CH. 1998-P-5726
BAILII Citation Number: [2000] EWHC 1557 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Date: 21st January 2000
BEFORE:
MR JUSTICE NEUBERGER
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BETWEEN:

PREMIER BRANDS UK LIMITED
Claimant

-and-

(1) TYPHOON EUROPE LIMITED
(2) PETER GRANVILLE NORFOLK BATTERSBY
Defendants
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Mr Richard Arnold (instructed by Messrs. Edge Ellison, Birmingham) appeared on behalf of the claimant.

Mr Michael Bloch QC and Mr James Abrahams (instructed by Messrs. Willoughby & Partners, London) appeared on behalf of the defendants.
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Judgment

MR. JUSTICE NEUBERGER:
INTRODUCTION
This action involves:
1.	A claim for infringement of three registered trade marks brought by the registered proprietor, Premier Brands UK Limited (“Premier”), against Typhoon Europe Limited (“TEL”) and its managing director Mr Peter Battersby;

2.	A claim for revocation of two of those trade marks brought by TEL.

Premier’s claim is brought on two bases.  The first is pursuant to Section 10(2) of the Trade Marks Act 1994 (“the 1994 Act”).  References to sections are, unless otherwise stated, to sections of that Act.  Section 10(2)(b) implemented Article 5(1)(b) of the EC Trade Marks Directive (Council Directive 89/104/EEC, (“the Directive”).  References to Articles are to Articles of the Directive.  Premier also relies on Section 10(3), which implemented Article 5(2), and in that connection the present case of alleged infringement is the first to come to trial in the United Kingdom on that provision of the 1994 Act, which has no equivalent in previous legislation.

TEL’s claim involves consideration of aspects of Sections 46(1)(a) and (b), which implement Articles 10, 12 and 13, on which there is no guidance from the European Court of Justice (“the ECJ”) or from any English Court, albeit that there are some relevant decisions of the Trade Mark Registry.

THE BASIC FACTS
Premier Brands UK Ltd
Premier is an importer, blender and supplier of tea, whose trade mark TY.PHOO is one of the best known brands of tea in this country; indeed, Mr Richard Arnold, who appeared on behalf of Premier, may well have been right to say that it is one of the best known brands of any description in this country.

The three registered trade marks in suit are all in respect of the word-only mark TY.PHOO; details of the registrations are as follows:

Number	Date	Goods
	
492,126	6 June 1928	Class 30.  Tea.	
6,39270	11 August 1945	Class 8.  Hand tools and hand implements, all for domestic use; and cutlery, forks and spoons.	
639,276	11 August 1945	Class 21.  Domestic utensils and containers (none being of precious metal or coated therewith), combs, brushes included in Class 21, sponges, and instruments (non-electric) and materials for cleaning; and glassware, porcelain and earthenware none being included in other classes.	

The classes referred to are, of course, those now set out in Schedule 4 to the Trade Mark Rules 1994 (S.I. 1994 No 2583).  The ‘270 and the ‘276 Marks are defensive registrations made under Section 27 of the Trade Marks Act 1938. This was a provision (which has no equivalent in the 1994 Act) enabling a proprietor of a well known registered trade mark in respect of certain goods to effect a defensive registration of the mark in respect of other goods, in certain circumstances.

TY.PHOO is one of Premier’s most famous and profitable brands.  Tea under that mark has been sold in the United Kingdom since 1903, and it is currently the third biggest seller in the UK tea market.  Mr Christopher Thomas, Marketing Director for Premier, said in his evidence that the Company had been investing many millions of pounds every year promoting the mark and improving the tea sold under the mark.  He stated that tea under the TY.PHOO mark is sold “at a slightly higher price than its major competitors to reflect the premium nature of the brand”.  He also said that “Premier have concentrated on promoting TY.PHOO for a number of years as a traditionally British tea”.

Apart from its use in relation to tea, the TY.PHOO mark has been used on tea canisters, tea pots, mugs, tea towels, milk jugs, sugar bowls, biscuit barrels, cups, mug trees, aprons, storage jars, memo boards, tea cosies, trivets, tea pot stands, trays, cafetieres and drinking glasses.  As Mr Arnold rightly accepted, the use of the TY.PHOO mark on these goods is intended to promote tea sold under the same brand.  In other words, as Mr Michael Bloch QC (who appeared with Mr James Abrahams for TEL) put it, insofar as the mark is affixed to these goods, it is for promotional purposes, i.e. it is a means of promoting the sales of Premier’s tea.

This point is substantially reinforced by the fact that, with two exceptions, the products which I have listed above (which I shall refer to as “the Goods”) are given away, rather than sold, by Premier.  The first exception to this is a TY.PHOO tea caddy which is made and sold by a company called Armstrong and Claydon Products plc (trading as Grumbridge), which has Premier’s permission to use the TY.PHOO mark for this purpose, without the payment of any royalty.  Over the past three years, around 5,700 such caddies have been sold.  Secondly, in 1997 a wooden mug tree, and mugs, all with the TY.PHOO mark, were marketed on “a special offer” basis (£4.99 for the mug tree, £2.99 for each mug).  There has been no evidence as to the level of sales of these mug trees or mugs.

