High Court halts application to adduce new evidence

In Kambly SA Spécialités de Biscuits Suisses v Intersnack Knabber-Gebäck GmbH & Co KG, the High Court of England and Wales has refused the plaintiff’s application to (i) adduce new evidence, and (ii) amend the grounds of opposition in its appeal against a hearing officer’s decision to allow the registration of the mark GOLDFISCHLI. The court held, among other things, that the issues raised had been conclusively decided at the earlier proceedings and could not be re-examined.

Kambly SA Spécialités de Biscuits Suisses registered the marks GOLDFISH and GOLDFISCHLI in the 1960s for a snack product but it has not made much use of them in the United Kingdom. Intersnack Knabber-Gebäck GmbH & Co KG sought to register its own GOLDFISCHLI mark for a snack product in 1989 and applied to clear the register of Kambly’s marks on the grounds of non-use over the previous five years. Intersnack’s claim was successful and it applied to register its mark.

Kambly opposed the application on a number of grounds. It asserted, among other things, that Intersnack was not the owner of the trademark as a result of a licensing agreement between Kambly and Intersnack. The hearing officer disposed of this argument and the other grounds for opposition, finding that the licence was void under Article 81(1) of the EC Treaty. Accordingly, the hearing officer allowed Intersnack’s application.

Kambly appealed, and sought to adduce new grounds and additional evidence. After Intersnack refused to consent to the additional evidence being admitted, the matter came before the High Court on a preliminary issue.

The additional evidence related to the allegation that there had been some use of the mark by Kambly in commissaries on US military bases immediately before Intersnack’s application. Kambly stated that the “point could have been raised earlier, but was not, because ... its force was not appreciated”.

The court rejected the application to amend and to adduce further evidence. It said that the application was deficient, insufficient and should have been fully supported by a witness statement from Kambly. The court also reasoned that the evidence of the earlier use was inadmissible on the grounds of ‘issue estoppel’, meaning that the issue of non-use had been conclusively decided in the earlier proceedings and could not be re-examined. It further held that five years non-use was equivalent to common law abandonment of the trademark and that all Kambly’s rights had been extinguished. These rights could not be resurrected once abandonment had taken place.

The court also refused to allow the new evidence on procedural grounds. It held that if evidence was available at the date of a first instance hearing, it cannot subsequently be admitted on appeal. If the evidence was not available at that time, it will only be admitted if (i) there is a good reason why it could not be found, and (ii) its admission will make a material difference to the result.

In the case at hand, the court noted that Kambly’s evidence was contradicted by evidence from another of its witnesses and its reasons for not submitting the evidence at the earlier hearing were not justifiable. In any event, said the court, as a result of the finding of issue estoppel, the evidence would not have made any difference even if it were admissible.

The lesson for practitioners is that they must investigate thoroughly and bring all of the evidence before the first tribunal. Failure to appreciate the value of evidence at that stage is not a reason to have it subsequently admitted on appeal.

Larry J Cohen, McDermott Will & Emery, London