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	England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Oral-B Laboratories, Re Trade Marks Act [2000] EWCA Civ 288 (15 November 2000) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2000/288.html Cite as: [2000] EWCA Civ 288

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Case No: A3/99/0853+00/6471

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (MR JUSTICE LADDIE)
Royal Courts of Justice
Strand, London, WC2A 2LL
Date: 15 November 2000

This tabular summary has an element of oversimplification of the nuances with which case-law and practice have endowed the language of s.9(1) of the 1938 Act, and its statutory predecessors. In particular I readily accept the general submission made by Mr Christopher Morcom QC (on behalf of Gillette) and supported by authorities, that if mark X is confusingly similar to word Y, and word Y is unregistrable because of its descriptive nature, it does not automatically follow that mark X cannot be registrable. Nevertheless that may on examination often prove to be the result, and on this appeal both sides have addressed most of their submissions to the first two questions set out above.
The CONTURA application : the appeal
13. In this court Mr Morcom has put s.9(1)(d) of the 1938 Act in the forefront of his submissions. He submitted that the word `contour' has no direct reference to the character or quality of a toothbrush. Still more strongly, he submitted, CONTURA has no direct reference to the character or quality of a toothbrush. It will be apparent from the summary in the last paragraph that the first limb of this submission goes against the views of both the hearing officer and the judge. From there Mr Morcom went on to say that even if he were wrong on the first limb, CONTURA should be seen as an invented word which did not convey to ordinary English-speaking people any material information about toothbrushes (in other words it would not in this respect come within category (ii) or (vi) of the hearing officer's six-point classification, whether or not it came within category (v)).
14. The six-point classification, although approved by the judge, is not of course to be treated as if it were a statutory text. But the categories as a whole, and in particular categories (ii), (v) and (vi), do reflect the underlying principle that a word which has no obvious meaning (because it is newly coined and not simply a variant or amalgam of an existing word or words) cannot directly refer to the character or quality of goods, although it may contain some subtle allusion to them. Thus SOLIO (for photographic paper) was an invented word within the meaning of the statute in force in the Eastman case, despite a possible allusion to solar light. But ORLWOOLA (for woollen garments) fell on the other side of the line, because it was in substance (in the words of Fletcher Moulton LJ in Re H N Brock & Co [1910] 1 Ch 130, 150) "the words `all wool' grotesquely misspelt". So did DIABOLO because it was already the name of a game using a double-headed cone which had by 1907 become an ephemeral craze in England; Parker J said (in Philippart at p.284)
"If the facts as they now exist be considered, the word DIABOLO is no more registrable for a double-coned top than the word `cricket' is registrable for a set of stumps."
15. On behalf of Wisdom Mr Guy Burkill has submitted that the judge was right, for the right reasons. CONTURA is, he said, visually similar and phonetically almost identical to the ordinary English word `contour'; and there was a concurrent finding of fact by both the hearing officer and the judge that the word `contour' is descriptive of toothbrushes. Mr Burkill said that these findings were fully supported by the evidence. That seems to be putting it rather high. There was some written evidence on this matter including an affidavit of Ms Janice Collins, Wisdom's Sales and Marketing Director, expressing her view that `contour' made indirect reference to the shape of the brush and handle of a toothbrush. Mr Morcom emphasised that she did not claim a direct reference. The hearing officer referred to (but did not expressly evaluate) this evidence. In their conclusions both the hearing officer and the judge expressed their views quite shortly and without reference to the evidence. The former's finding is set out at para 8 above. The latter said,
"I also reject Mr Morcom's suggestion that the word contour alone bears no relevant reference to the character or quality of small hand-held toiletry devices. In my view it clearly does and, prima facie, it is not registrable."
Later in his judgment, in dealing with Mr Morcom's fall-back position, he said that he thought the word `contour' bears a direct and close reference to the character of goods of the type covered by the application.
16. I have set out fairly fully the history of the matter, and the submissions made to us, because this matter is no doubt of considerable commercial importance to the parties. But in the end the points at issue, although not easy, are essentially matters of impression. Just as the view of an experienced hearing officer is entitled to respect, so the concurrent views of an experienced hearing officer and a very experienced judge of the Patents Court are entitled to a special measure of respect. Their findings on the issue of direct reference, although relating to a question of fact of a specialised sort, and not derived from any oral evidence, should not lightly be departed from by a non-specialist appellate tribunal. I am not persuaded that both the hearing officer and the judge were wrong on this point.