Premier is acting as an official supplier to the Millennium Experience; in that capacity I was told that it proposed to sell not only tea, but also what Mr Thomas referred to as “tea paraphernalia”, including tea caddies, glasses, tea towels, cups, mugs, mug trees, tea pots and kettles, especially designed with the Millennium in mind, and all bearing the TY.PHOO mark.  These goods were to be (and presumably now will have been) sold from a shop in the Millennium Dome from 1st January 2000.  Such Millennium-related products may also be sold through certain high street outlets.

Typhoon Europe Limited
In 1990 or 1991, Mr Battersby, through a company that he had formed called At Your Leisure Limited, entered into an agreement with a Californian company to distribute oriental kitchen hardware source from the Far East, and at that time marketed only in California, under the brand name TAYLOR & NG.  The products under this mark were sold, at least in the main, to specialist cook shops, department store groups and houseware chains.  In 1995, Mr Battersby acquired the TAYLOR & NG mark, and, as the business in this country under that name grew, he decided to change the name of his company from At Your Leisure Limited to Taylor & Ng Limited.

In his evidence, Mr Battersby said that, by the end of 1997 “from discussions with members of the trade, it was clear that TAYLOR & NG was not considered to be an ideal brand name as it was difficult for consumers to pronounce and memorise the name”.  As a result, Mr Battersby instructed consultants, who came up with various possible new brand names for the kitchenware then marketed under the name TAYLOR & NG.   Eventually the decision was made to adopt the sign TYPHOON.  The name attracted Mr Battersby for a number of reasons.  It had some features of similarity with TAYLOR & NG (not least the first letter), it was easily pronounced and memorable, it had oriental connotations, it was understandable both in the east and the west, and it represented speed and dynamism.

After trade mark searches had been conducted in Classes 11, 21 and 42 in the United Kingdom (and similar searches had been carried out in a number of other countries) and further trade mark and company name searches had been carried out in relation to the word “TYPHOON”, Mr Battersby instructed trade mark agents, Rock & Company, to apply to file the mark TYPHOON in Class 21 in the United Kingdom (and similarly in other countries, including the EC, Australia, New Zealand, Japan and the USA).

Meanwhile, Mr Battersby had also issued instructions for a TYPHOON logo to be designed.  When sending his first set of draft designs, Mr David Lum, the designer instructed by Mr Battersby, stated which designs he preferred “providing the typed style used is not the same or similar to “Typhoo Tea” packaging”.  Mr Battersby did not recall receiving that note.  I doubt that it is necessary for me to make a finding on the point, but, in case it is, I accept that Mr Battersby had genuinely forgotten seeing this note, but I consider it likely that he saw it, although, as evidenced by the fact that he has forgotten it, I do not consider that it made any particular impression on him.

Before adopting the name TYPHOON, Mr Battersby had discussions with his biggest customers, John Lewis Partnership and Debenhams.  It appeared that the name was acceptable to them, and there was no reference in those discussions to possible confusion with the mark TY.PHOO.

Press releases were issued introducing the new TYPHOON name in June 1998, and it was launched in early September 1998 at the Housewares International Trade Fair in Birmingham.  The launch was supported by an extensive advertising campaign and a series of receptions.  Around the same time, Taylor & Ng Ltd changed its name to Typhoon Europe Limited.  Between the launch in September 1998 until March 1999, TEL supplied some £1.5m worth of goods (excluding direct purchases by licensees from factories), and this was in circumstances where there was, apparently, some possible holding back owing to the instant proceedings, which had been issued in October 1998.

The way in which the mark TYPHOON is used on TEL’s packaging, its literature, and on the labels attached to its goods is, in the main, as follow:

TYPHOON	

The letters are normally white, and the background is normally red.  Although this is not the sole means in which the TYPHOON mark is publicised by TEL, it appears to be the principal means.

THE ISSUES
As indicated in the opening part of this judgment, there are three issues between the parties. Two of those issues arise from Premier’s claim for infringement.  Premier’s first contention is that the use of the sign TYPHOON, in relation to the range of kitchen housewares marketed by TEL, infringes Premier’s rights as the registered proprietor of the ‘270 and/or ‘276 Marks (“the defensive marks”) by virtue of Section 10(2). So far as relevant, this provides that:

“A person infringes a registered trade mark if he uses in the course of trade a sign where because -

(a)	...

(b)	the sign is similar to the trade mark and is used in relation to goods...identical with or similar to those for which the trade mark is registered,

and there exists a likelihood of confusion on the part of the public which includes a likelihood of association with the trade mark.”

The second issue raised by Premier’s infringement claim is that the use by TEL of the TYPHOON sign infringes Premier’s rights as registered proprietor of the ‘126 Mark by virtue of Section 10(3).  This section provides that:

“A person infringes a registered trade mark if he uses in the course of trade a sign which -

(a)	is ... similar to the trade mark, and

(b)	is used in relation to goods... which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”

The third issue is raised by TEL’s claim for revocation.  TEL contends that each of the defensive Marks should be revoked on the grounds set out in Section 46.  This section provides, so far as relevant:

“(1)	The registration of a trade mark may be revoked on any of the following grounds:

(a)	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 without his consent, in relation to the goods... for which it is registered, and there are no proper reasons for non-use.

(b)	That such use has been suspended for an uninterrupted period of five years and there are no proper reasons for non-use.

