Who: Dalsouple Societe Saumuroise du Caoutchouc v Dalsouple Direct Limited
Where: High Court of Justice, Chancery Division
When: 1 December 2014
Law stated at: 9 January 2015
Rubber floor tile maker Dalsouple Societe Saumuroise du Caoutchouc (“Dalsouple France“) applied to register the word DALSOUPLE as a trade mark in the UK. Dalsouple Direct Ltd and others (the “Defendants“) opposed the application based on their earlier trade mark registrations of the same mark in respect of the same goods and services (the “Registered Marks“).
Dalsouple France filed for invalidity of the Registered Marks on the basis of sections 5(4)(a) (unregistered trade mark) and 3(6) (bad faith) of the Trade Marks Act 1994 stating that the Defendants had applied to register the Registered Marks when they were Dalsouple France’s agent in the UK and without their knowledge or consent. The Defendants in response claimed that the application to register the mark was made with the express consent of the owner of Dalsouple France in 1998.
Section 5 (5) of the Trade Marks Act 1994 states that “Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.”
Did Dalsouple France consent to its agent registering its brand in the UK?
The Hearing Officer at the IPO held that the owner of Dalsouple France at the time had indeed consented to the registration of the mark by Dalsouple Direct Ltd. Dalsouple France appealed against the Hearing Officer’s decision.
Dalsouple France argued that the Hearing Officer erred in law that consent did not need to be in writing. They further argued that consent had to be unequivocal and that the Hearing Officer had failed to recognise the improbability that consent was granted and that the UK registration should have been held on trust for Dalsouple France among errors of findings of fact.
The High Court stressed the importance of the role of the appeal court and referred to case law which held that where there has been no misdirection on an issue of fact, the presumption is that the first instance judge’s conclusion is correct.
The High Court held that the 1994 Act has no requirement for consent in s 5(5) to be given in writing. The High Court agreed with Dalsouple France’s argument that “consent” must be interpreted in the same way as “consent” in Article 7(1), that consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated.
However, It was held that whether an express statement of consent has been made in this case was a question of fact to be determined in accordance with normal civil rules of evidence and that the Hearing Officer had made no error in law in his approach to the determination of this question.
The Court also held that consent could not be concluded to be improbable based on the evidence put to the Hearing Officer. The Court also found that there was no foundation for the assertion that the registration was held on trust for Dalsouple France.
Accordingly, the Court dismissed the appeal.
Why this matters:
This case is a reminder that a brand owner appointing an agent should clearly regulate the question of ownership and registration of any relevant trade marks in the agency agreement and ensure that before any such agent is appointed, appropriate trade mark registrations are already in place in all relevant territories and in the name of the brand’s legitimate owner.