wrong case ...
"(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented— (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or …The corresponding form of words in Article 5 in the Directive reads
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an 'earlier right' in relation to the trade mark.
(5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration"
(5) The Member States may permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark."
The hearing officer, observing that any consent given by Dalsouple France did not need to be given in writing, initially found that Dalsouple France had consented to the registration of the trade mark in the UK and therefore refused the application for a declaration of invalidity. Having done so he then held that the opposition succeeded. Dalsouple France appealed, maintaining that the hearing officer had erred in holding that consent did not need to be in writing and that he should have concluded that consent had to be unconditional and unequivocal.
Arnold J dismissed the appeal, holding that the Opponents had not applied to register the mark in bad faith and that the Trade Marks Act 1994 section 5(5) did not require consent to be given in writing. In his view:
* The word "consents" in Directive 2008/95 Article 4(5), being employed in EU legislation, had to be given an autonomous and uniform interpretation;
* "Consent" had to be interpreted in the same way as "consent" in Article 7(1) of the Directive, where it is used in the context of exhaustion of trade mark rights where goods are placed on the market by the trade mark owner or with his consent.
* "Consent" for both Article 4(5) and Article 7(1) has to be expressed in an unequivocal manner, whether in writing or not (citing the Court of Justice of the European Union ruling in Case C-414/99 Zino Davidoff SA v A&G Imports Ltd).
* Whether an express statement of consent has been made is a matter for determination by the relevant national court or tribunal in accordance with its own rules of evidence and procedure but, in all cases, the burden of proving consent is placed upon the party making that allegation and here the standard of proof was the ordinary civil standard of the balance of probabilities,
* It could not be concluded that an allegation of consent was improbable merely because it was of a serious nature.
* On the facts before him ehe hearing officer had found, on the balance of probabilities, that Dalsouple France had expressly consented to the registration of the trade mark in the UK and that it had thus unequivocally demonstrated an intention to renounce its right to prevent the Opponents registering the trade mark there.