...

(5)	Where grounds for revocation exist in respect of only some of the goods...for which the trade mark is negotiated, revocation shall relate to those goods...only.”

I shall consider these three issues (each of which raises sub-issues) in turn in the next three parts of the judgment and I will then express my conclusion.

Before doing so, however, it is perhaps convenient to identify the nature and purpose of a trade mark.  Unsurprisingly, this is not a contentious issue, but the position is well summarised by observations of the ECJ in Canon Kabushiki Kaisha -v- Metro-Goldwyn-Meyer Inc. [1999] RPC 117 at 133 at paragraph 28:

“[T]he essential function of the trade mark is to guarantee the identity of the origin of the market product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of the single undertaking which is responsible for their quality...”

INFRINGEMENT: SECTION 10(2)/ARTICLE 5(1)(b)
Preliminary
In order to establish infringement under Section 10(2), Premier has to establish that:

(1)	TEL uses the TYPHOON sign in the course of trade;

(2)	The sign is similar to the TY.PHOO trade mark;

(3)	The TYPHOON sign is used in relation to goods are identical with or similar to those for which the defensive marks (or either of them) is registered;

(4)	There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the defensive marks, or either of them.

There is no doubt that TYPHOON is “a sign” and that it is used by TEL “in the course of trade”.  Although not formally conceded, I do not understand it to be strongly disputed by TEL that the sign TYPHOON is “similar to the trade mark”, that is to TY.PHOO.  In my view it plainly is.  My reasons are to be found in the next section but two of this part of the judgment, where I discuss the similarities between the mark and the sign. However, in this connection, it is perhaps important to remember that the fact that a sign is similar to a mark is a distinct question from whether there is a likelihood of confusion.  That this is so is supported by commercial common-sense, the way in which Section 10(2) is expressed, and the observations of Jacob J in British Sugar plc v James Robertson & Son Ltd [1996] RPC 281 at 295.  However, at least as a matter of commercial common-sense, the greater the similarity between mark and sign, the greater, at least at first sight and subject to all the other evidence, the possible risk of confusion.

A minor issue between the parties is whether, in relation to each of the defensive marks, the TYPHOON sign is used in relation to “goods...similar to those for which the trade mark is registered” to the extent alleged by Premier.  The major issue between the parties is whether, as Premier contends, there is a likelihood of confusion between the signs and either or both of the defensive marks.

The minor issue: the goods
So far as the minor issue is concerned, Premier’s contention is as follows.  The following goods marketed by TEL are (a) identical and (b) similar to those for which the ‘270 Mark is registered:

(a)	Pestles & mortars, chargrillers, woks, sizzlers, wok sets, wire skimmers, cleavers, scales and weights, fondue sets, chopsticks and sushi sticks, bamboo utensils;

(b)	Cookbook stands, trivets, mug trees, towel holders, food warmers, ceiling racks, wall racks, oil drizzlers, pouring cans.

So far as the ‘276 Mark is concerned, the goods which are said by Premier to be (a) identical and (b) similar to those in relation to which the TYPHOON sign is used are:

(a)	Pestles & mortars, trivets, chargrillers, woks, sizzlers, wok sets, wire skimmers, cleavers, cookbook stands, scales and weights, food warmers, fondue sets, oil drizzlers, pouring cans, mug trees, towel holders, chopsticks and sushi sticks, bamboo utensils, twenty four piece dinner set, thirteen piece serving set, chopstick bowls, eight piece sushi set, five piece saki set, glass coasters;

(b)	Ceiling racks and wall racks, trolley.

Categorisation is not entirely easy in relation to this part of the case, particularly so far as the ‘270 Mark is concerned.

I am satisfied that at least some of the items in relation to which TEL use the TYPHOON sign are identical or similar to the category of goods in respect of which each of the defensive marks are registered.  So far as the ‘270 Mark is concerned, I consider that pestles & mortars, cleavers, chopsticks and sushi sticks and bamboo utensils are identical or similar to the category of goods to which the ‘270 Mark was registered; I am unpersuaded that any of the other items relied on by Premier could be said to fall within “and tools and hand implements” whether for domestic use or otherwise, and they cannot seriously be said to be within “cutlery, forks and spoons”, with the possible exception of some ancillary items, for instance the forks included in fondue sets.

As to the ‘276 Mark, the category of goods for which it is registered is far wider, and the only item challenged by Mr Bloch as being properly included in Premier’s list was mug trees.  I accept that mug trees probably fall within class 20 (which includes “goods (not included in other classes) of wood ...”) and that they are probably not “identical with [the goods] for which the [‘276] trade mark is registered”.  However, I consider that they can fairly be said to be “similar to” those goods, particularly if one bears in mind both the category of the goods for which the ‘276 Mark is registered as a whole, and that the mug trees are part of a range of goods, the nature which I have set out above, marketed by TEL.

Confusion: the principles
I turn to deal with the real issue between the parties in relation to Premier’s claim under Section 10(2), namely whether there is “a likelihood of confusion on the part of the public [including] the likelihood of association with the trade mark”.  This is a topic upon which the ECJ has given guidance in three decisions, Sabel BV v Puma AG [1998] RPC 199 at 223-224, Canon [1999] RPC 117 at 132-134 (paragraphs 17-29) and Lloyd Schuhfabrik Meyer & Co Gmbh v Klisjen Hanel BV [1999] All ER (EC) 587 at 598-9 (paragraphs 18-28).

