Healey Sports Cars Switzerland Ltd v Jensen Cars Ltd

These are two appeals from Decisions of the Hearing Officer, Mr Allan James, respectively dated 7th and 10th December 2012. By his Decision dated 7th December 2012 (“the first Decision”), Mr James concluded that five registered trade marks owned by Healey Sports Cars Switzerland Limited (“Healey”) should be revoked for non-use pursuant to s.46(1)(a) of the Trade Marks Act 1994. By his Decision dated 10th December 2012 (“the second Decision”), Mr James concluded that an opposition by Jensen Cars Limited (“JCL”) to Healey's international registration 1057115 succeeded in part, and that Healey's application to invalidate JCL's UK registration 2529258 failed.

Healey appealed from these two Decisions. The Amended Grounds of Appeal raised numerous issues. However, Mr Michael Silverleaf QC, who appeared for Healey, submitted that both appeals could be decided on the basis of a single issue: had there been genuine use of Healey's international registration M828078 JENSEN, which was registered in classes 12, 35, 37 and 40 as of 11th June 2004. If so, Healey should succeed on both appeals, on the basis that this registration pre-dated JCL's registration. If not, both appeals should be dismissed. Mr Simon Malynicz, who appeared for JCL, agreed that this issue was determinative of both appeals.

As will be clear from this introduction, Healey and JCL both lay claim to the trade mark JENSEN for motor vehicles. The marks JENSEN, INTERCEPTOR and JENSEN-HEALEY were applied to English-built sports cars, particularly in the 1960's and 1970's. It is common ground that these marks are still well known in the classic car world, and that the Jensen Interceptor and Jensen-Healey sports cars were iconic. As Healey states in its skeleton argument, in a passage which captures the simultaneous joy and frustration of the cognoscenti:

“They were the rivals of the E-Type Jaguars and Aston Martins of the day. The original JENSON INTERCEPTOR car may itself have been mechanically unreliable and perhaps was difficult to drive, but its shape and Italian styling was described as 'glorious'.”

This was summarised by Floyd J (as he then was) in Galileo International Technology LLC v European Union [2011] ETMR 22:

“11.

….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.”

At paragraph 29, Robert Walker LJ said this:

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

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.”

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.”

It is also important to remember that the Hearing Officers of the Trade Marks Registry sit as a specialist tribunal, and Mr James is a particularly experienced Hearing Officer. In MA (Somalia) v Secretary of State for the Home Department [2007] UKSC 49, [2011] 2 All ER 65 at [43] – [45], the Supreme Court stated as follows, in respect of appeals from specialist tribunals:

“43.... Although this is not virgin territory, the present case illustrates the need to reinforce what has been said on other occasions. The court should always bear in mind the remarks of Baroness Hale of Richmond in AH (Sudan) v Secretary of State for the Home Department [2007] UKHL 49, [2008] 1 AC 678 at para 30:

“This is an expert Tribunal charged with administering a complex area of law in challenging circumstances... [T]he ordinary courts should approach appeals from them with an appropriate degree of caution; it is probable that in understanding and applying the law in their specialised field the Tribunal will have got it right.. .They and they alone are judges of the facts...Their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts or expressed themselves differently.”

44 Those general observations were made in a case where the Court of Appeal had allowed an appeal against a decision of the AIT [Asylum and Immigration Tribunal]. The role of the court is to correct errors of law. Examples of such errors include misinterpreting the ECHR; misdirecting themselves by propounding the wrong test on some legal question such as the burden or standard of proof; procedural impropriety such as a breach of the rules of natural justice; and the familiar errors of omitting a relevant factor or taking into account an irrelevant factor or reaching a conclusion on the facts which is irrational.

45 But the court should not be astute to characterise as an error of law what, in truth, is no more than a disagreement with the AIT's assessment of the facts. Moreover, where a relevant point is not expressly mentioned by the tribunal, the court should be slow to infer that it has not been taken into account.”

Of course, on appeal from the Trade Marks Registry, the Court or Appointed Person will closely examine the Grounds of Appeal and the Decision under appeal to see if an error of law or principle has been made. On occasion, this will be the case. However the above guidance makes clear the nature of the examination that is to be undertaken by the Appellate Court.

