“78. Finally, before addressing directly the question whether the Court of Appeal was entitled to reverse Birss J’s finding of non-obviousness, I remind myself of the limits of an appellate court’s power to overturn the evaluation of a trial judge in this field. Where inferences from findings of primary fact involve an evaluation of numerous factors, the appropriateness of an intervention by an appellate court will depend on variables including the nature of the evaluation, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence: South Cone Inc v Bessant, In reReef Trade Mark[2002] EWCA Civ 763 ;[2003] RPC 5 , paras 25-28 per Robert Walker LJ. 79. An experienced patent judge faced with a challenge to a patent on the ground of obviousness, and who has heard oral evidence including crossexamination, carries out an evaluation of all the relevant factors, none of which alone is decisive but each of which must be weighed in the balance in reaching a conclusion. In Biogen Inc v Medeva plc[1997] RPC 1 , 45, Lord Hoffmann emphasised the need for appellate caution in reversing the judge’s evaluation of the facts where the application of a legal standard involved no question of principle but was simply a matter of degree. He held that it would be wrong to interfere with the judge’s assessment if no question of principle were involved. 80. What is a question of principle in this context? An error of principle is not confined to an error as to the law but extends to certain types of error in the application of a legal standard to the facts in an evaluation of those facts. What is the nature of such an evaluative error? In this case we are not concerned with any challenge to the trial judge’s conclusions of primary fact but with the correctness of the judge’s evaluation of the facts which he has found, in which he weighs a number of different factors against each other. This evaluative process is often a matter of degree upon which different judges can legitimately differ and an appellate court ought not to interfere unless it is satisfied that the judge’s conclusion is outside the bounds within which reasonable disagreement is possible: Assicurazioni Generali SpA v Arab Insurance Group (Practice Note)[2002] EWCA Civ 1642 ;[2003] 1 WLR 577 , paras 14-17 per Clarke LJ, a statement which the House of Lords approved in Datec Electronic Holdings Ltd v United Parcels Service Ltd[2007] UKHL 23 ;[2007] 1 WLR 1325 , para 46 per Lord Mance. 81. Thus, in the absence of a legal error by the trial judge, which might be asking the wrong question, failing to take account of relevant matters, or taking into account irrelevant matters, the Court of Appeal would be justified in differing from a trial judge’s assessment of obviousness if the appellate court were to reach the view that the judge’s conclusion was outside the bounds within which reasonable disagreement is possible. It must be satisfied that the trial judge was wrong: see, by way of analogy, In re B (A Child) (Care Proceedings Threshold Criteria)[2013] UKSC 33 ;[2013] 1 WLR 1911 , paras 90-93 per Lord Neuberger, para 203 per Lady Hale.”
“46. Revocation of registration. (1) The registration of a trade mark may be revoked on any of the following grounds- (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for nonuse; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) For the purposes of subsection (1) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made: Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. (4) An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that— (a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from— (a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.”
“100. Burden of proving use of trade mark. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.”
“22. The burden lies on the registered proprietor to prove use... However, it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal (which in many cases will be the Hearing Officer in the first instance) comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaken, having regard to the interests of the proprietor, the opponent and, it should be said, the public.” and further at paragraph 28: “28. ... I can understand the rationale for the evidence being as it was but suggest that, for the future, if a broad class, such as “tuition services”, is sought to be defended on the basis of narrow use within the category (such as for classes of a particular kind) the evidence should not state that the mark has been used in relation to “tuition services” even by compendious reference to the trade mark specification. The evidence should make it clear, with precision, what specific use there has been and explain why, if the use has only been narrow, why a broader category is nonetheless appropriate for the specification. Broad statements purporting to verify use over a wide range by reference to the wording of a trade mark specification when supportable only in respect of a much narrower range should be critically considered in any draft evidence proposed to be submitted.”
