Trump International Ltd v DTTM Operations LLC

Ms Denise McFarland, who presented the appeal on behalf of Trump International with considerable skill, submitted that the appeal should succeed even if the fresh evidence was not admitted. Whilst the grounds of appeal were diffuse and repetitive, Ms McFarland identified three key allegations:

First, that the Hearing Officer showed actual or apparent bias, rendering the hearing process and the Decision unfair and contrary to the ECHR. It was submitted that the Hearing Officer demonstrated bias in accepting and relying upon evidence or allegations concerning the history of behaviour in unrelated actions and upon allegations concerning Mr Gleissner, who was not a party to the proceedings. It was contended that this led, wrongly, to the rejection of the Application and was damaging to the personal reputation of Mr Gleissner and any companies with which he was associated or which he controlled.

Ms McFarland contended that, having allowed himself to be convinced that Mr Gleissner was a “bad apple”, the Hearing Officer allowed prejudice and bias to permeate his thought processes. This caused him to take an impermissible short cut in what should have been a rigorous analysis of whether bad faith in relation to this Application by this Applicant had been made out.

Secondly, it was alleged that having decided that DTTM had established that the Application was made in bad faith, the Hearing Officer erred in law or in principle in failing to make any findings in relation to the other grounds of opposition, whilst nonetheless taking them into account when awarding costs.

Finally, it was submitted that this appeal should be stayed pending the determination of a reference to the CJEU in Sky plc and Ors v Skykick UK Limited and Anor [2018] EWHC 155. One question referred to the CJEU in Skykick is whether it can constitute bad faith to apply to register a trade mark without any intention to use it in relation to

It is necessary to consider legal principles in respect of two areas of law, namely (i) actual or apparent bias and (ii) admissibility of similar fact evidence in civil proceedings.

When considering judicial bias, the Court must inform itself of all the circumstances which relate to the suggestion that the decision-maker is biased. It must then ask itself whether a fair-minded and informed observer, having considered the facts, would conclude that there was a real possibility that the judge or justice was biased (Porter v Magill [2001] UKHL 67 at [102]-[103], endorsing (with modification) Re Medicaments and Related Classes of Goods (No 2) [2001] 1 WLR 700).

Actual bias arises where a judge or justice is a party to the proceedings or has a financial or proprietary interest in the outcome (R v Gough [1993] AC 646) at 661. If actual bias is established, the individual concerned must be disqualified (i.e. automatic disqualification) (R v Gough [1993] AC 646). Apparent bias may arise where the judge's or justice's conduct or behaviour gives rise to a suspicion that he/she is not impartial (without there being evidence to suggest that the judge or justice is a party to the proceedings and/or has a financial interest in the outcome so as to cause his/her automatic disqualification) (R v Bow Street Metropolitan Stipendiary Magistrate, ex p Pinochet Ugarte (No 2) [2000] 1 AC 119 at [132] – [133]).

The test applicable to apparent bias, regardless of whether a justice, member of an inferior tribunal or arbitrator is concerned, is whether, having regard to the relevant circumstances, there is a real possibility of bias on the part of the individual in question, in the sense that he/she might unfairly regard with favour, or disfavour, the case of a party to the issue under consideration by him/her (R v Gough [1993] AC 646 at 669; Porter v Magill [2001] UKHL 67 at [103]). It is an objective test: i.e. the question is addressed by a fair-minded and informed observer; (Harb v Prince Abdul Aziz [2016] EWCA Civ 556 at [69] – [71]; Re Medicaments and Related Classes of Goods (No 2) [2001] 1 WLR 700).

The principles on which similar fact evidence is admissible in civil cases were explained by the House of Lords in O’Brien v Chief Constable of South Wales Police [2005] UKHL 26. The Court of Appeal had held that similar fact evidence was only admissible in a civil suit if it was likely to be reasonably conclusive of a primary issue in the proceedings or alternatively if it had enhanced relevance so as to have substantial probative value. The House of Lords held that this test was too restrictive. There should be a two-stage enquiry where the admissibility of such evidence was challenged: first, whether the evidence was potentially probative in the proceedings; and secondly, whether the admission of such evidence would accord with the overriding objective of deciding cases justly. It is necessary to understand the reasons underlying each limb of the two stage enquiry.

