Catch-up with Caoutchouc as Dalsouples clash in court

Right illustration,
wrong case ...

Until very recently this Kat did not have the pleasure of knowing the magnificent name "Dalsouple Société Saumuroise Du Caoutchouc". What an enchanting, mysterious title, how mellifluously it rolls off the tongue -- and how surprised he was, as a feline with very little French, to discover that this body was not a purveyor of soufflés or tasty chocolates at all, but a maker of presumably inedible rubber flooring  products. Dalsouple Société Saumuroise Du Caoutchouc v Dalsouple Direct Ltd & Another [2014] EWHC 3963 (Ch) is a 1 December ruling of Mr Justice Arnold in the Chancery Division of the High Court, England and Wales, in which some of the best legal brains in that jurisdiction had to give some cogent thought to the meaning of the common-or-garden word "consents". This word appears in the Trade Marks Act 1994 section 5(5) and Harmonisation Directive 2008/95 Article 4(5).

"(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 …

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"

The corresponding form of words in Article 5 in the Directive reads

(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."

In March 2011 Dalsouple Société Saumuroise Du Caoutchouc (""Dalsouple France") sought to extend its international trade mark registration for the word mark DALSOUPLE, which it held for goods in Classes 17, 19 and 27 (mainly rubber flooring products). to the UK. Various parties ("the Opponents") who were also involved in rubber flooring products opposed this request on the basis that it had already registered the word DALSOUPLE as a UK and Community trade marks for the same classes and goods.

In these proceedings Dalsouple France sought a declaration of invalidity in relation to the Opponents' UK trade mark, relying on section 3(6) of the 1994 which governs bad faith: said Dalsouple France, the Opponent must have applied to register the mark in bad faith since they were Dalsouple France's UK agents at the time and had acted without Dalsouple France's knowledge or consent.

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.

Says the IPKat, this all seems absolutely routine and correct. He is not without sympathy for parties in trade mark proceedings who feel hard-done-by and who convince themselves that, if only they can put their case before the hearing officer or judge, he or she will be sure to see how sincere and committed they are and will find some way of finding for them. This may happen in some parts of the real world, but not in court. Proof and the burden of proof, evidence based on word and deed and the application of law to facts in a consistent manner -- these are things that win and lose cases, not the apparent sincerity, commitment or determination of the parties.