as Laddie J observed at first instance. This was referred to by the hearing officer in the Omega One, in a passage cited with approval by Arnold J at [72] of his judgment (supra). The hearing officer explained valves in Classes 7, 10, 11 and 15 are all very different creatures, a valve for a pump, a valve for a heart, a valve for a radiator, a valve for a trumpet. In such a case the lack of specificity of the description means that the class into which the goods have been placed defines the nature of the goods. Mr Malynicz also noted that valves could be registered in Class 9 for the purposes of electrical guitar amplifiers, or as valves for vehicle tyres in Class 12 or as valves for use in baby bottles in Class 10. Without the additional information provided by the class number, a specification for "valves" would not satisfy the requirement of clarity and precision.

95.

This could potentially mean that a registered trade mark could be asserted against a competitor in an infringement case in relation to goods that were distant from the proprietor's real area of activity. It also may negatively impact on the proprietor. A trade mark may be descriptive for one sort of valve (e.g. the trade mark Baby Flow for valves in Class 10) but not for another sort of valve (e.g. Baby Flow for valves in Class 11). Ignoring, in such cases, the class in which the trade mark is registered, which is clearly visible on the Register, is, in my view incompatible with the IP Translator case, and incompatible with the principle of legal certainty.

96.

In the context of revocation applications based on no genuine use, where a specification otherwise lacks clarity and precision, it may be of considerable importance to be able to refer to the class in which the goods or services are registered. It may be unfair to the proprietor not to refer to the class, if it enables clarity and precision to be established. If it is not possible to ascertain with clarity and precision the scope of the specification, then it is very difficult to see how the proprietor can prove use of goods or services within that specification. It may be unfair to the opponent not to refer to the class, if such reference makes clear that the goods or services relied on as having been used by the proprietor are not goods or services properly to be regarded as within the scope of the specification.”

Henry Carr J then discussed Article 2(1) of the Nice Agreement, and EUIPO and UKIPO practice. At [103] of Pathway the judge said this (emphasis added):

“The manuals both suggest that class number should always be taken into account, together with the ordinary and natural meaning, to see whether the requirement of clarity and precision is satisfied. It is certainly the case that the class number always forms part of the context, and the guidance is consistent with the Altecnic case, where Mummery LJ referred to the class number as a part of the context, and ambiguity of language by way of example only. However, that does not mean that the class number is always required to determine the natural and ordinary meaning of the words used in the specification, which may be sufficiently specific so that the scope of the specification is clear and precise. For the purposes of this appeal it is unnecessary for me to express any view on circumstances where the class number would be relevant where the natural and ordinary meaning of the words used in the specification is clear and precise, as this goes further than the respondent's argument.”

Henry Carr J reached his conclusions at [104] to [107] of Pathway under the heading “The judgment in the Altecnic case was not confined to the facts” as follows (emphasis added):

“104.

The respondent challenges the appellant's proposition that the judgment in the Altecnic case can be confined to its factual and procedural background. Whilst the issue in that case concerned amendment of the specification, exactly the same considerations would apply when it comes to construing the specification for the purposes of assessing distinctiveness during examination, construing the specification of an earlier mark in an opposition, infringement by a third party or revocation for non-use or deceptiveness. In all of these instances it is necessary to understand the scope of the goods or services covered. Where the words are neither clear nor precise, for example because they apply to goods or services registrable in multiple classes, the class number must be relevant to resolve ambiguity.

105.

It points out that the reasoning of Mummery LJ was not confined to the facts, or the particular procedural phase then in issue. Rather, it was a case concerning construction of the scope of a specification. The specification can only have one meaning, irrespective of whether it is being considered at the application stage, or in the context of an infringement claim or in an application for revocation. Accordingly, in cases where the class number is to be taken into account when interpreting the scope of the application, it must also be taken into account when interpreting the scope of the granted specification.

106.

Furthermore, the appellant concedes that where the specification contains the phrase "all included in class X" it is appropriate to use the class number when interpreting the scope of the specification, but not otherwise. The respondent contends that, where necessary to achieve clarity and precision, it is also appropriate to use the class number which appears on the public register. Indeed, the appellant's argument was expressly rejected by Mummery LJ in the Altecnic case.

107.

In my provisional view, this submission is correct. If the word "valves" is interpreted at the application stage by reference to its class number as referring to valves for use in baby bottles in Class 10, it cannot be interpreted, once granted, as having a different meaning e.g. valves for vehicle tyres in Class 12. In my view, the Court of Appeal were applying general principles of construction to the specification in the case before them, which had regard to the context in which the words were used. The reasoning is not confined to the facts of the case.”

I respectfully agree with Henry Carr J’s conclusions, for the reasons he gives. I also add the following comments:

The consequences of any other approach were addressed by Henry Carr J, and I respectfully agree with him. If the Nice Classification were irrelevant to interpretation of a trade mark specification, then an unscrupulous trader in, say, valves for bottles for babies would be able to file a trade mark in Class 15, thus hiding it from other baby bottle valve traders with a watch service covering Class 10. When challenged by a trumpet valve vendor, the unscrupulous trader could simply say “I only want to use the mark for baby bottle valves”. Use for baby bottle valves would keep the Class 15 registration alive. But it would also enable the unscrupulous trader to prevent use of an identical or similar mark in relation to pump valves, heart valves, radiator valves, tyre valves, amplifier valves and trumpet valves, all of which fall in different classes. It is simply not good enough to say “valves” is clear and precise – that is all the tribunal needs to decide.