“If any question arises in UK proceedings as to the use to which a UK registered trade mark has been put, it is for the proprietor to show what use has been made of the mark. Therefore, the applications to revoke the registrations for non-use places a burden of proof on the proprietor to prove the use which has been made of the mark during the relevant period. It is clear from the guidance that a number of factors must be considered when assessing whether genuine use of the mark has been demonstrated by the evidence filed. The responsibility is on the proprietor to provide sufficiently solid evidence to counter the applications for revocation, a task which should be relatively easy to attain.”
“33. All bar the28 March 2013 invoice [to Interlink] are before the relevant period. Whilst I acknowledge that I may take into consideration evidence which casts light on the circumstances during the relevant period, invoices before rather than during the relevant period suggest that use has ceased. For the same reasons the evidence [that goods were sold between 2010 and11 April 2013 and Mr Fu’s statement that goods were sold until June 2014] does little (if anything) to assist the [P]roprietor. 34. I note that Mr [Fu] evidences a sale in April 2013 and states that there are subsequent sales until 2014 but no evidence to support this was filed. I also note that Mr [Chan], director for [sic] the [P]roprietor, provides invoices and sales figures for the period8 January 2010 to28 March 2013 , but these merely overlap the beginning of the relevant five-year period by a few weeks. Further, the price of the goods during 2013 ($22,000 ) are considerably less than prior years ($193,000 for 2012,$322,000 for 2011 and$257,000 for 2010). It is reasonable to form the view that sales took place up to April 2013 and no further. If sales had taken place after this period, it is likely that such material and knowledge of the sales would exist and could have been submitted as evidence. 35. Notwithstanding the above, the evidence as a whole does not create an overall picture that the registrations have been genuinely used in the UK. There is an absence of evidence that one would hope to see when assessing genuine use. For example, there are no sales figures for the UK, nor are there any advertising figures or examples of how the goods are being advertised in the UK with the consent of the [P]roprietor. The only example of the product being placed for sale in the UK is the advert placed on one UK website, apparently by a third party (see above). 36. Taking all of the above into account, I am entirely satisfied that the [P]roprietor has not demonstrated that it has used the registrations in a way that is warranted to maintain or create a market for the registered goods during the relevant section 46(1)(b) period of23 March 2013 –23 March 2018 .”
“And even if I am wrong about this, the respective [R]egistration[s] include the following restrictions, “all included in [C]lass 5” and “all included in [C]lass 32”
“it is not clear whether this offer for sale resulted from the [P]roprietor’s actions or from a third party independently obtaining products from China/Hong Kong. If the latter, this would not amount to genuine use of the mark by the [P]roprietor”
“the Hearing Officer’s obiter conclusion in paragraph [42], that the [P]roprietor had not shown use of the [R]egistration[s] in relation to the goods registered, was wrong.”
“Unless familiar with the law of registered trade marks, you might think that it is relatively straightforward. Regrettably, you would be wrong. As illustrated by the recent judgment of Arnold J in Sky Plc v SkyKick UK Ltd[2018] EWHC 155 (Ch) ;[2018] RPC 5 ("the Sky case"), trade mark litigation can raise multiple legal issues of Byzantine complexity. In comparison with the Sky case, this judgment is a minnow. Nonetheless, it deals with some challenging issues, which require careful consideration.”