As to probative value, Lord Bingham said at [3] – [4]: “3. Any evidence, to be admissible, must be relevant. Contested trials last long enough as it is without spending time on evidence which is irrelevant and cannot affect the outcome. Relevance must, and can only, be judged by reference to the issue which the court (whether judge or jury) is called upon to decide. As Lord Simon of Glaisdale observed in Director of Public Prosecutions v Kilbourne [1973] AC 729, 756,

“Evidence is relevant if it is logically probative or disprobative of some matter which requires proof… relevant (i.e. logically probative or disprobative) evidence is evidence which makes the matter which requires proof more or less probable”.

4.

That evidence of what happened on an earlier occasion may make the occurrence of what happened on the occasion in question more or less probable can scarcely be denied. If an accident investigator, an insurance assessor, a doctor or a consulting engineer were called in to ascertain the cause of a disputed recent event, any of them would, as a matter of course, enquire into the background history so far as it appeared to be relevant. And if those engaged in the recent event had in the past been involved in events of an apparently similar character, attention would be paid to those earlier events as perhaps throwing light on and helping to explain the event which is the subject of the current enquiry. To regard evidence of such earlier events as potentially probative is a process of thought which an entirely rational, objective and fair-minded person might, depending on the facts, follow. If such a person would, or might, attach importance to evidence such as this, it would require good reasons to deny a judicial decision-maker the opportunity to consider it…”

As to the second stage, Lord Bingham said at [5]:

“5.

The second stage of the enquiry requires the case management judge or the trial judge to make what will often be a very difficult and sometimes a finely balanced judgment: whether evidence or some of it (and if so which parts of it), which ex hypothesi is legally admissible, should be admitted. For the party seeking admission, the argument will always be that justice requires the evidence to be admitted; if it is excluded, a wrong result may be reached. In some cases, as in the present, the argument will be fortified by reference to wider considerations: the public interest in exposing official misfeasance and protecting the integrity of the criminal trial process; vindication of reputation; the public righting of public wrongs. These are important considerations to which weight must be given. But even without them, the importance of doing justice in the particular case is a factor the judge will always respect. The strength of the argument for admitting the evidence will always depend primarily on the judge's assessment of the potential significance of the evidence, assuming it to be true, in the context of the case as a whole.”

These principles will no doubt be familiar to intellectual property practitioners. In relation to allegations of copyright infringement, it is necessary to decide, as a matter of fact, whether copying has occurred. As with claims of bad faith, direct evidence of copying is rarely available. In this context, it is well established that similar fact evidence may be admissible. The case law is considered in Copinger and Skone James on Copyright, Vol 1, 17^th Edition at [21-393]:

“…where the issue in a copyright case is whether the similarity between the claimant’s work and the defendant’s work is due to copying or is a coincidence, it is relevant to know that the defendant has produced works which bear a close resemblance to works other than the work in question which are the subject of copyright. Whereas similarity between two works might be mere coincidence in one case, it is unlikely that there could be coincidental similarity in, say, four cases. The probative force of several resemblances together is much better than one alone.”

This reasoning may well apply, depending on the facts, to an allegation that a thirdparty trade mark has been applied for in bad faith. The probative force of several instances of such applications, by the same or a connected party who has applied to register a third-party trade mark, is obvious. Such instances, if based on solid grounds, are likely to require evidence from the applicant to refute the inference of bad faith that may otherwise be drawn from them.

The suggestion that the Hearing Officer was actually biased is obviously unsustainable and was not developed in argument by Ms. McFarland. It was not alleged that he was a party to the litigation or had a financial or other interest in its outcome. Equally, in my judgment, a fair-minded and informed observer would not conclude that the Hearing Officer’s conduct or behaviour gave rise to a suspicion that he was not impartial. Having regard to the relevant circumstances, the fair-minded and informed observer would conclude that there was no real possibility of bias on the part of the Hearing Officer, in the sense that he might unfairly regard with favour, or disfavour, the case of Trump International.

Allegations of actual or apparent bias should not be made lightly, and they should not have been made in the present case. Even if I were to approach the appeal on the more conventional basis as an allegation that the Hearing Officer took into account irrelevant considerations, I would still consider such a ground of appeal to be obviously unsustainable.