17. Whether CONTURA is similar to, or a mere variant of, the English word `contour' is a very short point. It is very much a matter of impression and does not call for prolonged discussion or elaborate setting out of reasons. For my part I prefer the judge's view to that of the hearing officer. I agree with the judge that the mark is visually similar to and is phonetically almost identical to the word `contour'. In my judgment he was right to conclude that CONTURA was not registrable under s.9.
18. Mr Morcom has also maintained his fall-back position as to registration in Part B of the register under s.10. By s.18(7) of the 1938 Act the court can on an appeal in opposition proceedings make an order "determining whether, and subject to what conditions or limitations, if any, registration is to be permitted". This echoes the Registrar's powers under s.18(5). In Re Blue Paraffin trade mark [1977] RPC 473, 495, Whitford J expressed the view that this gives the court power, on an appeal in opposition proceedings objecting to a registration in Part A, to order registration in Part B. He differed from the contrary decision of an Assistant Comptroller in Re Parison Fabric's application (1949) 66 RPC 217. That decision had depended on a contrast with the language of s17(2) and (3) of the 1938 Act. Mr Morcom also drew attention to s.32(5), dealing with rectification of the register.
19. It is curious that this court should be asked, six years after the repeal of the 1938 Act, to decide a point which was never authoritatively decided during the period of more than fifty years when the 1938 Act was in force. The contrast in language between ss.17 and 18 (which was relied on in Parison) is striking. Whitford J was a very experienced judge of the Patents Court but he did not explain the reasons for his dictum and the Court of Appeal refrained from commenting on it. Like the judge I prefer not to decide the point unless it is necessary to do so.
20. On the assumption that he had power to order registration in Part B the judge declined to exercise his discretion to do so for reasons which he expressed as follows:
"I do not think that this is a case in which it is appropriate to exercise [my assumed discretion] in the applicant's favour. In my view the word contour bears a direct and close reference to the character of the sort of goods in respect of which the mark is sought to be registered and the mark CONTURA conjures up the same close reference. In practice most of the marks which have failed to obtain registration in Part A but succeeded in Part B have been borderline ones where the lack of inherent distinctiveness was compensated for by proof of distinctiveness acquired by use. There is no such use or acquired distinctiveness here. I can see no more reason for allowing this mark to proceed in Part B than there is for allowing it to proceed in Part A."
21. Mr Morcom has submitted that that revealed an error of principle. He pointed out that in the 1938 Act Parliament had deliberately removed the requirement (found in the Trade Mark Act 1919) that a mark should have been used for at least two years before it could be accepted for registration in Part B. Mr Burkill, on the other hand, contended that this court has no reason to interfere with the judge's exercise of his discretion. He also submitted that Gillette's failure to offer any disclaimer of exclusive use of the word `contour' showed that it was seeking an indirect monopoly in that word, and that that should count against Gillette (as to such disclaimers see Kerly, Law of Trade Marks and Trade Names, 12^th edition para 8-22).
22. The practice under s.10 is summarised by the distinguished editors of Kerly at para 8-76:
"Applications for registration in Part B are rare; most Part B registrations arise from the practice of allowing registration in Part B of marks which are borderline cases for registration in Part A: either unused marks, which just fail to be inherently distinctive in the sense of section 9, or used marks, for which the evidence of distinctiveness is just insufficient for Part A."
The passage from the judgment set out above seems to be well in line with this practice: the judge was saying that he did not regard it as a borderline case under either of two possible heads (inherent distinctiveness of an unused mark or practical distinctiveness of a used mark). He was not saying that use was always necessary. I accept Mr Burkill's submission that there is no ground on which to interfere with the judge's exercise of his discretion, on the assumption that he did have power to direct registration in Part B. I would therefore dismiss Gillette's appeal against the judge's order on the CONTURA application.
The WISDOM CONTOUR appeal
23. The only relevant ground of opposition to the WISDOM CONTOUR application was based on the CONTURA application and on s.5(2) of the 1994 Act, the terms of which are set out in para 5 above. That ground is wholly dependent on the CONTURA mark being registrable (and so constituting "an earlier trade mark" within the meaning of s.5(2)(b)). Mr Morcom accepts that if this court dismisses Gillette's CONTURA appeal (and I understand that my lords are minded to do so) then the only ground of appeal in the WISDOM CONTOUR opposition proceedings disappears, and that appeal also must be dismissed.
LORD JUSTICE JONATHAN PARKER:
I agree.
SIR RONALD WATERHOUSE:
I also agree.
Order:
1. Appeals dismissed with costs agreed in the sum of £9, 000 to be divided equally between the two matters if there are two separate orders.
2. Permission to appeal to the House of Lords refused.