“In summary, the Court of Appeal relied upon the practice of the Registry and OHIM [now the EUIPO] in dealing with amendments to an application by treating the class number in the application for registration as part of the application and held that: i) The Registrar is entitled to treat the class number in the application as relevant to the interpretation of the scope of the application, for example, in the case of an ambiguity in the specification of goods; ii) On ordinary principles of construction, the application has to be read as a whole to determine its meaning and effect and the application includes the class number; iii) The fact that the Nice Classification System has been devised to serve exclusively administrative purposes does not mean that the selection of one or more class numbers has to be totally ignored in deciding, as a matter of construction of the application, what the application is for and whether it can properly be amended; iv) If the specification expressly refers to the class e.g. "all included in Class X" that is a stronger case for interpretation of the application by reference to the class number; v) However, that is not the only kind of case in which the class number can be taken into account by the Registrar, nor should the Registrar have to ignore the class number which the applicant (or his advisers' on his behalf) have included.” i) The Registrar is entitled to treat the class number in the application as relevant to the interpretation of the scope of the application, for example, in the case of an ambiguity in the specification of goods; ii) On ordinary principles of construction, the application has to be read as a whole to determine its meaning and effect and the application includes the class number; iii) The fact that the Nice Classification System has been devised to serve exclusively administrative purposes does not mean that the selection of one or more class numbers has to be totally ignored in deciding, as a matter of construction of the application, what the application is for and whether it can properly be amended; iv) If the specification expressly refers to the class e.g. "all included in Class X" that is a stronger case for interpretation of the application by reference to the class number; v) However, that is not the only kind of case in which the class number can be taken into account by the Registrar, nor should the Registrar have to ignore the class number which the applicant (or his advisers' on his behalf) have included.”
“In summary, Arnold J considered that the ratio of the Altecnic case was confined to the proposition that a statement by an applicant for registration in his application form as to the class of the goods in respect of which registration was sought formed part of the application and was to be taken into account in interpreting the scope of the application at least during prosecution; [22]. It did not decide whether the decision applied in the context of infringement, which remained an open question. On this appeal, the appellant reserved the right to contend that Altecnic was wrongly decided, but that is not a matter for this court.”
“76. The appellant submits that this conclusion is supported by policy considerations. The public should be able to tell from the specification of goods or services entered on the Register whether or not use will infringe. It would be undesirable if, to determine whether there is infringement or use, the public had to consult the relevant Nice Classification which existed as at the date of the application for registration of the trade mark in question. It suggests that reference to the Nice Classification would cause uncertainty for the following reasons: i) The current edition of the Nice Classification Specification is contained in several volumes with over 1000 pages; ii) The classes are not unique and mutually exclusive in that the same goods/services may appear in different classes; iii) The goods/services listed in any class are not fixed, as the classification may change and indeed has changed over time; and iv) There is now no centralised searching service of the Nice Classification. 77. In my view, these are powerful arguments in support of the appellant's case on this issue. Mr Malynicz submitted that the observations of Arnold J which I have cited were all obiter. That is correct in relation to the Omega 1 and Omega 2 cases, but I was less convinced that his submission was correct in relation to the Fidelis case. Whether or not this is correct, it is far from a complete answer. Arnold J is a very experienced judge and a leading expert in trade mark law, who has thought very carefully about this issue, and has set out full reasons for his view.” i) The current edition of the Nice Classification Specification is contained in several volumes with over 1000 pages; ii) The classes are not unique and mutually exclusive in that the same goods/services may appear in different classes; iii) The goods/services listed in any class are not fixed, as the classification may change and indeed has changed over time; and iv) There is now no centralised searching service of the Nice Classification. 79. At [79], Henry Carr J reached a “provisional view”: “79. I have reached the provisional view, in the light of the respondent's arguments, that it is appropriate to use class number as an aid to interpretation of the specification where the words used in the specification lack clarity and precision. This applies to granted registrations as well as to applications, and therefore applies in the context of infringement actions and revocation claims. My reasons for reaching this conclusion are set out below. 80. Of course, in many cases, it will be unnecessary to use the class number in this way, as the words chosen in the specification will be sufficiently clear and precise. Indeed, in the present case, I consider that the disputed phrase "provision of office facilities" is sufficiently clear and precise, so that its ordinary and natural meaning can be ascertained without reference to the class number.”
