Today, the UK High Court gave judgment in an appeal with important ramifications for future trade mark appeals and for those who prosecute trade marks in the UK.
Wolfgang Joop, the German fashion designer and parfumier, applied to register WUNDERKIND as a UK trade mark for a range of goods, including clothing. The application was opposed by Canadelle Partnership, the manufacturer of "Wonderbras" and proprietor of the trade marks WONDERBRA and WUNDERPANTS for bras and underwear. On 15 August 2001, the Hearing Officer in the UK Trade Marks Registry, rejected Joop's application to register WUNDERKIND for bras, underwear and trousers (but not other clothing). He found that the respective trade marks were similar both visually in terms of their constituent parts, but also aurally in their likely pronunciation in the UK. He rejected the argument that "wunderkind" was a word that had entered the English language from German and which would have been understood by the average consumer as referring to "child prodigy" as at 1997 (the date of the application), even if it had by the time of the hearing in 2001.
Joop appealed direct to the High Court. It also applied to adduce fresh evidence of the meaning of wunderkind in the English language as at 1997, from a number of media sources.
Mr. Justice Pumfrey giving judgment took the opportunity to clarify a number of issues for those filing trade marks and dealing with oppositions in the UK.
First, he concluded that the new rules brought in to govern appeals in mainstream High Court litigation should apply equally to proceedings before the Trade Marks Registry. As such, Rule 52 of the Civil Procedure Rules required that the appeal of a matter from the Registrar of Trade Marks should be by way of strict review only (not a rehearing), and then only if the decision of the hearing officer was either wrong or unjust because of a serious procedural irregularity. In this case, the Judge declined to find any criticism of the Hearing Officer's approach. In future, trade mark appeals should not be viewed as a "second bite of the cherry" for the losing party first time around.
Second, the Judge refused to admit the fresh evidence even though it went to a point that was not in issue before the previous hearing. He adopted the strict test laid down by the Court of Appeal recently that further evidence would not be let in without the leave of the Court. The Court was then to exercise its discretion to admit such evidence with an eye upon the overriding objectives set out in the rules for all civil litigation. In this case, the balancing exercise favoured its exclusion.
A clear message is being sent to those trade mark attorneys or solicitors who file/prosecute trade mark applications. Gone are the days that registry proceedings were seen as an administrative procedure with their own relaxed form of rules. The brave new world of civil litigation now extends to proceedings in the Trade Marks Registry (even as a specialist tribunal). In future, the pleadings for all such proceedings will need to be prepared from the outset by advisers with an eye upon the strict rules of civil procedure and evidence. This will undoubtedly have an effect upon the practice of filing oppositions for strategic reasons and also the overall costs to the client in taking such action.
Herbert Smith acted for Wolfgang Joop.
"© Herbert Smith 2002
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