In light of those authorities, it seems to me that Mr Arnold was correct in submitting that the test of likelihood of confusion may conveniently be described as one of “global appreciation”, taking into account all factors relevant to the circumstances of the particular case.  More specifically, one should take into account:

(1)	The visual, aural and conceptual similarities of the registered trade mark and the allegedly infringing sign, including the overall impression given by the mark and by the sign, and bearing in mind in particular their respective distinctive and dominant components;

(2)	The distinctiveness of the mark (whether inherently or through its reputation with the public): the more distinctive the mark, the greater the likelihood of confusion;

(3)	The degree of similarity of the goods for which the mark is registered and the goods in respect of which the sign is used.

In this connection, the proper comparison is between the proprietor’s registered trade mark, on the other hand, and, on the other hand, the allegedly infringing sign in the way in which it is used; in this connection:

[Section 10(2)] requires the court to assume the mark of the [proprietor] is in a normal and fair manner in relation to goods for which it is registered, and then to assess the likelihood of confusion in relation to the way in which [the alleged infringer] uses its [sign], discounting added matter or circumstances.”

(See per Jacob J in Origin Natural Resources v Origin Clothing [1995] FSR 280 at 284, as subsequently amended by him in British Sugar [1996] RPC 281 at 293-294).

On behalf of TEL, Mr Bloch argued that it follows from this observation that Premier could not rely upon the way in which it actually uses the TY.PHOO mark, and that, therefore, Premier could not claim a reputation in so far as it is based on its colour scheme (and in particular on the fact that the mark TY.PHOO was frequently used written white on red): Premier’s trade mark registration is not limited to that, or any other particular colour scheme.  I do not accept that submission.  Premier’s registrations are for the word mark TY.PHOO and, as Jacob J said, the allegedly infringing sign has to be compared with that mark “used in a normal and fair manner in relation to goods for which it is registered”.  In my judgment, in the absence of argument or evidence to the contrary, the way in which the proprietor actually uses the mark can be said, at the very least prima facie, to be the paradigm case of its use in a normal and fair manner.  It seems to me that Mr Arnold was also correct in submitting that this conclusion was consistent with the proposition, established in the three decisions of ECJ to which I have referred, that acquired reputation can broaden the protection afforded to a mark, even one which was initially wholly undistinguished.  In the present case, Premier’s most frequent depicted use of the TY.PHOO mark (white capitals on a red background with the T in somewhat larger format than the rest) appears to me to be a normal and fair manner of the use of the mark.

The comparison of the registered mark with the allegedly infringing sign must be carried out through the eyes (and, indeed, in the case of the word mark, through the ears) of “the average consumer”.  In paragraphs 25 and 26 of its judgment in Lloyd [1999] All ER (EC) 587 at 599 the ECJ said this:

“The wording of Article 5(1)(b) ... shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. ... [T]he average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect”.

These observations were cited and followed by Morritt LJ in the Court of Appeal in Bach Flower Remedies, (unreported 21st October 1999), at paragraph 28 of his judgment.  To much the same effect, Chadwick LJ said in the same case:

“The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the affect which those matters would have on the mind of such a person...”.

It is only fair to mention that those observations were directed to the question of distinctiveness, but it appears to me that it must be equally apt in relation to the determination of the dispute under Section 10(2) in the present case.

Another issue of principle between the parties arises from Mr Bloch’s contention on behalf of TEL that “the defensive marks have no reputation whatsoever” in that there is no suggestion that the public associate the mark TY.PHOO with any goods other than tea, and that, accordingly, it follows that the defensive marks “are entitled to the most limited protection” only.  In this connection, it is accepted on behalf of Premier that, in connection with its claim under Section 10(2), the “likelihood of confusion” and the “likelihood of association with the trade mark” is limited to confusion between (a) the TYPHOON sign, in the way in which it is used and in connection with the goods with which it is used by TEL, and (b) the mark TY.PHOO limited to the goods in connection with which each of the defensive marks is registered.

However, although he accepted that the reputation which has been built up over the past century or so for the TY.PHOO mark in relation to tea plays no part in the exercise required to be carried out under Section 10(2), Mr Arnold contended that the extent of the protection to be accorded to a mark with no reputation depends upon the distinctiveness of the mark, which can either be inherent or acquired, and in this connection he relied on observations of the ECJ in Sabel [1999] RPC 199 at 224, Canon [1999] RPC 117 at 132 (paragraph 18) and Lloyd [1999] All ER (EC) 587 at 598 (paragraph 20).

In my judgment, the dispute between the parties in this connection is more apparent than real.  I accept that the three decisions of the ECJ to which I have referred support the proposition advanced by Mr Arnold on behalf of Premier.  However, it seems to me that they do not detract from what may fairly be said to be the fundamental point made by Mr Bloch on behalf of TEL on this aspect, namely that, in connection with a particular registered mark, the less use it has had in connection with the goods for which it is registered, the less distinctiveness it is likely to have acquired, and, therefore, the more the protection claimed for it has to be limited to its inherent distinctiveness.  To my mind, that proposition is really no more than the corollary of the principle (accepted by both parties) that the greater the exposure and use of a particular registered mark, the greater its reputation is likely to be, and therefore the greater the protection likely to be afforded to it.