Two alleged errors were identified by Healey in the present case. First, it was alleged that although Mr James had correctly set out the law in relation to genuine use, he had failed to apply it to the facts. By referring only to material which it claimed to be undisputed, Healey argued that there was clear evidence of genuine use within the relevant period and the Hearing Officer had failed properly to assess this evidence. Therefore he had failed to take account of relevant circumstances, or, in disregarding the evidence, he had taken account of irrelevant circumstances.

Secondly, it was alleged that Mr James' First Decision was internally inconsistent. At paragraph 25, Mr James concluded that he was unable to rely on evidence given on behalf of JCL about a meeting in September 2011, because it was provided by JCL's solicitor, who had no knowledge of the relevant facts. However, Healey argued that at paragraph 35 the Hearing Officer did take account of the evidence about that meeting, in questioning whether the use relied on by Healey really was intended to create a market for the goods amongst potential customers for motor cars.

Mr James reviewed the evidence at paragraphs 9-27 of the first Decision. He noted that ten witness statements had been filed on behalf of Healey by Healey's solicitor and four witness statements by JCL's former solicitor. Neither of them had any personal knowledge of the facts referred to in their statements, which Mr James observed was unattributed and/or multiple hearsay. He therefore concluded as follows at paragraph 15:

“I find that the narrative statements of facts in this case are of very little evidential value. Accordingly, except where the statements have persuasive documentary support, I will not be able to give the narrative evidence much weight. The burden of showing what use was made of the marks in the relevant 5 year periods falls on Healey. Therefore the unsatisfactory nature of the evidence has more potential to disadvantage Healey than JCL.”

Some parties to Registry proceedings may consider that it is simpler, more efficient or more cost effective to have evidence of fact given by their legal representatives. This appears to have been adopted in the present case. I make no criticism of the solicitors who have carried out their clients' instructions in the present case. However, this view is plainly misconceived. It is likely to lead, as in the present case, to such evidence being given little weight, on the basis that the person giving it has no knowledge of the relevant facts. There is no reason that such evidence should carry more weight in the Registry than in Court proceedings.

In SANT AMBROEUS Trade Mark [2010] RPC 28 at [42] Anna Carboni, sitting as the Appointed Person, set out the following helpful summary of the jurisprudence of the CJEU in Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-2439, Case C-259/02 La Mer Technology Inc v Laboratories Goemar SA [2004] ECR I-1159 and Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-2759. This was recently approved by Arnold J in Stichting BDO v BDO Unibank at [51] (who added references to Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237). It was set out by the Hearing Officer at [29] of his first Decision:

“(1)

Genuine use means actual use of the mark by the proprietor or a third party with authority to use the mark: Ansul, [35] and [37].

(2)

The use must be more than merely 'token', which means in this context that it must not serve solely to preserve the rights conferred by the registration: Ansul, [36].

(3)

The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin: Ansul, [36]; Sunrider, [70]; Silberquelle, [17].

(4)

The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market: Ansul, [37]-[38]; Silberquelle, [18].

(a)

Example that meets this criterion: preparations to put goods or services on the market, such as advertising campaigns: Ansul, [37].

(b)Examples that do not meet this criterion: (i) internal use by the proprietor: Ansul, [37]; (ii) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle, [20]-[21].

(5)

All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including in particular, the nature of the goods or services at issue, the characteristics of the market concerned, the scale and frequency of use of the mark, whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them, and the evidence that the proprietor is able to provide: Ansul, [38] and [39]; La Mer, [22]-[23]; Sunrider, [70]-[71].

(6)

Use of the mark need not always be quantitatively significant for it to be deemed genuine. There is no de minimis rule. Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor: Ansul, [39]; La Mer, [21], [24] and [25]; Sunrider, [72]”

Healey submitted from this summary that genuine use was to be contrasted with token use. Use which was not token, in the sense that it was not done merely to preserve the rights conferred by the registration was genuine and satisfied the statutory test.

In my judgment, acts which were not done merely to preserve the rights conferred by the registration may nonetheless be insufficient to constitute use within the meaning of section 46(1)(a). This is clear from the requirement to take all relevant facts and circumstances into account. It is also clear from [37] of Ansul, which the Hearing Officer cited at [31] of his Decision:

“Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns.”

