The proprietor was the owner of the two international trade marks covering a wide range of financial services. The applicant, who wished to register similar marks, sought revocation of the proprietor’s marks, pursuant to section 46(1)(b) of the Trade Marks Act 1994. The parties were in dispute about whether the proprietor’s activities constituted use of the marks in the United Kingdom sufficient to support their continued registration. One of the categories of alleged use related to the London Stock Exchange listing of Eurobonds. The hearing officer, on behalf of the Registrar of Trade Marks, held that no use had been proved in the relevant period with the consequence that the marks were revoked and could not be relied on as a basis for opposition to the registration of the applicant’s marks. The proprietor appealed the hearing officer’s decision. In issue was whether the hearing officer erred in her evaluation of use under the category of Eurobonds, in particular whether she had been right to find that issuing bonds did not involve provision of a service and that there were no customers for such services.
On the appeal—
Held, appeal allowed in part. In considering the general approach to an appeal to the High Court from a decision of the registrar, whether to describe a decision which merited reversal as wrong, clearly wrong, plainly wrong, or any other kind of wrong, risked elevating language over substance. Regardless of the language used, the real question was whether the hearing officer’s decision was wrong in principle or was outside the range of views which could reasonably be taken on the facts. Use of the term plainly wrong or clearly wrong could, however, serve as a reminder of the height of the bar, without acting as a straitjacket for appellate tribunals. The hearing officer had erred in her evaluation of use related to the Eurobonds. Most people in the financial services community, and generally, would regard themselves as having bought something when purchasing a bond even if it was merely the purchase of a right to repayment of the sum lent with interest. Her analysis was too narrowly focused. There was use of the proprietor’s marks in the relevant period in respect of the issue of Eurobonds.
Simon Malynicz QC (instructed by Innovate Legal llp) for the proprietor.
Andrew Norris (instructed by Potter Clarkson llp) for the applicant.