Costs should be considered before referring cases to the High Court

United Kingdom

In Emanuel v Continental Shelf 128 Ltd, an appointed person of the UK Patent and Trademark Office has ruled that the decision whether to refer an appeal to the High Court following a request from one of the party's involved should reflect the financial standing of the party not requesting the reference.

Fashion designer Elizabeth Emanuel started trading under her name in 1990. In 1996 she formed EE plc with Hamlet International plc. She assigned her business's assets to EE, including the goodwill and a pending UK trademark application for the name 'Elizabeth Emanuel' and device. EE later assigned its business, including the goodwill and the trademark that had been registered in the meantime, to Frostprint Ltd. Frostprint subsequently changed its name to Elizabeth Emanuel International Ltd. Shortly after Emanuel left the company in October 1997, Elizabeth Emanuel International assigned the ELIZABETH EMANUEL mark to Oakridge Trading Company. Oakridge then applied to register another mark featuring the name 'Elizabeth Emanuel'.

In January 1999 Anthony Drew, an individual, applied to oppose the application and revoke the registered mark and device. By the time of the hearing Emanuel stood as the opponent to the registration, and Continental Shelf had replaced Oakridge as the applicant and mark owner. Emanuel contended that the registered mark and the proposed registration were deceptive under Section 3(3)(b) of the Trademarks Act 1994 because she was a world-famous fashion designer at the relevant dates and they were likely to confuse consumers as to the origin of Continental Shelf's goods. Continental Shelf disputed this on the basis that Emanuel had sold the goodwill in her business and had assigned her trademark. It also claimed that a point of general legal importance arose, namely whether (i) it was possible under the 1994 act for a purchaser to acquire a business, goodwill and registered trademark and continue trading under that mark, or (ii) the mark would be vulnerable to revocation if the average consumer would think that the business was still associated with the vendor at the time of acquisition.

The hearing officer dismissed the opposition and application for revocation. Emanuel appealed to the appointed person. Continental Shelf requested that the appeal be referred to the High Court under Section 76(3) of the Trademarks Act on the grounds that a point of general legal importance was involved. Emanuel objected to this request, arguing that it was likely that the higher costs of the High Court would force her to discontinue her appeal.

David Kitchin, the appointed person, refused to refer the case to the High Court. He found that:

  • the appointed person has a discretion whether to refer an appeal to the court even if there is a point of general legal importance;

  • the power to refer should be used sparingly so that the purpose of appeals to the appointed person is not defeated;

  • where a point of general legal importance cannot be identified it will be rare for a reference to be made;

  • the cost to the party not requesting the reference should be taken into account, particularly if this party is an individual or a small company;

  • the appointed person must have regard to the public interest and the balance between swift resolution of uncertainty as to the state of the register and the courts deciding important points of law; and

  • the registrar's attitude is important but not decisive.

Although Kitchin accepted that the case raised an issue of legal importance regarding Section 3(3)(b), he doubted that it could be regarded as an issue of general legal importance. He also reasoned that if Emanuel had to abandon the appeal because of the higher costs of the High Court, the point of law would not be decided at all, which would not serve the public interest.

Chris McLeod, Hammonds, London

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