“In summary, the IP Translator case established that: i) Whilst Directive 2008/95 contains no reference to the Nice Classification and, consequently, imposes no obligation or prohibition on Member States with regard to its use for the purposes of registration of national trade marks, the obligation to use that instrument stems from Art.2(3) of the Nice Agreement, which was adopted pursuant to Art.19 of the Paris Convention and Directive 2008/95; recital 13. ii) The competent Office of the countries of the Special Union, which encompasses almost all the Member States, is to include in the official documents and publications relating to registrations of marks the numbers of the classes of the Nice Classification to which the goods or services for which the mark is registered belong. iii) The requirements of clarity and precision must be taken into consideration when considering registered trade marks as well as applications; iv) As well as the competent authorities, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties; v) General indications of the class headings to identify the goods and services for which the protection of the trade mark was sought were not precluded, provided that such identifications were sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought; vi) Different approaches to the use of the general indications of the class headings of the Nice Classification might lead to a difference in the extent of the protection of a national trade mark if it is registered in several Member States, and of the protection of the same mark if it was also registered as a Community trade mark. This ran the risk of undermining legal certainty both for the applicant and for its competitors; vii) Therefore, the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought was not precluded, provided that such identification is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.”
“93. In the light of the IP Translator case and its subsequent codification by amendments to the Trade Mark Regulation (EU) 2017/1001 and Trade Mark Directive (EU) 2015/2436, the respondent's case is that class numbers cannot be ignored, as they can play a significant role in designating goods and services with clarity and precision and in ensuring certainty for economic operators when viewing the Register. The respondent does not contend that the class numbers will always be necessary to achieve clarity and precision in the specification, as in many cases the words chosen will be sufficiently clear and precise. In such cases, the scope of the specification will be clear from the ordinary and natural meaning of the words chosen. In those cases, the class number is merely confirmatory and does not change the meaning of the terms used. 94. However, because in some instances the words chosen may be vague or could refer to goods or services in numerous classes, the class may be used as an aid to interpret what the words mean with the overall objective of legal certainty of the specification of goods and services. For example, the word "valves" which was considered in the Altecnic case can refer to goods which may be included in 11 different classes of the Nice Classification, as Laddie J observed at first instance. This was referred to by the hearing officer in the Omega One, in a passage cited with approval by Arnold J at [72] of his judgment (supra). The hearing officer explained valves in Classes 7, 10, 11 and 15 are all very different creatures, a valve for a pump, a valve for a heart, a valve for a radiator, a valve for a trumpet. In such a case the lack of specificity of the description means that the class into which the goods have been placed defines the nature of the goods. Mr Malynicz also noted that valves could be registered in Class 9 for the purposes of electrical guitar amplifiers, or as valves for vehicle tyres in Class 12 or as valves for use in baby bottles in Class 10. Without the additional information provided by the class number, a specification for "valves" would not satisfy the requirement of clarity and precision. 95. This could potentially mean that a registered trade mark could be asserted against a competitor in an infringement case in relation to goods that were distant from the proprietor's real area of activity. It also may negatively impact on the proprietor. A trade mark may be descriptive for one sort of valve (e.g. the trade mark Baby Flow for valves in Class 10) but not for another sort of valve (e.g. Baby Flow for valves in Class 11). Ignoring, in such cases, the class in which the trade mark is registered, which is clearly visible on the Register, is, in my view incompatible with the IP Translator case, and incompatible with the principle of legal certainty. 96. In the context of revocation applications based on no genuine use, where a specification otherwise lacks clarity and precision, it may be of considerable importance to be able to refer to the class in which the goods or services are registered. It may be unfair to the proprietor not to refer to the class, if it enables clarity and precision to be established. If it is not possible to ascertain with clarity and precision the scope of the specification, then it is very difficult to see how the proprietor can prove use of goods or services within that specification. It may be unfair to the opponent not to refer to the class, if such reference makes clear that the goods or services relied on as having been used by the proprietor are not goods or services properly to be regarded as within the scope of the specification.”