Confusion: the evidence
In support of its case on confusion under Section 10(2), Premier relies on the following factors, which, particularly when taken together, Mr Arnold contended led to the conclusion that there is a likelihood of confusion:

(1)	The visual aural and conceptual similarity between the TYPHOON sign and the TY.PHOO mark;

(2)	The inherent distinctiveness of the TY.PHOO mark, and, for reasons I have just been discussion, Premier does not rely in relation to this part of its case, on any acquired distinctiveness;

(3)	The degree of similarity between the good for which the defensive marks are registered and the goods in relation to which the TYPHOON sign has been used;

(4)	The nature of the average consumer to the type of goods concerned.

So far as the first aspect is concerned, there is obvious force that, particularly so far as aural impact is concerned, there is very considerable similarity between TY.PHOO and TYPHOON; indeed, there is obvious force in Mr Arnold’s contention that the aural similarity “could hardly be greater, short of complete identity”.  That contention is reinforced in light of the tendency of the British to slur the endings of words (a point already noted in trade mark law: see Kerly’s Law of Trade Marks and Trade Names, 12th Edition at paragraph 17-13). However, although there is undoubtedly also a close similarity between the mark and the sign visually, it is not quite as significant: not merely is the “N” at the end of the sign a tolerably clear distinguishing feature from the mark (perhaps particularly because it is at one end, rather than somewhere in the middle, of the sign), but there is the idiosyncratic full stop in the middle of the mark.  Although the full stop is self-evidently part of the mark it appears to me that it may not have a large impact on the perception of many consumers.  In some of the documentation produced in the present case (such as Mr Lum’s note to Mr Battersby and in some of Premier’s own material) the full stop has been omitted, apparently not intentionally.

So far as conceptual features are concerned, there is much less similarity.  TYPHOON is not merely a dictionary word; it is a well known word used in common parlance. TY.PHOO is an invented mark, and is what is known in this field as a fancy word (or two fancy words separated by a full-stop) with no other meaning.  To some extent, the force of this argument can fairly be said to be blunted by the fact that the use of the word TYPHOON in relation to kitchenware is arbitrary, in the sense that there is no inherent connection between (a) the word typhoon and its natural dictionary meaning and (b) the goods in connection with which the word is used by TEL.

Premier placed some reliance on a passage in the television comedy series “Only Fools and Horses” broadcast in late 1983, where one of the main protagonists refers to “A ruddy typhoid blowing out there”, to which the other main character replies “Its a typhoon”, to which the first riposts “Good idea..., put the kettle on we’ll have a nice cup of tea”.  This, said Mr Arnold., provides independent, unsolicited, indeed fortuitous, evidence of confusion. While I see the face of that, it appears to me only to establish what I would anyway accept, namely that the sign and mark are similar, especially in aural terms.  Indeed, Mr Bloch realistically accepted that there was a possibility of “some aural confusion”, but contended that it would be unlikely to be a frequent occurrence. Quite apart from that, to an extent, it seem to me that that evidence cuts both ways.  It may well be intended to be understood by the audience that, just as it is absurd to confuse typhoid with typhoon, so it is absurd to confuse typhoon with TY.PHOO.

It is right to bear in mind that one is concerned with the distinctiveness of TY.PHOO in connection with the goods for which the defensive marks are registered, and, so far as they are concerned, no question of distinctiveness arising from reputation has been suggested.  So far as inherent distinctiveness is concerned, I accept that it is right to bear in mind, as Mr Arnold contended, that TY.PHOO enjoys an inherent distinctiveness as a mark, in part because of the very reason that  it is an invented mark without any notional or allusive quality, let alone any inherently descriptive quality (save that which it has now gained over this century in relation to tea as a result of its promotion by Premier and its predecessors).

I turn to the third feature relied on by Premier, namely the degree of similarity between the goods for which the TYPHOON sign is used and the goods for which the TY.PHOO mark is registered so far as the defensive registrations are concerned.  As I have already mentioned, it appears to me that there is pretty limited overlap so far as the ‘270 mark is concerned, but a far greater, indeed a substantial, overlap so far as the ‘276 mark is concerned.  I do not propose to discuss the matter further, as it is already dealt with in the immediately preceding section but one of this part of the judgment.

As to the last of the four factors relied on by Premier, it is clear that the average consumer in the present case is a purchaser of kitchenware.  There is a dispute between the parties as to the extent to which it is appropriate to take into account the fact that the kitchenware marketed by TEL under the TYPHOON sign is comparatively prestigious or “up market”, and relatively expensive.  TEL relies on the evidence not only of Mr Battersby, but also of a Mr Gary Gordon, the Senior Partner of company specialising in the retail of sale of cookware and kitchenware, with four retail outlets, and who is also Chairman of the Cookshop and Housewares Association.  He said “TYPHOON products are aimed at the middle and higher end of the market” and are “mainly purchased by people who have a more sophisticated culinary taste”.

