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

B e f o r e :

LORD JUSTICE ROBERT WALKER
LORD JUSTICE JONATHAN PARKER
and 
SIR RONALD WATERHOUSE
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	IN THE MATTER OF the Trade Marks Act 1938 (as amended) and the Trade Marks Act 1994
AND IN THE MATTER OF Application No. 1,589,316 by Oral-B Laboratories
		Appellant	
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	IN THE MATTER OF the Trade Marks Act 1994
AND IN THE MATTER OF Application No. 2,008,229 by Wisdom Toothbrushes Limited	Respondent	

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(Transcript of the Handed Down Judgment of
Smith Bernal Reporting Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040,  Fax No:  020 7831 8838
Official Shorthand Writers to the Court)
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Mr C Morcom QC (instructed by Bristows, London WC2A 3AA) for the appellant
Mr G Burkill (instructed by Wragge & Co, London EC1 2NH) for the respondent

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JUDGMENT
(As Approved by the Court)

© Crown Copyright

Lord Justice Robert Walker:
	Introduction
1.		This is an appeal against two orders of Laddie J made on 15 July 1999.  The orders were made after a single hearing, after which the judge handed down a single reserved judgment, dealing with two separate but associated sets of opposition proceedings in relation to trade marks.  Indeed each set of proceedings was a sort of mirror-image of the other.  The judge put this pithily near the beginning of his judgment, where he referred to each side as having attacked the other for inconsistency, oblivious to the warning given to those who live in glass houses.
2.		The mirror-image effect was not however complete.  The two opposition proceedings had to be considered under different statutes.  Oral-B Laboratories, a division of Gillette Canada Inc, applied on 28 October 1994 to register the trade mark CONTURA for goods in class 21 of the international classification, in particular toothbrushes and electric toothbrushes.  That application (now pursued, after a substitution order made in this court, by Gillette Canada Inc) was opposed and the opposition proceedings are now being conducted by Wisdom Toothbrushes Ltd (“Wisdom”).  Those proceedings have to be considered under the Trade Marks Act 1938 (“the 1938 Act”), which continues to apply under transitional provisions in the Trade Marks Act 1994 (“the 1994 Act”).  By contrast Wisdom’s application to register the trade mark WISDOM CONTOUR for goods in class 21, in particular toothbrushes, was made in 1995 and the opposition proceedings by The Gillette Company and Oral-B Laboratories have to be considered under the 1994 Act.  All the Gillette entities can be referred to together as “Gillette”.
3.		The 1994 Act built on the foundations of the 1938 Act but it made some significant changes in order to give effect to the 1990 White Paper ‘Reform of Trade Mark Law’, to implement EEC Council Directive 89/104 (approximation of the laws of the Member States relating to trade marks) and to comply with other international obligations.  It came into force (with certain exceptions) on 31 October 1994 and repealed the 1938 Act for the future, but under Schedule 3, para 10 of the 1994 Act pending applications were in general to be dealt with under the 1938 Act.
4.		One feature of the 1938 Act which has disappeared in the 1994 Act (even for existing registrations) was the division of the register of trade marks into two parts, Part A and Part B, with rather different levels of protection under ss.4 and 5 of the 1938 Act.  In relation to the CONTURA mark the most important provisions of the 1938 Act are those of s.9 (distinctiveness requisite for registration in Part A) which, as applicable to goods rather than services, is as follows:
“(1)  In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:
a)	the name of a company, individual, or firm, represented in a special or particular manner;
b)	the signature of the applicant for registration or some predecessor in his business;
c)	an invented word or invented words;
d)	a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
e)	any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness. 
(2) For the purposes of this section “distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which -
(a) the trade mark is inherently adapted to distinguish as aforesaid; and 
(b)  by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish as aforesaid.”
5.		In relation to the WISDOM CONTOUR mark the most important provisions of the 1994 Act are those of s.5 (relative grounds for refusal of registration), subsections (1) to (3) of which are in the following terms:
“(1)  A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2)  A trade mark shall not be registered if because -
a)	it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, 
or
b)	it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is 	protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3)  A trade mark which -
(a)  is identical with or similar to an earlier trade mark, and 
(b)  is to be registered for goods or services which are not similar to those for which the earlier trade mark 	is protected,
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”

