27 April, 2015
Facts
Dalsouple Societe Saumuroise Du Caoutchouc v Dalsouple Direct Limited and Anor [2014] EWHC 3963 (Ch) (1 December 2014) involved an application by Dalsouple Societe Saumuroise Du Caoutchouc (“Dalsouple France”) to register the trade mark “DALSOUPLE” in the UK for goods in classes 17, 19 and 27. This application was opposed by a Mr Gaukroger, Dalsouple Direct Ltd (“DDL”) and Dalhaus Ltd, on the basis that there was already an earlier registration of a United Kingdom mark “DALSOUPLE” in respect of goods in classes 17 and 27, and a Community Trade Mark (“CTM”) in respect of goods in classes 17, 19 and 27. (collectively, the “Earlier Trade Marks”) Mr Gaukroger controlled the latter two companies, which were the registered proprietors of the UK mark and the CTM respectively.
Dalsouple France filed an application for a declaration of invalidity on two grounds:
- the Earlier Trade Marks were registered in bad faith under section 3(6) of the United Kingdom’s Trade Marks Act 1994 (“the Act”); and
- the use of “DALSOUPLE” in the United Kingdom was liable to be prevented by virtue of the law of passing off under section 5(4) of the Act.
Dalsouple France alleged that Mr Gaukroger had applied to register the DALSOUPLE trademark when his company DDL was Dalsouple France’s agent in the UK and had done so without the knowledge or consent of Dalsouple France, and that Dalsouple France was the owner of goodwill in the mark DALSOUPLE in the UK. Mr Gaukroger replied that he had, in 1998, obtained the verbal consent of Raymond Mortoire, the then owner and Director-General of Dalsouple France.
The Hearing Officer for the Registrar of Trade Marks ruled that Raymond Mortoire’s consent had been obtained and hence the application for invalidity failed. Accordingly, Dalsouple France’s application to register the trade mark DALSOUPLE also failed. Dalsouple France appealed.
Decision
The English High Court upheld the judgment of the Hearing Officer.
The Court considered, and it was common ground between the parties, that an application to revoke a registration on the ground of bad faith could not succeed where consent to the registration had been granted by the earlier user of the trademark. This was so notwithstanding the fact that the legislative provision made no express reference to consent.
Dalsouple France had argued that the decision of the Hearing Officer should be overturned because:
- Consent to the registration needed to be in writing;
- Consent must be clear, distinct, unconditional and unequivocal, and that the alleged consent failed to satisfy these requirements; and
- The findings of fact of the Hearing Officer showed that he did not properly appreciate the evidence placed before him.
With regard to the first ground, Dalsouple France had argued that section 24(3) of the Act, which provided that assignments of trademarks had to be in writing, suggested that consent to registration should also be in writing. The Court rejected this contention by observing that there was no requirement in section 5(5) of the Act that consent also had to be in writing.
With regard to the second ground, the Court accepted that consent must be expressed in such a manner that an intention to renounce the pre-existing rights is unequivocally demonstrated. An express statement of consent is sufficient to satisfy this requirement, but whether an express statement of consent has actually been made is a question of fact to be determined in accordance with the normal civil rules of evidence. The onus of proof would lie on the party alleging that consent had been given, and the standard of proof was the ordinary civil standard of a balance of probabilities.
With regard to the third ground, the Court found that the Hearing Officer had not erred in determining that Raymond Mortoire had expressly consented to the registration of the DALSOUPLE mark in the UK, and accordingly dismissed the appeal.
Our Comments / Analysis
Section 8(9) of the Singapore Trade Marks Act (“TMA”) provides that notwithstanding the fact that use of the trade mark might be prevented by the proprietor of a prior right, the Registrar has the discretion to register the mark if the consent of the proprietor of the prior right is obtained. This is slightly different from the regime under the English Act—section 5(5) of the English Trade Marks Act 1994 provides that where consent is obtained, the prior right no longer bars the registration of the trademark.
Under the TMA, in applications for revocation of the trademark on the ground of the prior right, consent is still a defence and the Registrar has no discretion to revoke the trademark if consent has been granted by the proprietor of the prior right: see section 23(3) of the TMA. Therefore notwithstanding the difference at the point of registration, when an application is brought for revocation on the ground of prior right, the Singapore position is identical to that of the UK and there is no discretion to revoke the trademark where consent has been granted by the proprietor of the prior right.
As with the position in the UK, there is no legislative provision in Singapore requiring that such consent must be in writing. However, this case amply demonstrates that a written agreement would sometimes be vital, for consent (or, as in Dalsouple France’s case, to reject provision of consent) would be better off providing for a written form of the agreed position. Such a position could well have evidentially benefitted whichever party sought to rely on the written document.
For further information, please contact:
Chung Nian Lam, Partner, WongPartnership
chungnian.lam@wongpartnership.com
Jeffrey Lim, Partner, WongPartnership
jeffrey.lim@wongpartnership.com