In my judgment, while it is right to say that, on the basis of the evidence and arguments I have heard, it would not alter my conclusion on the issue of whether infringement under Section 10(2) has been established in the present case, TEL’s approach is the correct one.  The question before me is whether, applying the principles as established in the cases to which I have referred, the particular use to which the TYPHOON sign is put by TEL constitutes an infringement of the rights conferred on Premier as a result of the registration of its defensive marks, and that question must turn on the actual use to which the TYPHOON sign is put.  However, the fact that I favour TEL’s argument on this point does not assist its case in practice to a significant extent, because I am unpersuaded on the evidence I have heard that there is much difference between the attitude of customers for rather more prestigious kitchenware, such as that marketed by TEL under the TYPHOON sign, and the average sort of kitchenware, which may be characterised as somewhat more “down market”.  It is not as if TEL’s merchandise is, for instance, only for professional cooks, or manufactured in accordance with a process which renders it very expensive indeed.  Nor is it as if TEL’s kitchenware is only sold through one or two very exclusive outlets.  It is still sold relatively extensively from department stores.  For a time it was sold from one of the three or four main supermarket chains (albeit in a speciality kitchenware section) and, as I understand it, it may still be sold occasionally from supermarkets.

Premier relies on the fact that the average consumer in the present case is a purchaser of kitchenware, and, since more than half of the adult population of the United Kingdom is likely to purchase kitchenware, “his/her level of attention is unlikely to be particularly high”.  I regard that argument as involving a non-sequitur: the mere fact that most people do a particular thing does not mean that, when doing that thing, they are unlikely to be paying much attention.  Most people drive, but it does not follow that, when driving, their level of attention is low.

On the other hand, I quite accept Mr Arnold’s submission that the care and attention paid by a consumer of kitchenware to the particular brand or source of the origin of the item he or she is purchasing or intending to purchase is of a much lower order than in the case of a potential or actual purchaser of, say, a high performance motor car.

TEL’s contention was that by the standard of retail purchasers generally, purchasers of kitchenware, and in particular of kitchenware at the higher, quality end of the market, are relatively careful purchasers, as opposed to impulse purchasers.  That argument appears to me to have been made out on the evidence I heard, and to be consistent with what one would expect.  Thus, Mr Gordon, to whom I have referred, said that “consumers do take a lot of care in buying cookware products”. Evidence to similar effect was given by Mr Paul Marchant, the owner of a specialist cookware shop in East Anglia, whose evidence was not the subject of cross examination. Indeed, Mr Battersby’s evidence was to much the same effect, albeit that I accept that his evidence, coming as it does from a directly interested party, must be approached with caution.

However, as again one would expect, the evidence established that the degree of care exercised by potential purchasers does not merely vary from individual to individual, but also can be dependent upon the circumstances.  In general, I accept that shoppers in supermarkets will take somewhat less care than those in specialist cookware shops, but I am unpersuaded, in light of the evidence, that there would be likely to be a substantial difference between the degree of care involved in the two cases.  Further, the degree of care will presumably be greater for some items than others.  However, I am not persuaded that it is necessarily right, as Mr Arnold contended, to say that less care will be taken when purchasing a mug than a wok: although the latter item may be significantly more expensive, and therefore might normally be expected to involve more care from the purchaser, it would not by any means necessarily contain any sign or mark, whereas a purchaser of a mug may well be looking for a mug with the relevant sign or mark on it, as part of its design.  Clearly, as was accepted by Mr Battersby and Mr Gordon, a person purchasing an item in a rush, for instance just before Christmas, would presumably take comparatively less care.  It is also right to record that Mr Battersby and Mr Gordon accepted that recommendations by word of mouth were an important feature so far as the reputation of kitchenware - particularly at the upper end of the market - is concerned.

I accept that there could be, indeed probably will be, the odd occasion upon which a person referring to TYPHOON kitchenware will be misheard and be understood to be referring to TY.PHOO.  However, I have reached the clear conclusion that there is no real possibility of the average consumer, or even of a significant proportion of consumers, of kitchenware, mistaking the TYPHOON sign for the TY.PHOO mark.  In any event, I consider that, even if such a consumer were to notice a similarity between the mark and the sign, there is no real possibility of his or her inferring anything from that similarity.  In my judgment, even if an association was made between the mark and the sign, there is nothing in the evidence, or indeed in the arguments, I have heard which persuades me that such a consumer would conclude that the proprietor of the mark and the sign were related simply because of their similarity.  Neither Mr Battersby nor Mr Gordon thought that there was any possibility of confusion.  Mr Gordon’s business has been going for twenty years, and he has sold TEL’s merchandise continuously for around five years, and has done so under the TYPHOON sign since it was launched.  He said “with great certainty, that no one would think these products [sc. kitchenware sold under the TYPHOON sign] have anything to do with TY.PHOO”.  In his statement, Mr Marchant said that “people have often said silly things yet I have never heard anyone mention that they think TY.PHOO is somehow connected to TYPHOON or any mention of TY.PHOO at all”.