The evidence was, in my judgment, both admissible and relevant. Trump International had applied to register a trade mark which was plainly associated with Mr Trump, with whom it had no connection. That, of itself, required a very clear explanation to refute an inference of bad faith. The similar fact evidence was not mere rumour or supposition. It raised some very serious matters, which required a detailed explanation and refutation, in evidence. The fact that other companies owned or controlled by Mr Gleissner had made numerous other applications to register well-known trade marks with which they had no connection (for example EUIPO) was potentially probative of the issue of bad faith. It made it less likely that the inference of bad faith could be refuted.

Consideration of such evidence in the Registry proceedings accorded with the overriding objective of deciding cases justly. The evidence was highly significant. Had the Hearing Officer not taken account of the evidence, he would have ignored relevant facts. He did not make that mistake, nor did he attach undue weight to the similar fact evidence. On the contrary, he expressly stated at [45] that “[a]lthough the pattern of behaviour is well-evidenced, it cannot of itself sustain a claim of bad faith for any and all applications by Mr Gleissner or companies under his control.”. Further, he considered the similar fact evidence in the context of the Application before him, where, as he noted, “the Applicant’s mark involves the distinctive name of an exceptionally well-known businessman and public figure” and where there were

“further allegations of a motivation on the part of the Applicant to interfere with the legitimate interests of the Opponent in the TRUMP mark…”.

He was correct, in my judgment, to find that those matters overcame the presumption of good faith and founded a prima facie basis for a finding of bad faith. In order to refute the allegation of bad faith, evidence was required from Trump International, to deal with the reasons why it had applied for the mark, and to refute the inference to be drawn from the similar fact evidence. No such evidence was filed, nor was any factual explanation offered by Trump International.

The Hearing Officer referred to the Alexander case, which was relied on by DTTM in its written submissions. In Alexander, another company of which Mr Gleissner was the sole director, namely CKL Holdings BV, had applied to register the mark ALEXANDER in relation to a range of goods. The application was opposed by Paper Stack Ltd. The Opposition succeeded, and registration was refused under section 3(6) of the Trade Marks Act 1994. As in the present case, Paper Stack filed evidence in support of its opposition, which included evidence concerning the practice of Mr

Therefore, when faced with very similar evidence to the evidence filed by DTTM in the present case, the same procedure was adopted by CKL in the Alexander case. It chose to file no evidence in answer. Mr Hobbs stated at paragraph [7] that:

“Having chosen to file no evidence directed to the specifics of the facts and matters relied on by the opponent, CKL was, in essence, asking the Registrar to say that it had no case to answer.”

A finding of bad faith was reached by the Hearing Officer in the Alexander case and affirmed on appeal by the Appointed Person. In rejecting CKL’s appeal, Mr Hobbs QC agreed at paragraph [23] with the Hearing Officer’s assessment that the objective which CKL had pursued in filing the mark “ALEXANDER” was an objective for which the contested application for registration could not properly be filed. In order to reach that conclusion, the Hearing Officer had relied upon the evidence of Mr Gleissner’s activities, through his network of companies in filing applications for well-known third-party trade marks.

It can have come as no surprise to Trump International, Mr Gleissner and his advisers that in the present case, Mr Williams came to the same conclusion as in the Alexander case. They knew or ought to have known that evidence needed to be filed on behalf of Trump International, directed to each of the allegations relied on by DTTM, in order to refute the inference of bad faith.

I consider that the Hearing Officer was entirely justified in his conclusion at [48] that the Opponent had set out its allegations against the Applicant “in very clear and concrete terms, ensuring procedural fairness and clarity of analysis”. I do not accept that the procedure adopted by the Hearing Officer was in any way unfair to Mr Gleissner. He is the sole director of Trump International and had plenty of notice of the allegations which were made in DTTM’s evidence, and of the detail of that evidence. Yet, he chose not to answer it. I note Mr Gleissner’s concern to vindicate his reputation, but he should have thought of that well before this appeal.

Finally, as to Mr Gleissner’s concerns that the Decision may prevent him, or companies which he controls, from filing trade mark applications in the future, that depends on the nature of the mark filed. If it has no connection with a third party (for example an application to register “GLEISSNER TV”) then the Decision should not prevent such an application. Absent evidence to the contrary, such an application would not be made in bad faith. However, if the application is in respect of a sign which is identical or similar to a mark owned by a third party, of which there are many examples in the evidence, then he is right to be concerned. Such applications should not be made in the future, whether by Mr Gleissner or by companies which he controls.

