Re Gary Atkinson's Trade Mark - Owen v Atkinson

 

Jane Lambert

Trade Marks Registry (Judi Pike)  Re Atkinson's Trade Mark, Huw Richard Owen v Gary Atkinson  BL O/1202/23 20 Dec 2023

This was an application to the Registrar of Trade Marks by Huw Richard Owen ("Mr Owen") for a declaration that UK trade mark number 3687974 which Gary Atkinson ("Mr Atkinson") had registered for a range of goods in classes 1, 7, 11, 19, 21, 31 and 37 was invalid under s.47 (1) and/or (2) (b) of the Trade Marks Act 1994.  Mr Owen alleged that the mark had been registered in bad faith within the meaning of s.3 (6) and that he had an "earlier right" in relation to which the condition set out in s.5 (4) had been satisfied. 

S.5 (4) (a) provides:

"A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—
(a)    by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met."

Mr Owen claimed the right to bring an action for passing off to restrain Mr Atkinson's use of trade mark number UK3687974 on the ground that he had run a licensed pet shop on the island called "Anglesey Aquatics" or "Mon Aquatics" since January 2017.  He also claimed that Mr Atkinson's registration and use of that mark amounted to bad faith.  Mr Atkinson denied Mr Owen's allegations and requested sight of the evidence upon which Mr Owen relied.

Neither party was legally represented and the invalidity proceedings came on before Judi Pike ("Ms Pike") acting on behalf of the Registrar.  As neither side had requested a hearing, Ms Pike determined the application on written submissions and evidence.  She delivered her decision on 20 Dec 2023 (see Re Atkinson's Trade Mark, Owen v Atkinson BL O/1202/23 20 Dec 2023).

After referring to s.5 and s.47 of the Act Ms Pike cited paras [55] and [56] of Judge Melissa Clarke's judgment in Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) (13 June 2017):

“[55]. The elements necessary to reach a finding of passing off are the ‘classical trinity' of that tort as described by Lord Oliver in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL, [1990] RPC 341, HL), namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation. The burden is on the Claimants to satisfy me of all three limbs. 

[56] In relation to deception, the court must assess whether "a substantial number" of the Claimants' customers or potential customers are deceived, but it is not necessary to show that all or even most of them are deceived (per Interflora Inc v Marks and Spencer Plc [2012] EWCA Civ 1501, [2013] FSR 21).”

She also mentioned Lord MacNaghten's speech in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at 223:  

“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start."

As Mr Atkinson had applied for his trade mark on 31 Aug 2021, Ms Pike held at para [12] of her decision that Mr Owen must show that at that date he had sufficient goodwill in his business to bring an action for passing off.  

Mr Owen made a witness statement stating that he had traded as Anglesey Aquatics and Môn Aquatics from when he opened his business in 2017. One of the exhibits is a licence under The Animal Welfare (Licensing of Activities involving Animals (Wales) Regulations 2021 covering the period from 25 March 2022 to 24 March 2024 identifying his business as Môn/Anglesey Aquatics trading from an address on the island,.  He also exhibited a business card, screen prints of a Facebook page, a web page, a social media comment page and an address label.   A screenshot showed that Mr Owen owned the domain name <monangleseyaquatics.co.uk> but it was not clear when if at all he had ever used it.  Ms Pike observed at para [19] that mere ownership of a domain name does not prove that the name is in use or has contributed to the accrual of goodwill.

None of these exhibits were dated and the hearing officer expressed Mr Owen's first difficulty in para [20]:

"The assessment as to whether Mr Owen owned sufficient goodwill at the relevant date of 31 August 2021 is tied to goodwill accrued prior to that date. This makes it very important that exhibits are dated or, if undated, other evidence corroborates them and make it possible to place their significance as generating custom prior to the relevant date. It is also very important that the evidence which is dated shows that use which generated custom took place before the relevant date. I have already referred to the lack of dating in respect of the delivery label and the social media and website screenshots. Exhibits MA35, MA36 and MA37 are photographs of shelves stocked with aquatic goods (such as decorative rocks and fish food). They are undated and Mr Owen refers to them in the present tense: “I have a number of accounts open with a number of these [trade accounts with suppliers, distributors and wholesalers], which entitles my business to buy and sell all goods associated within the aquatic trade as in pictures Exhibit MA35, Exhibit MA36 and Exhibit MA37…”

She added at [23]:

"What Mr Owen must show in evidence is that, by 31 August 2021, he owned a protectable goodwill in the signs relied upon, sufficient to have prevented the use of the contested mark under the law of passing off. He states that he has been using Mon Aquatics/Anglesey Aquatics since January 2017, but the evidence falls a long way short of demonstrating the relevant goodwill in either or both names. I cannot tell from the evidence how much turnover was achieved prior to the relevant date as there are no such figures and no dated invoices. There are no dated website or social media screenshots. Owning an unused domain name does not show goodwill. Goodwill is the attractive force which brings in custom, but there is no evidence to show when that custom was generated, and how much custom was generated. The only dated evidence of trade dates from fourteen months after the relevant date. The pet shop licence is dated after the relevant date. Although there are screenshots of messages from customers who went to Mr Atkinson’s shop instead of Mr Owen’s premises, they are not dated. In the absence of any content which pre-dates the relevant date of 31 October 2021, it is not possible to put these in context."

Another difficulty is that Mr Owen gave no evidence of sales from which the hearing officer could assess the level of goodwill.   Referring to Thomas Mitcheson QC's judgment in Smart Planet Technologies, Inc. v Rajinda Sharma BL O/304/20, 2 June 2020, she said:

"The law protects a small goodwill but not a trivial one; i.e. sales so small that the goodwill is trivial."

Further, "Aquatics" strongly alluded to the type of goods and "Mon/Anglesey" the location of the business.  She had already noted that where a sign is descriptive or weakly distinctive, the evidence needs to be compelling.  At para [28] she quoted Lord Simonds's speech in Office Cleaning Services Limited v Westminster Window & General Cleaners Limited [1946] 63 RPC 39:

“Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.” 

She concluded at para [29] that Mr Owen's case based on s.47 (2) failed.

Turning to the question of whether Mr Atkinson's application had been made in bad faith, Ms Pike referred to para [67] of Lord Justice Floyd's judgment in Sky Ltd and others v Skykick, UK Ltd and another (Rev2) [2021] RPC 17, [2021] EWCA Civ 1121:

"The following points of relevance to this case can be gleaned from these CJEU authorities:

1. The allegation that a trade mark has been applied for in bad faith is one of the absolute grounds for invalidity of an EU trade mark which can be relied on before the EUIPO or by means of a counterclaim in infringement proceedings: Lindt at [34]. 

2. Bad faith is an autonomous concept of EU trade mark law which must be given a uniform interpretation in the EU: Malaysia Dairy Industries at [29]. 

3. The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law, i.e. the course of trade and having regard to the objectives of the law namely the establishment and functioning of the internal market, contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin: Lindt at [45]; Koton Mağazacilik at [45]. 

4. The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. 

5. The date for assessment of bad faith is the time of filing the application: Lindt at [35]. 

6. It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40].

7. Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. 

8. Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. 

9. For that purpose it is necessary to examine the applicant’s intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41] – [42].

 10. Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant’s objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. 

11. Bad faith can be established even in cases where no third party is specifically targeted, if the applicant’s intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Mağazacilik at [46]. 

12. It is relevant to consider the extent of the reputation enjoyed by the sign at the time when the application was filed: the extent of that reputation may justify the applicant’s interest in seeking wider legal protection for its sign: Lindt at [51] to [52]. 

13. Bad faith cannot be established solely on the basis of the size of the list of goods and services in the application for registration: Psytech at [88], Pelikan at [54]”.

Citing Red Bull GmbH v Sun Mark Limited and Sea Air & Land Forwarding Limited [2012] EWHC 1929 (Ch) the hearing officer held that it was necessary to ascertain what Mr. Atkinsion knew when he applied for his trade mark.  She observed that an allegation of bad faith is a serious allegation which must be distinctly proved.  She said at [36] that the basis of the bad faith claim was that Mr Atkinson had taken Mr Owen’s Welsh business name which he has been using since 2017. As Ms Pike had found that Mr Owen had not demonstrated in his evidence that he had sufficient goodwill in the name Mon Aquatics (or Anglesey Aquatics) prior to the relevant date of 31 August 2021, the case under s,47 (1) must also fail.

As Mr Owen's application for trade mark UK3687974 to be declared invalid failed, Mr Atkinsin's trade mark remains on the register.   The hearing officer said that Mr Atkinson would have been entitled to costs had he filled in the appropriate form before the hearing.  As he did not do so, Ms Pike made no order for costs.

As I said above, neither party was represented. Time and possibly money might have been saved had either or preferably both of them taken advantage of the pro bono IP Clinic that has operated at the Menai Science  Park since 2018.   This case was just the sort of issue that the clinic was set up to resolve.  Anyone wishing to discuss this case may do so by calling me on 020 7494 5252 during office hours or sending me a message through my contact page.