Chubb loses MINIMAX mark to rival
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In Minimax GmbH & Co KG v Chubb Fire Limited ( EWHC 1960 (Pat), July 29 2008), the Chancery Division of the High Court of England and Wales has allowed Minimax GmbH & Co KG’s appeal against a decision of the hearing officer in which the latter had held that Chubb Fire Limited had retained a sufficient residual reputation in the trademark MINIMAX for a passing off action to succeed.
In 2005 the Trademarks Registry ruled on Minimax’s application for the revocation of Chubb's MINIMAX trademarks (a device and a word mark). According to Minimax, neither mark had been used for a period of five years. The hearing officer agreed on the evidence that there had been no genuine use of the marks during that period.
In 2003 Minimax had applied to register the trademark MINIMAX for goods in Classes 1 and 9 of the Nice Classification (including fire extinguishing agents, and fire extinguishing and fire protection appliances). Chubb opposed the application under Section 5(4)(a) of the Trademarks Act, arguing that use of the mark applied for was liable to be prevented under the law of passing off.
Reaching a decision without the benefit of either an oral hearing (since neither side asked for one) or cross-examination, the hearing officer concluded that Chubb had a goodwill and reputation in the MINIMAX mark in respect of fire extinguishers, their servicing, refurbishment and embellishment. The evidence on which Chubb relied in this hearing was the same as that on which it relied in the 2005 hearing, which was delivered in the form of a witness statement made by Chubb’s commercial manager. As the parties' marks were identical, the hearing officer upheld Chubb's opposition and refused the application. Minimax appealed.
The court allowed the appeal. In the court’s view, the hearing officer had treated the evidence of the commercial manager as evidence of Chubb's continued use of the MINIMAX mark, concluding that there had been sufficient evidence of Chubb's goodwill and reputation in the mark. Since this was the wrong approach, the court decided to review the evidence itself. The court concluded that there did not appear to be any detectable proper basis for holding that Chubb had retained a sufficient residual reputation in the mark to be able to succeed in an action for passing off against Minimax's future use of the mark. According to the court, any evidence of use was scant or trivial.
Consequently, Chubb first lost control of the MINIMAX mark and was then unable to stop its rival from getting hold of it. One may wonder whether, in terms of long-term business strategy, Chubb’s opposition was ever likely to achieve anything other than mild nuisance.
Jeremy Phillips, IP consultant to Olswang, London
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