Had the Hearing Officer set out his conclusions in respect of the other grounds of opposition, this could not have improved the position of Trump International. It appears from the Decision that he considered that the other grounds of opposition were well-founded. Ms McFarland acknowledged that there was no separate appeal in relation to costs, and therefore I reject this ground of appeal.

Since he determined that the Application was made in bad faith, I have considerable sympathy for the Hearing Officer’s position that it was unnecessary to determine the other grounds of opposition. However, I consider that it would have been sensible for him to express, briefly, his conclusion on each of those grounds. Experience in the European Patent Office shows that where only one ground of an opposition is determined, it is frequently necessary for the board of appeal to remit the matter back

In the present case, the Hearing Officer set out in considerable detail all of the evidence which supported the other grounds of opposition. It was, in my view, obvious that each of the grounds of opposition was made out. If that was also the view of the Hearing Officer (and I believe that it was) that could, and should, have been explained in a few short paragraphs.

This application has already been rejected by Mr Nicholas Caddick QC, sitting as a deputy High Court judge (Monday, 17December 2018). There has been no appeal from his decision. It is not open to Trump International, in the absence of such an appeal, to renew that application.

In any event, I consider that Mr Caddick was right to reject the application for a stay. He did so on the basis that the Hearing Officer did not rely on any suggestion that Trump International was acting in bad faith by making a statement of intention to use, contrary to section 32(3) of the Trade Marks Act 1994. Insofar as the Hearing Officer made comments regarding the Appellant’s intention to use the mark, these were not findings of bad faith on the basis of a lack of intention to use. The Decision established that even if Trump International did intend to use, its motivation was not honest but was to take advantage of the reputation of DTTM and Mr Trump or otherwise to interfere with DTTM’s legitimate interests. Therefore, there was no reason to stay the proceedings pending the result of the Skykick reference, since it was not of direct relevance to the current proceedings.

Trump International filed three additional witness statements which it sought permission to adduce on appeal.

First, it relied upon a statement by Mr Michael Gleissner, about his concerns over the Decision and his desire to “set the record straight” and “clear his name” (Gleissner [3]). Among other things, Mr Gleissner alleged that:

Mr Gleissner also gave extensive evidence at paragraphs [9] – [25] about various businesses that he has established, including “Fashion One” and “Sherlock”. He complained about the difficulties he had encountered in respect of branding, and various trade mark disputes he had been involved in, as follows:

Trump International also relied upon a statement by Mr Roman Popov, a lawyer and partner of Morton & Associates LLP, who said that he works closely with Mr Gleissner and his companies globally and has typically been instructed by Mr Gleissner to negotiate contracts, register trade marks, engage in correspondence with third parties and/or assist with litigation. At [3] Mr Popov referred to the purchase of the trump.org and trump.tv domain names for the sum of $50,000 on 4 May 2017.

Finally, Trump International relied upon a statement from Alfean Samad, a senior paralegal at Fashion One (Asia) Limited, who assists Mr Gleissner with the incorporation of companies and the registration of trade marks. At paragraphs [3] – [6], Mr Samad explained the steps he took (as instructed by Mr Gleissner) to seek to register Trump International as a limited company in the UK (which he attended to on 30 October 2016) and thereafter to apply for the UK trade mark in the new company’s name.

This Court set out principles in relation to the exercise of the Court’s discretion to admit additional evidence in trade mark appeals in Consolidated Developments Ltd v Cooper [2018] EWHC 1727 (Ch); [2019] FSR 2 (“the CDL case). Paragraph [19] of the CDL case states that:

“19.

As Lewison LJ memorably observed in Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5; [2014] E.T.M.R. 26;

[2014] F.S.R. 29 at [114], the trial is not a dress rehearsal: it is the first and last night of the show. This emphasises the need to adduce all relevant evidence at the first hearing, rather than to attempt to adduce further evidence on appeal. Once the last night of the show has finished, the audience are unlikely to be interested in additions to the script.”