A trade mark monopoly limits the choice of marks which are otherwise available to the public. Where a registration has not been used by or with the consent of the proprietor for 5 years, then, subject to certain statutory exceptions, the legislature has determined that it should be revoked. That is why, in answer to such an application for revocation, the proprietor must demonstrate that the use relates to “goods and services already marketed or about to be marketed”.

Mr Silverleaf did not rely on any of the narrative parts of the witness statements served on behalf of Healey. Indeed he made clear that, for the reasons set out by the Hearing Officer, there was no point in looking at the text of the statements. Rather, he relied on certain of the exhibits to those statements. Healey's submission was that the content of the exhibits were not or could not be disputed, and clearly evidenced genuine use in the relevant 5 year period ending on 22nd September 2011.

In particular, Healey relied on use of the marks JENSEN and INTERCEPTOR on the website www.iensensportscars.com. Web pages from the website were exhibited at ALM2 3 and were made available to the public on 19th September 2011. The first page announced “The New JENSEN INTERCEPTOR. Coming soon”. The second page stated that the new Jensen Interceptor would be built in Britain by the low volume automotive specialist CPP Global Holdings. The Jensen mark appeared on those pages, both in word and logo form. The website stated that the public unveiling of the new car was planned for late 2012 with deliveries to customers starting in 2014. Expressions of interest were invited by email to info@jensensportscars.com.

The Hearing Officer referred to the website at paragraph 18 of the first Decision. He noted the material parts of the web pages and the fact that it was first made available to the public 4 days before the date that the applications for revocation were filed.

Healey further relied on a press release dated 20th September 2011 (Exhibit ALM2 4) entitled “CPP to Build New Jensen Interceptor”. This announced that CPP Global Holdings had been appointed to engineer, develop and build the new car by the brand's owners, Healey Sports Cars Switzerland Ltd (“HSCS”). It stated that CPP, the British specialist automotive group, would finalise the new car's development in Coventry and manufacture it at a new production facility on Browns Lane from 2014. It stated that “a team of design consultants employed by HSCS has completed the design of the new Interceptor, which has already gained significant customer interest.” It said that “the public unveiling of the Interceptor is planned for late 2012, with deliveries to customers beginning in 2014” and that “expressions of interest can be registered on the website www.jensensportscars.com”.

The Hearing Officer referred to this press release at paragraph 19 of the First Decision. He noted the material parts of the press release and the fact that it was issued 3 days before the applications for revocation were filed.

The Hearing Officer considered the effect of these uses at paragraph 34 of the First Decision. He stated that “If the requirement is for the use of the marks to be in relation to goods 'already marketed or about to be marketed' then the use on the website and in the press release in relation to a car that did not exist at the time, and was at least a year away from being 'unveiled' does not appear to qualify”. He then considered that this might be taking too literal a view of what the CJEU meant by the words 'about to be marketed' in the Ansul case. He gave an example of a new aeroplane, which might take many years to develop. He considered that use within a five year period of a trade mark registered for such goods that resulted in provisional orders might well count as genuine use of the mark within the period. That was because such use would probably be viewed as “warranted in the economic sector concerned to maintain or create a share in the market for the goods” even though no-one saw an actual plane carrying the mark for another year or more. He pointed out, however, that two things distinguished that example from the present case. First, neither the press release nor the website provided sufficient information about the specification for the new car to permit potential customers to decide whether to register a serious interest in buying one. Secondly, there was no evidence, despite the passage of time, of anyone expressing any interest in purchasing the new car, as a result of the press release, the website or otherwise.

In this regard, Mr Malynicz on behalf of JCL drew attention to the answer of the CJEU in La Mer to the seventh question raised by the reference. This made clear that events subsequent to the five year period were admissible as evidence to corroborate genuine use during that period. The Court stated at paragraph 33:

“....while the Directive makes the classification of use of the trade mark as genuine use consequential only on consideration of the circumstances which pertain in respect of the relevant period and which predate the filing of the application for revocation, it does not preclude, in assessing the genuineness of use during the relevant period, account being taken, where appropriate, of any circumstances subsequent to that filing. It is for the national court to determine whether such circumstances confirm that the use of the mark during the relevant period was genuine or whether, conversely, they reflect an intention on the part of the proprietor to defeat that claim.”