No evidence of actual confusion, and indeed no evidence from experts on the kitchenware business was called on behalf of Premier, and it is fair to say that the value of expert evidence on that sort of issue in a case such as this is limited, as is the value of evidence of absence of actual confusion.  In this connection, I thought that there was considerable force in Mr Arnold’s following contentions.  First, almost by definition, evidence of actual confusion is often difficult to obtain, even if one looks for it.  Secondly, the high quality of TEL’s goods result in there having been a few complaints which would enable confusion to be detected.  Thirdly, confusion may have been avoided because of use of other signs or get-up on TEL’s goods, or through particular trading practices.  Fourthly, Premier’s use of the TY.PHOO mark on the Goods has been, on any view, very limited.  Fifthly, TEL targets the upper end of the market, whereas TY.PHOO tea is targeted at the mass market (a point which I think only applies if I had accepted Premier’s argument that its case is not limited to relatively upmarket kitchenware).  In any event, it is not necessary to establish actual confusion to succeed in a claim for trade mark infringement.

However, I consider that the three witnesses called on behalf of TEL were of some assistance.  Each of them was an expert in the field of marketing and sale of kitchenware, albeit that, as I have mentioned, one of them, Mr Battersby, obviously had substantial interest in the outcome of these proceedings, and another, Mr Marchant, was not cross examined.  However, the two witnesses who were cross examined were, in my judgment, honest witnesses, and the evidence of all three of them was consistent and credible.  Further, the evidence by no means went exclusively to the question of whether confusion of the sort alleged by Premier actually occurred: it also went to likelihood of confusion.

The only witness who took the contrary view was Mr Thomas, who is not an expert in marketing kitchenware, although he is obviously very experienced and successful in the field of marketing generally and branded goods in particular.  His evidence was directed much more to the issues raised under Section 10(3), albeit that he did mention the possibility of aural confusion in particular in light of the similar sound of the sign and the mark.  In the event, I did not find his evidence of assistance, at least in relation to the claim under Section 10(2).

Premier produced evidence of a survey, which as I understand it, was relied on more to support the claim under Section 10(3) then under Section 10(2).  Indeed, Mr Philip Malivoire, Premier’s expert witness, an experienced market research analyst and, as a director of NOP Consumer, the person ultimately responsible for the survey, said that the purpose of the survey was not to investigate or demonstrate confusion between the mark and the sign in the minds of the public, but to investigate or demonstrate association between them.  Accordingly, I shall discuss the survey its effect in the next part of this judgment.  It is right to mention, however, that I have considered the survey in relation to Premier’s claim under Section 10(2) and that it does not cause me to alter the view I have come to.

Confusion: conclusion
Bearing in mind the closing part of Section 10(2), the guidance given by the ECJ and the English Courts as to the proper approach to be adopted to the question of confusion, and the evidence and arguments in relation to this particular case, as discussed above, I reach the conclusion that Premier’s claim under Section 10(2) fails.  Despite the similarity of the mark and the sign (particularly on an aural basis), and the inherent distinctivenss of the TY.PHOO mark, I do not consider that the average customer for kitchenware (whether of the comparatively exclusive nature of that marketed by TEL or even of relatively less up market kitchenware), particularly bearing in mind that he or she is to be assumed to be reasonably well informed and reasonably observant and circumspect, would confuse the TYPHOON sign used by TEL in relation to kitchenware with the TY.PHOO mark as used in relation to the goods for which the defensive marks are registered.

INFRINGEMENT: SECTION 10(3)/ARTICLE 5(2)
Preliminary
In order to succeed in its claim for infringement under Section 10(3), Premier has to establish the following:

(1)	TEL is using the sign TYPHOON “in the course of trade”;

(2)	The TYPHOON sign is similar to the TY.PHOO mark;

(3)	The TYPHOON sign is used in relation to goods which are not similar to those for which the ‘126 mark is registered (assuming, which I suspect is not in fact the case that Section 10(3) cannot apply where the goods are similar - see Sabel [1998] RPC 199, at 223);

(4)	The ‘126 mark has a reputation in the United Kingdom;

(5)	The use of the TYPHOON sign by TEL is “without due cause”;

(6)	The use of the TYPHOON sign by TEL:
a.	takes unfair advantage of; and/or
b.	is detrimental to
the distinctive character or the repute of the ‘126 mark.

Of these statutory requirements, there is obviously no dispute as to the first, third and fourth requirements.  While, as mentioned, in relation to Section 10(2), Mr Bloch did not formally concede that the second requirement was satisfied, the point was not strongly contended, I am firmly of the view, as already discussed in relation to the argument under Section 10(2), that the TYPHOON sign is similar to the TY.PHOO mark. The two issues which fall to be considered, therefore, are whether the use of the TYPHOON sign by TEL could be said to be “without due cause”, and whether the use of the TYPHOON sign takes unfair advantage of and/or is detrimental to the distinctive character or the repute of the TY.PHOO mark.  I shall consider those issues in turn.  However, before doing so, it is right to consider the purpose and effect of Section 10(3).

The purpose and effect of Section 10(3)/Article 5(2)
According to Recital 9 of the Directive, the purpose of Article 5(2) is to provide “extensive protection to those trade marks which have a reputation”, and such protection is clearly intended to be over and above that available to marks without a reputation.  As already mentioned, Section 10(3) represents a significant extension so the protection hitherto accorded to proprietors of registered trade marks in this county.  However, the terms of Article 5(2) do not appear to involve such a significant change to the domestic law of at least some of the other member states of the European Community.  In these circumstances, I consider that significant assistance may be available to the English courts from the jurisprudence developed on this topic elsewhere within the European Community.