However, there may be exceptions to this general principle. In Ladd v Marshall [1954] 1 W.L.R 1489 at 1491 Denning LJ set out a three-part test for the admission of fresh evidence on appeal. In particular:

Having considered the case law subsequent to Ladd v Marshall, the relevant principles in respect of the admissibility of fresh evidence in trade mark appeals, sought to be introduced for the first time on appeal, are summarised at [33] of the CDL case as follows:

“i)

the same principles apply in trade mark appeals as in any other appeal under CPR Part 52. However, given the nature of such appeals, additional factors may be relevant;

ii)

the Ladd v Marshall factors are basic to the exercise of the discretion, which are to be applied in the light of the overriding objective; iii) it is useful to have regard to the Hunt-Wesson factors;

iv)

relevant factors will vary, depending on the circumstances of each case. Neither the Ladd v Marshall factors nor the Hunt-

Wesson factors are to be regarded as a straightjacket;

v)

the admission of fresh evidence on appeal is the exception and not the rule;

vi)

the Gucci decision does not establish that the Court or the Appointed Person should exercise a broad remedial discretion to admit fresh evidence on appeal so as to enable the appellant to re-open proceedings in the Registry; and

vii)

where the admission of fresh evidence on appeal would require that the case be remitted for a rehearing at first instance, the interests of the parties and of the public in fostering finality in litigation are particularly significant and may tip the balance against the admission of such evidence.”

I have reached the conclusion that in the circumstances of this case, the application by the Appellant to adduce additional evidence on appeal should be refused. My reasons are as follows:

The evidence has been filed by Mr Gleissner himself, an employee of Trump International of which he is the sole director, and a lawyer who works closely with Mr Gleissner and his companies globally. That evidence could have been filed on 5 December 2017, in accordance with the directions of the Hearing Officer.

In Trump International’s notice of appeal, supported by a statement of truth, it is asserted that the basis for its application to admit evidence is that “the applicant (appellant) was not legally represented at the first instance”. The grounds of appeal state that the failure to file the evidence (or any evidence at all) resulted from the “sincere but naive attempt to control costs by managing the matter internally”.

An explanation offered for the failure to file the additional evidence before the IPO is also contained in Mr Gleissner’s witness statement. He stated at paragraph [2] that no disrespect was meant by the failure to file evidence or a substantive response to the Opponent’s evidence or written submissions: this was merely because the matter was handled internally. He stated that his business is complex with hundreds of ongoing matters simultaneously. Having outside counsel advising on and managing each one would increase costs and the administration substantially. Mr Gleissner asserted that he attempted to manage the matter himself. He claimed that he has now sought professional advice and requests an opportunity to explain on behalf of the Appellant all of the background circumstances related to the filing of the Application.

I do not accept these explanations. As to the Appellant’s notice and grounds of appeal, it is untrue to assert that Trump International was not legally represented at first instance. As I have noted, its TM8 and counterstatement were signed by Mr Alfean Samad who claims in his witness statement to be a senior paralegal. He executed the documents on behalf of Trump International’s Legal Affairs Department. Mr Bedford of Morton & Associates LLP faxed to the IPO the 30-page defence. This gives rise to an inference that Morton & Associates LLP at least reviewed the document before filing it with the IPO. This inference is not rebutted by the evidence of Mr Samad or

Nor do I accept Mr Gleissner’s evidence that he decided to manage the matter himself. The document was obviously drafted by a person with considerable experience of European trade mark law.

Even if the explanation was credible, which it is not, I do not accept that it is adequate to explain the failure to file the additional evidence at first instance. As the procedural history shows, the allegations of bad faith against Trump International, supported by similar fact evidence, were very clearly set out, well before the deadline for filing evidence. Trump International knew or ought to have known that those allegations needed to be rebutted, in detail, by evidence in answer, but it chose not to file any such evidence.