“The manuals both suggest that class number should always be taken into account, together with the ordinary and natural meaning, to see whether the requirement of clarity and precision is satisfied. It is certainly the case that the class number always forms part of the context, and the guidance is consistent with the Altecnic case, where Mummery LJ referred to the class number as a part of the context, and ambiguity of language by way of example only. However, that does not mean that the class number is always required to determine the natural and ordinary meaning of the words used in the specification, which may be sufficiently specific so that the scope of the specification is clear and precise. For the purposes of this appeal it is unnecessary for me to express any view on circumstances where the class number would be relevant where the natural and ordinary meaning of the words used in the specification is clear and precise, as this goes further than the respondent's argument.”
“104. The respondent challenges the appellant's proposition that the judgment in the Altecnic case can be confined to its factual and procedural background. Whilst the issue in that case concerned amendment of the specification, exactly the same considerations would apply when it comes to construing the specification for the purposes of assessing distinctiveness during examination, construing the specification of an earlier mark in an opposition, infringement by a third party or revocation for non-use or deceptiveness. In all of these instances it is necessary to understand the scope of the goods or services covered. Where the words are neither clear nor precise, for example because they apply to goods or services registrable in multiple classes, the class number must be relevant to resolve ambiguity. 105. It points out that the reasoning of Mummery LJ was not confined to the facts, or the particular procedural phase then in issue. Rather, it was a case concerning construction of the scope of a specification. The specification can only have one meaning, irrespective of whether it is being considered at the application stage, or in the context of an infringement claim or in an application for revocation. Accordingly, in cases where the class number is to be taken into account when interpreting the scope of the application, it must also be taken into account when interpreting the scope of the granted specification. 106. Furthermore, the appellant concedes that where the specification contains the phrase "all included in class X" it is appropriate to use the class number when interpreting the scope of the specification, but not otherwise. The respondent contends that, where necessary to achieve clarity and precision, it is also appropriate to use the class number which appears on the public register. Indeed, the appellant's argument was expressly rejected by Mummery LJ in the Altecnic case. 107. In my provisional view, this submission is correct. If the word "valves" is interpreted at the application stage by reference to its class number as referring to valves for use in baby bottles in Class 10, it cannot be interpreted, once granted, as having a different meaning e.g. valves for vehicle tyres in Class 12. In my view, the Court of Appeal were applying general principles of construction to the specification in the case before them, which had regard to the context in which the words were used. The reasoning is not confined to the facts of the case.”
“[w]here the words are neither clear nor precise, for example because they apply to goods or services registrable in multiple classes, the class number must be relevant to resolve ambiguity.”
“Generally there is no difficulty in identifying which class is relevant for a particular article. But borderline cases are not infrequent. For these the Registrar often uses the practice of describing the goods or services and adding the words included in this Class or included in Class X. He did that here. The effect of this is to confine the specification to goods which fall within the description and which also were, at the time of registration, put in that class by the Registrar. Thus in GM TM, Graham J held that a registration for “Electrical machinery included in this Class” did not cover electrical switchgear: even though it was admittedly electrical machinery it was not at the time of registration put in the class concerned.”
“These words “included in class X” in a specification of goods not infrequently cause difficulty. You have to look at the specification preceding these words to see whether what the defendant is doing is within the scope of that and then you have to ask the extra question: are they included in class X? It is settled, at least at first instance, that to answer that second question one has to look at the Trademark Registry practice to see whether the Registrar in practice at the time of registration included the particular service or goods within that class (see GE Trade Mark[1969] RPC 418 at 458). This is not always easy, especially if the kind of goods or services did not exist at the time of registration.”
“Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.”
“This class includes mainly non-alcoholic beverages, as well as beer. Includes, in particular: • De-alcoholised drinks. Does not include, in particular: • beverages for medical purposes (Cl. 5); • milk beverages (milk predominating) (Cl. 29); • beverage with coffee, chocolate or cocoa base (Cl. 30).”