So Healey could have submitted evidence of events subsequent to September 2011, to show that its use during the relevant period had borne fruit, and that the press release and website had resulted in at least provisional orders. However, no such evidence has been adduced.

Healey submitted that the present case was no different from Mr James' example of the aeroplane. Healey, in collaboration with CPP, were designing and building an exclusive, low volume sports car, which took years to develop. They had already built a platform ie an early prototype, which itself must have taken significant work and time, photographs of which were in evidence. Furthermore, the press release had generated very significant press coverage of the new Jensen Interceptor, both in national and specialist publications in the UK and elsewhere. This placed the use on the website and the press release in context – it was plainly genuine use within the relevant period.

I find no error of law or principle in the approach of the Hearing Officer to the evidence. He expressly referred to the photographs of the platform at paragraph 23 and noted that the evidence did not say (even if weight were to be attached to it) where these were taken, or by whom, or when. I would add that it is not possible to tell from the photographs whether the platform existed during the five year period, since they are undated and exhibited to a witness statement dated about a year after the relevant period had expired. Further, the Jensen mark is not visible on the platform shown in the photographs.

The Hearing Officer also referred to the press reports which picked up the press release at paragraph 20. He was clearly aware of the press interest in the development of the new Jensen Interceptor. However, these press reports were not use of the mark by Healey, and could not be relied on as such.

I agree with the Hearing Officer that the question of whether goods are “about to be marketed” is to be decided in the context of the economic sector concerned, and that some goods will take longer to develop than others. I also agree that the press release and website, which were published a few days before expiry of the five year period and enabled no more than initial interest in a future development to be registered, did not show that the goods were about to be marketed.

In summary, in my view this alleged error of principle was no more than a disagreement with the assessment of the facts by a specialist tribunal, which should not be interfered with on appeal. Furthermore, I consider that the Hearing Officer was clearly correct in his assessment of the evidence.

Mr McDonald, the former solicitor for JCL, gave evidence that he had been informed by Mr Hearley, a director of JCL, that he had met with Liam Cardiff of Healey shortly before the press release was issued and informed him that JCL was at an advanced stage of plans to develop a new Jensen car. Mr MacDonald therefore submitted that the press release was an attempt by Healey to buttress the trade mark registrations by making token use of the Jensen and Interceptor marks.

At paragraph 25 of the first Decision, the Hearing Officer made clear that he did not accept that evidence. It would have been straightforward to file a witness statement from Mr Hearley giving his account of what he had told Mr Cardiff. He concluded that whilst Mr MacDonald's hearsay account might be enough to establish that a meeting took place, he could not give evidence about what was said at a meeting which he had not attended, nor could he accurately date the meeting.

However, Healey complains that at paragraph 35 of the Decision, the Hearing Officer did take this meeting into account as the trigger for Healey's use of the JENSEN and INTERCEPTOR marks on the website and in the press release. Given his earlier findings, it is submitted that he was clearly in error to do so.

At paragraph 35 Mr James said:

“Further, leaving to one side Mr McDonald's evidence that the meeting between Mr Hearley and Mr Cardiff was the trigger for Healey's use of the Jensen and Interceptor marks on the website and in the press release, the very proximity between these uses and Healey's application to invalidate JCL's UK registration of Jensen on the basis of earlier mark IR 078, after 5 years without any relevant external use of that Jensen mark, calls into question whether the uses in question were really advertisements intended to create a market for the goods amongst potential customers for motor cars.” (emphasis added).

So the Hearing Officer expressly disregarded Mr McDonald's evidence in reaching his conclusion. However he was doubtful whether the uses relied on, which occurred only a few days before Healey itself applied to invalidate JCL's registration, were anything more than token use. Healey needed to rely on its own registrations in support of its application to invalidate, and its registrations were susceptible to revocation for non-use. In the absence of any contrary explanation in evidence by Healey, in my judgment the Hearing Officer was entitled to consider that this use by Healey was, on a balance of probabilities, made solely to preserve the rights conferred by its own registration. Therefore I find no internal inconsistency in his Decision and no error of law or principle.

For these reasons, and in spite of Mr Silverleaf's elegant submissions, I direct that both of these appeals shall be dismissed.