I should add that the fresh evidence appears to be based on a number of misconceptions of law, namely; i) that protection for earlier third-party trade marks is limited to identical goods or services to those in respect of which it has been used and ii) that an assertion of a satirical purpose would provide a defence to the grounds of opposition in the present case. Kerly’s Law of Trade Marks and Trade Names (Sixteenth Edition) states at [16.127] that:

“No defence of parody or satire is provided by the 1994 Act but it seems likely that, if the use complained of is truly parodic or satirical, then this is a matter which may be taken into account by the court in determining whether the use complained of is “without due cause.” Nevertheless the scope for any such defence is likely to be limited where the other requirements necessary to establish infringement are satisfied. To fall within the scope of s.10 the use must be in the course of trade as a trade mark. Accordingly any such use will be commercial and is likely to be for the purpose of furthering the sales of the defendant’s goods or services. Assuming also that the use either causes detriment to the trade mark owner or provide an advantage to the alleged infringer, it is suggested that in most cases a defence of satire or parody is unlikely to be viewed by the court with much sympathy.”

Interesting questions may arise in some cases as to whether satirical or parodic use is

“with due cause” or otherwise permissible in the interests of freedom of expression; see for example South African Breweries International (SAP Mark International) v Laugh It Off Promotions SA Court of Appeal (242/2003). But not on the facts of the present case.

Mr Gleissner’s assertion of an intention to use the mark is, in my judgment, not credible. Mr Bartlett, who appeared on behalf of DTTM, pointed out that the evidence gives no details as to how the business would operate, how revenue would be generated, what markets and demographic would be addressed, nor in what geographical regions or on what platforms the service would operate. Nothing is said about when the planned business was or would be launched.

No corroboration is given by any document produced by Mr Gleissner and neither Mr Popov nor Mr Samad corroborate his evidence in any material respect. Mr Popov’s evidence regarding purchase of the domain names trump.org and trump.tv is consistent with reverse domain name hijacking, which allegation was established against Bigfoot by the UDRP complaint brought by Compania Mexicana de Aviacion, and which the fresh evidence does not attempt to answer.

I agree that these are deficiencies in the evidence. There is a further and fundamental issue in relation to credibility. No reference was made in Trump International’s defence and counterstatement to the alleged intention to use the mark for a satirical online publication. If it was credible, that simple fact would surely have been referred to somewhere in that 30 page document.

In my judgment, the admission of the additional evidence would require that the case be remitted for a rehearing at first instance. Given the issues as to its credibility, DTTM would be entitled to cross-examine the deponents, and to seek disclosure of documents. This would be unfair, since DTTM has already won the Opposition. The interests of the parties and of the public in fostering finality in litigation are particularly significant and indicate that the additional evidence should not be admitted.

The Comptroller General of Patents, Designs and Trade Marks sought permission to intervene on this appeal, which I granted. Mr Nicholas Saunders QC, representing the Comptroller, explained why this case raised general issues of concern to the Trade Marks Registrar.

This is the first time that a case involving Mr Gleissner has come before the Court. The Registrar is concerned that there is a substantial risk that behaviour of the sort identified in the evidence in this case, if left unchecked, will bring the trade mark system into disrepute. Mr Saunders submitted, and I accept, that at its core, the purpose of trade marks is to enable signs to be registered which distinguish the goods or services of one undertaking from those of other undertakings. Genuine disputes arise in that context and it is the job of the Registrar and the Courts to resolve them. However, he argued that “gaming” the system of registration and the procedure before the Registrar by filing unmeritorious applications time and time again through a myriad of non-trading and impecunious corporate entities is an abuse of the process of registration.

The nature and scale of the problem presented by Mr Gleissner’s activities is shown by the following:

In these circumstances, the Registrar seeks guidance from the Court as to how the IPO should deal with such applications in the future. Whilst the decisions discussed in this judgment suggest that the IPO is applying the correct approach, the following may be of some assistance:

I should add that the remedies of brand owners, when faced with bad faith applications, are not limited to those available in proceedings before the IPO, which may take some considerable time to resolve. Section 32(3) of the Trade Marks Act 1994 requires an application to state that the mark applied for is being used, by the applicant or with his consent in relation to the goods or services for which it is sought to be registered, or that the applicant has a bona fide intention that it should be so used. Such a statement, in relation to a well-known third-party trade mark with which the applicant has no connection, may give rise to causes of action for infringement of trade mark and passing off.

The remedies open to the Court include preliminary injunctions, which may be granted rapidly, and wide powers in respect of costs, including costs orders against non-parties made pursuant to s.51 of the Senior Courts Act 1981. If the case is sufficiently serious, such orders may be appropriate.

For the reasons set out above, this appeal is dismissed.