It would be a further consequence of the Proprietor’s approach in this case that UK law would diverge from EU law, and identical UK and EU trade marks would end up having different consequences in this jurisdiction. EUIPO practice is clearly to interpret trade mark specifications by reference to the Nice Classification. The UKIPO has also adopted this approach for many years. Were the UK to adopt a new approach, it would create significant uncertainty in relation to UK trade marks, and a position divergent to that which would apply in this jurisdiction in relation to EU trade marks.

At paragraph 31 of Thomson Holidays, Aldous LJ noted that “the court should inform itself of the nature of the trade and then decide how the notional consumer would describe such use”. In oral argument, counsel for the Proprietor urged me to undertake that assessment as at the date on which the Registrations were filed – that is, in 1992. But he was unable to point me to any evidence to shed light on the nature of the trade in canned (liquid) herbal tea in the UK in 1992, although he did hand up a document showing sales of canned tea in the United States around the relevant time. He submitted that the notional consumer of canned (liquid) herbal tea in 1992 would consider that product to be both “beverages for medicinal purposes; all included in Class 5” and “beverages; all included in Class 32”.

I am not convinced that this assessment can or should be made as at the date on which the trade mark was filed. In any event, in the absence of evidence from 1992, it makes no difference. I must do the best I can with the evidence before me.

I can deal briefly with the “medicinal” point. There was no evidence before the Hearing Officer or before me to demonstrate the medicinal qualities of the canned herbal tea product. All the packaging before the Hearing Officer and before me was in Chinese characters and not translated into English.

In relation to 166, I need also to deal with the part of the specification which reads “all included in Class 5”. Counsel for the Proprietor urged me to consider this expression from the point of view of the notional consumer (in 1992). I find this submission troubling – as I put it to him at the hearing, it is very doubtful indeed that the notional consumer of anything other than trade mark filing services would have any idea about the Nice Classification at all. Counsel for the Proprietor sought to avoid this by an ingenious, but flawed, argument. He put it like this: the tribunal first asks whether the notional consumer would consider canned (liquid) herbal tea to be a beverage for medicinal purposes. If he/she does, then those goods fall within Class 5, and so are “all included in Class 5”. This argument is obviously self-fulfilling, and I reject it. In my judgment, “all included in Class 5” is not something that can be left to the interpretation of the notional consumer, as the notional consumer will have no idea at all what the expression means. Rather, “all included in Class 5” is to be interpreted by the tribunal by reference to the Nice Classification itself.

This appeared to be the position taken by Jacob J (as he then was) in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (at page 289):

“Generally there is no difficulty in identifying which class is relevant for a particular article. But borderline cases are not infrequent. For these the Registrar often uses the practice of describing the goods or services and adding the words included in this Class or included in Class X. He did that here. The effect of this is to confine the specification to goods which fall within the description and which also were, at the time of registration, put in that class by the Registrar. Thus in GM TM, Graham J held that a registration for “Electrical machinery included in this Class” did not cover electrical switchgear: even though it was admittedly electrical machinery it was not at the time of registration put in the class concerned.”

Jacob J returned to the question in Avnet Inc v Isoact [1998] FSR 16, where he said (at page 19):

“These words “included in class X” in a specification of goods not infrequently cause difficulty. You have to look at the specification preceding these words to see whether what the defendant is doing is within the scope of that and then you have to ask the extra question: are they included in class X?

It is settled, at least at first instance, that to answer that second question one has to look at the Trademark Registry practice to see whether the Registrar in practice at the time of registration included the particular service or goods within that class (see GE Trade Mark [1969] RPC 418 at 458). This is not always easy, especially if the kind of goods or services did not exist at the time of registration.”

It is thus clear that “all included in Class X” is not a matter for the notional consumer.

At the time that 166 was applied for, the 6^th edition of the Nice Classification was in force. In relation to Class 5, the relevant part of the Class heading was “dietetic substances adapted for medical use”. The explanatory note stated “This Class includes mainly pharmaceuticals and other preparations for medical purposes”. The Class 30 heading included “tea” and the explanatory note stated that not included in Class 30 were “medicinal teas and dietetic substances adapted for medical use (Class 5).”

In my judgment, it is plain on the face of the Nice Classification that in order to be included in Class 5, a tea has to be “medicinal” or “adapted for medical use”. As I have noted above, there is no evidence to support this position in relation to the canned (liquid) herbal tea in this case. It is therefore clear to me that there has been no use in relation to medicinal beverages, or in relation to goods included in Class 5.

Therefore, in my judgment, even if the Proprietor had been able to prove genuine use of canned (liquid) herbal tea, this would not have been use to support the 166 Registration in relation to “beverages for medicinal purposes; all included in Class 5”.

I turn now to 167. In my judgment, canned (liquid) herbal tea would be considered by the notional consumer, in 1992 and now, to be a beverage. But that is not the relevant test, and I reject the

In 1992, the Class 32 heading read:

“Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.” The explanatory note read:

“This class includes mainly non-alcoholic beverages, as well as beer.

Includes, in particular:

•

De-alcoholised drinks.

Does not include, in particular:

•

beverages for medical purposes (Cl. 5);

•

milk beverages (milk predominating) (Cl. 29);

•

beverage with coffee, chocolate or cocoa base (Cl. 30).”

The Proprietor relied on the ordinary meaning of the class heading and the explanatory note to

I disagree. It is not sufficient to look at the Class 32 explanatory note, but rather, it is important to look at where tea and tea-based beverages are actually classified. Whilst the “does not include” is helpful, it is qualified by “in particular”, which means that the list set out is not exhaustive. Nor could it be – alcoholic beverages fall within Class 33, and beverages for pets fall within Class 31. It is therefore necessary to look at where tea was classified: as now, in 1992 tea was classified in Class

The class heading expressly lists “tea”. Only medicinal teas are excluded by the explanatory note