Before: Mr Justice Pumfrey
November 28, 2001
Wunderkind Trade Mark
Trade mark – Application – Opposition – Registration allowed with restricted specification of goods – Appeal by applicant – Nature of appeal to High Court – Principles for admission of fresh evidence on appeal.
The applicant applied to register the mark WUNDERKIND in Class 25 for “clothing footwear and headgear”. The application was opposed on the basis of earlier marks of the opponent, in particular, WONDERBRA for “brassieres” and (as a separate registration) for “swimwear incorporating provision for bust support, brassieres, panties, briefs and bodies” and WUNDERPANTS for “pants, underwear, trousers, briefs, panties, knickers, boxer shorts all for men, women and children, all included in Class 25”. The opponent relied on sections 5(2) and 93) of the Trade Marks Act 1994 in support of its opposition. The applicant argued that there was no likelihood of confusion of the laudatory word “wonder” combined with another English word such as “legs, “bra”, “body” and that none of these combination was remotely similar to “wunderkind” in pronunciation.
In the Trade Marks Registry, the opposition succeeded on the ground of section 5(2)(b) of the 1994 Act but the mark was allowed to proceed to registration with the specification of goods restricted to “clothing; footwear; headgear; sports shoes; parts and fittings for aforesaid goods, but not including pants; trousers; briefs; panties; knickers; boxer shorts; brassieres; women’s swimwear or bodies”.
The applicant appealed to the High Court pursuant to section 76 of the Act. In support of the appeal, the appellant sought to leave to introduce further evidence which related to the use and understanding of the word “wunderkind” in the English language. The respondent supported the registrar’s decision and contended that leave to adduce the fresh evidence should be refused as it was inconclusive and would make no difference to the result of the appeal.
Held, refusing the admit the further evidence and dismissing the appeal:
(1) Proceedings before the Registrar of Trade Marks were intended closely to resemble proceedings in court and there was nothing in the nature of the tribunal which required appeals from the Registry to be treated in any special way. An appeal from the Registry was limited to a review of the decision.
(2) The task of the court on an appeal from the Registry as to see whether in all the circumstances the overriding objective was furthered by the admission of fresh evidence, having regard, in particular, to the factors set out in Ladd v. Marshall.
(3) In a trade mark appeal, other factors outside the Ladd v. Marshall criteria might well be relevant and it was legitimate to take into account factors such as those enumerated in Hunt-Wesson Inc’s Trade Mark Application (SWISS MISS) provided always that it was remembered that the factors set out in Ladd v. Marshall were basic to the exercise of the discretion to admit fresh evidence and that those factors had particular weight when considering whether or not the overriding objective was furthered.
(4) The further evidence would not be admitted and as the hearing officer had not erred in reaching his decision, the appeal would be dismissed.
“Reports of Patent Cases” issue 24 2002