Trademark Act clarification issued by High Court

In Sunrider Corporation v Vitasoy International Holdings Ltd, the High Court of England and Wales has issued useful guidance on Sections 5(2) and 48 of the Trademarks Act 1994 in a hearing of an appeal from a decision of a hearing officer at the UK Trademarks Registry.

The respondent, Vitasoy International Holdings Ltd, applied for a declaration under Section 47(2) of the act that Sunrider Corporation's VITALITE mark was invalid pursuant to, among other things, Section 5(2) of the act. Sunrider's VITALITE mark was registered in Class 32 of the Nice Classification for "Syrups, preparations for making beverages, all being nutritional supplements in liquid form; nutritional syrups, herbal drinks, all being sold on a one-to-one basis directly to consumers and not through retail outlets, all included in Class 32", while Vitasoy's VITA mark was registered in Class 32 for "Carbonated and non-alcoholic beverages, all made from or including sugar cane, guava and mango; all included in Class 32; but not including any drinks made from or including lime flavouring". The hearing officer granted Vitasoy's application in part, holding that although the marks VITA and VITALITE were not similar in sound or appearance, they shared conceptual similarities. The High Court agreed.

The court did not, however, agree with the hearing officer's analysis of similarity of goods. The hearing officer, apparently, did not purport to rely on their "self-evident" similarity, yet contrary to Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc and Raleigh International Trademark [2001] RPC 11 he was presented with no evidence of such similarity. Furthermore, the hearing officer held that both Vitasoy and Sunrider's goods were intended for "some special dietary purposes", and held that "herbal drinks" could not mean herbal drinks per se (since he held those were proper to Class 30), but must instead be beverages within Class 32 which had herbs added "as a minor ingredient". The High Court questioned both findings.

Firstly, although there was nothing in the wording of the specifications which prevented the respective goods from sharing the same market or course of trade, that did not create similarity: trademark specifications are "concerned with use in trade" (British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281), and it is important to read them "from a trade point of view" (Omega SA v Omega Engineering Inc [2003] EWHC 1334). Accordingly, specifications must be construed in "ordinary parlance" (British Sugar), and there was nothing to suggest that Vitasoy's goods had perceived health promoting properties over and above any other fruit juice. So to hold that Vitasoy's fruit juices were nutritional supplements intended for a special dietary purpose was to adopt the sort of unduly technical approach which was rejected in Omega. Notwithstanding these comments, however, the court held that if a syrup or other preparation for making beverages (X) could make a beverage which was identical or self-evidently similar to another beverage (Y) then there would be a rebuttable inference that X and Y were similar. Accordingly, certain goods could fall into both the VITA and the VITALITE specifications: there could be similarity between the syrups and preparations in Sunrider's specification and the sugar cane, guava and mango beverages within Vitasoy's specification.

Secondly, the hearing officer's finding regarding herbal drinks was not justified: a "herbal drink" within Class 32 should not mean a drink which "nobody would ordinarily call a herbal drink". Since herbal drinks and fruit juices are by their nature different, they are unlikely to share the same trade channels or compete with one another: accordingly they are not similar goods.

As to the requisite likelihood of confusion under Section 5(2), the court followed Marca Mode CV v Adidas AG to hold that "there has to be a positive finding of the existence of a likelihood of confusion". The hearing officer, perhaps carelessly, had held that there existed "more than just a mere possibility" of confusion.

Finally, the court considered whether the five years acquiescence referred to in Section 48 of the act ran from the date of registration or whether Section 40(3) meant that it ran from the date of application. Turning to the penultimate recital to, and Article 9 of, the First Trademarks Directive, the court held that time did not begin to run until registration of the later mark. He also held that in order to "tolerate" or "acquiesce" in the use of the later mark, as per the directive, the proprietor of the earlier mark must be aware of the later mark and have the means to prevent or oppose its use. Otherwise, there can be no acquiescence in or tolerance of that later mark.

Gareth Dickson, Ashurst, London