Healey, Jensen dispute: Carr drives on

No reverse for Jensen.  Healey Sports Cars Switzerland Ltd v Jensen Cars Ltd [2014] EWHC 24 (Pat) is a Patents Court, England and Wales, decision of Katfriend Henry Carr QC (sitting as a Deputy Judge of the High Court) on 24 January 2014. It's not a very big case and isn't posted on BAILII (you can access it here or download it here) -- but even a small case can have some significant content.

Healey Sports and Jensen Cars both claimed to own the United Kingdom trade mark registration for the word JENSEN in relation to motor vehicles, parts, accessories etc. In proceedings before the Trade Mark Registry, Hearing Officer and Katfriend Allan James had to address two separate disputes.

Tomorrow's Jensen

In his first decision the Hearing Officer concluded that five registered trade marks for the word JENSEN and which were owned by Healey Sports should be revoked for non-use. In his second decision the Hearing Officer subsequently held that Jensen Cars' opposition to Healey Sports' application for an international registration of trade mark 1057115 succeeded in part, and that Healey Sports failed in its application to invalidate Jensen Cars' United Kingdom trade mark 2529258, which was registered in February 2010 for vehicles and their components: spare parts for cars (Class 12), retail services connected with the sale of vehicles and parts and fittings (Class 35), maintenance and repair of automobiles (Class 37) and assembling of vehicle parts and their components (Class 40).

Now here's the first really interesting bit of this case ... 

Yesterday's Healey

In reaching his decision on revocation for non-use, details of the appearance of Healey Sports' JENSEN trade mark on its www.jensensportscars.com website and an accompanying press release relating to the forthcoming launch of a new car were submitted as evidence of genuine use, as were photographs of a prototype of the new car (referred to as a ‘platform’). The Hearing Officer held that, if the requirement was for the use of the marks to be in relation to goods already marketed or about to be marketed, the use on the website and in the press release in relation to a car that did not exist at the time, and which was at least a year away from being unveiled, did not appear to qualify as genuine use. In his view, neither the press release nor the website provided sufficient information about the specification for the new car to permit potential customers to decide whether to register a serious interest in buying one. Nor was there any evidence, despite the passage of time, of anyone expressing any interest in purchasing the new car, as a result of the press release, the website or otherwise.

Vintage Carr

Healey Sports appealed on the ground that, among other things, while the Hearing Officer had correctly set out the law in relation to genuine use, he had failed to apply it to the facts. A question also arose as to whether there had been genuine use of Healey Sports' international registration M828978 JENSEN as of its international registration date of 11 June 2004. If there had been, Healey Sports contended that it should succeed on both appeals on the basis that the date of its registration pre-dated Jensen Cars' registration date, since its registration was for goods and services that were identical to those for which Jensen Cars' UK mark 2529258 was registered.

Vintage Kat

The Deputy Judge dismissed Healey Sports' appeal. In his view there was no error of law or principle in the Hearing Officer’s approach. Further, it was not possible to tell from the photographs whether the platform existed during the five year period, since they were undated and exhibited in relation to a witness statement dated about a year after the relevant period for proof of genuine use had expired. Nor was the Jensen mark visible on the platform shown in the photographs. The press reports were not use of the mark by Healey Sports, and could not therefore be relied on as such.

... and here's the next interesting bit, even though it's obiter

Henry Carr QC let off a bit of steam on a matter that, this Kat suspects, may have been troubling him for some little time. He said, at [10]:

“Some parties to Registry proceedings may consider that it is simpler, more efficient or more cost effective to have evidence of fact given by their legal representatives. This appears to have been adopted in the present case. I make no criticism of the solicitors who have carried out their clients’ instructions in the present case. However, this view is plainly misconceived. It is likely to lead, as in the present case, to such evidence being given little weight, on the basis that the person giving it has no knowledge of the relevant facts. There is no reason that such evidence should carry more weight in the Registry than in Court proceedings”.

Quite right, says Merpel. Clients shouldn't expect their legal representatives to do all that hard work to get a case to trial and then expect them to give evidence too. And no-one would in any event expect a gentlemanly barrister to make a criticism of solicitors ...

This Kat is indebted to a kind member of the Bar, who was anxious not to be identified as the supplier of a PDF of Henry Carr QC's decision; he is awarded a suitably anonymous Katpat.  The case is also picked up on LexisNexis, where it is unaccountably described as being to do with patent revocation.  Naughty, naughty!