The CONTURA application: proceedings below
6.		On Gillette’s application to register CONTURA, opposed by Wisdom, the hearing officer (Mr M Knight) gave a written decision on 12 October 1998.  He noted that other grounds of opposition (under ss.11 and 12 of the 1938 Act) had been abandoned and that section 10 (registration in Part B) was no longer appropriate.  The argument really turned on whether CONTURA was an invented word (s.9(1)(c)) and a word “having no direct reference to the character or quality of the goods” (s.9(1)(d)). 
7.		In relation to invented words the hearing officer set out some principles which he had derived from authority, notably the SOLIO case (Eastman Photographic Materials Co v Comptroller-General [1898] AC 571 and the DIABOLO case (Philippart v William Whiteley Ltd [1908] 2 Ch 274):
i)	“an invented word must be newly coined,
ii)	it must not be a word which conveys some obvious meaning to an ordinary English-speaking citizen within the jurisdiction,
iii)	it must not be a mere combination of two English words, though it may be a compound word,
iv)	it may be traceable to a foreign source, but a foreign word will not qualify merely because it has not been current in English usage,
v)	it may be a word containing an allusion to the character or quality of the goods, provided that allusion be covert and skilful,
vi)	it may not be a word which has undergone a mere variation of its orthography or termination, if, in its slightly varied form it still conveys the idea of the original word, or if it refers to the character or quality of the goods.”
8.		The hearing officer took the view that the word CONTURA met all six of these tests.  In particular he did not consider the word to be similar to ‘contour’ or to be “a mere variation of the orthography or termination of a word” (the expression used by Lord Hershell in Eastman at p.581).  He saw CONTURA’s association with contour as no more than an allusion (and presumably a “covert and skilful allusion”, the expression used by Lord Macnaghten in Eastman at p.583).  On that view CONTURA satisfied s.9(1)(c) and it followed more or less automatically that it was not disqualified by s.9(1)(d).  The hearing officer stated that if (contrary to his view) the word CONTURA  was similar to ‘contour’
“then the trade mark would not have been acceptable for registration because the word contour does have a meaning insofar as toothbrushes are concerned - the head or handle being shaped to fit either the mouth or hand.”
But on the view which he took he dismissed the opposition.
9.		On Wisdom’s appeal to the High Court Laddie J did not accept that the hearing officer had incorrectly stated the law, nor did he accept the submission (made on behalf of Gillette, the respondent to the appeal) that the hearing officer was wrong in his view that the word ‘contour’ does have a meaning which refers to the character or quality of a toothbrush.
10.		The judge did however differ from the hearing officer on the principal ground on which he had dismissed the opposition, that is the lack of similarity which he found between CONTURA and the word ‘contour’.  He said in para 12 of his judgment,
“On an appeal like this, the court pays particular regard to the views of an experienced hearing officer but is not bound by them.  I cannot agree with Mr Knight’s conclusion that there is no similarity between contour and CONTURA.  Whether there is such similarity is a matter of impression.  My view initially on seeing the mark was that it is visually similar and phonetically almost identical to the word contour.  That continues to be my view.  The soft “a” at the end of the latter is insufficient to detract from the phonetic equivalence of the rest of the mark.  CONTURA is a variation of contour which still conveys the idea of the latter word.  Mr Knight said that if the marks were similar, CONTURA would not be acceptable for registration.  I agree.”
11.		The judge also rejected what he described as Gillette’s fall-back position, that the Registrar and the court had a discretion to allow the application to proceed in Part B of the register, under the less stringent test in s.10 of the 1938 Act.  He said that even if such a discretion existed (which he did not need to decide) he did not think it appropriate to exercise it in favour of Gillette, as there was no history of use and so no distinctiveness acquired by use.  This point had not arisen before the hearing officer since he granted registration in Part A of the register under s.9.
12.		The determination of the issues below can therefore be summarised as follows.

	Hearing officer	Judge	
Does ‘contour’ describe (or have direct reference to) toothbrushes?
	Yes 
(but not necessary to his decision)	Yes	
Is CONTURA similar to (or a mere variant of) ‘contour’?
	No	Yes	
Is mark registrable under s.9?
	Yes	No	
Should it be registered (by exercise of discretion) under s.10?	Did not arise

	No	
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, 12th 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.
(Order does not form part of approved judgment.)