In DIMPLE [1985] GRUR 50, the German Federal Supreme Court, said that:

“The courts have repeatedly held that it constitutes an act of unfair competition to associate the quality of one’s goods or services with that of prestigious competitive products for the purpose of exploiting the good reputation of a competitor’s goods or services in order to enhance one’s promotional efforts”.

Those observations are appropriate to a case where the sign is said to “take unfair advantage of” a mark with established substantial goodwill.  Observations of the German Federal Supreme Court in another case, QUICK [1959] GRUR 182 are relevant to the other type of case, namely where use of the sign “is detrimental to” a well established mark:

“[T]he owner of ... a distinctive mark has a legitimate interest in continuing to maintain the position of exclusivity he acquired through large expenditures of time and money and that everything which could impair the originality and distinctive character of his distinctive mark, as well as the advertising effectiveness derived from its uniqueness, is to be avoided ...  Its basic purpose is not to prevent any form of confusion but to protect an acquired asset against impairment”.

This sort of detriment has been generically described as “dilution”, and has also been said to occur normally in one of two ways, namely by “blurring” or by “tarnishing”. The concept of  “dilution” in this context is not without its critics, for instance Mr Geoffrey Hobbs QC, sitting as the Appointed Person in VISA Trade Mark (unreported, 28th September 1999).  However, as I read his observations, what Mr Hobbs was primarily saying was that one should not, as it were, blindly re-write a provision in a statute or a directive, and then to seek to interpret it as re-written.  To my mind, that is plainly right.  However, it does appear to me that dilution is a useful concept to bear in mind when considering the application  of Section 10(3) to a particular set of facts.  This view is fortified by the fact that Article 5(2) is based on Benelux law (see per the Advocate General in General Motors Corporation -v- Yplan SA [1999] All ER (EC) 865 at 871C), and the Benelux court appears to have recognised dilution as a basis for a claim for infringement.  On the other hand, (as the Advocate General pointed out in the passage to which I have referred) apparently unlike the Benelux law, “the directive spells out the type of harm against which protection is provided”.

In connection with the relevance of the concept of dilution, it is also right to refer to Section 45 of the Lanham Act in the United States, which specifically defines dilution as:

“...the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of -
(1) competition between the owner of the famous mark and other parties, or 
(2) likelihood of confusion, mistake or deception”

However, while dilution is a useful concept to bear in mind, it does not necessarily follow that every case of infringement under Section 10(3) will necessarily involve dilution, nor does it follow that the proprietor of a mark will necessarily succeed in establishing infringement under Section 10(3) in every case where he establishes dilution.

Mr Bloch suggested that Section 10(3) could not be invoked in a case such as the present, where Premier’s complaint is not dilution of the reputation of the brand, but dilution of the differentness of the brand.  Subject to the general qualification, discussed at the end of this section of the judgment, to the effect that Section 10(3) should not, as it were, be taken too far, I do not consider the point to be sound. Depending on the width of meaning one gives to the word “reputation”, the differentness of a particular brand is either part of the “repute” of the mark or it is part of the “distinctive character” of the mark: either way it appears to me to be expressly within what is contemplated as being within the ambit of the intended protection of Section 10(3), in light of its closing words. Quite apart from the way in which Section 10(3) is expressed, it seems to me that this conclusion is also consistent with the general purpose of Article 5(2) Section 10(3), as explained in Recital 9 of the Directive, and in the passages from the two judgments of the German Federal Supreme Court which I  have quoted.

Blurring occurs where the distinctiveness of a  mark is eroded.  A pithy explanation of blurring may be found in the observations of Sir Thomas Bingham MR in Taitinger SA v Allban BEP Ltd [1993] FSR 641 at 678, where he said this:

“The first plaintiff’s reputation and goodwill in the description Champagne derive not only from the quality of their wine and its glamorous associations, but also from the very singularly and exclusiveness of the description, the absence of qualifying epithets and imitative descriptions.  Any product which is not Champagne but is allowed to describe itself as such must inevitably, in my view, erode the singularity and exclusiveness of the description Champagne and so cause the first plaintiffs damage or an insidious but serious kind”.

Those observations were made in connection with a passing off care, and have been subject to a degree of criticism from Millett LJ in Harrods Ltd v Harrodian School Ltd [1996] RPC 697 at 716.  However, neither of those two points appear to me to justify the conclusion that the quoted observations do not represent a good summary, albeit not necessarily a comprehensive definition of blurring.  I do not consider that the remarks of Millett LJ in Harrods [1996] RPC 697 are relevant to the present issue, because his concerns about observations such as those of Sir Thomas Bingham in Taitinger [1993] FSR 641 were essentially based on the fact that they were made in the context of passing off rather than trade mark infringement.

The best known example of tarnishing is perhaps to be found in the decision of the Benelux Court of Justice in Lucas Bols v Colgate-Palmolive (1976) 7 IIC 420 where the mark CLAERYN for gin was held to be infringed by use of the sign KLAREIN for a detergent.  The court said the following:

“It is ... possible ... that the goods to which [the use of] a similar mark relates, appealed to the sensations of the public in such a way that the attraction and the “capacity of the mark to stimulate the desire to buy” the kind of goods for which it is registered, are impaired.”

The absence of any reference in Section 10(3) to confusion, particularly in light of the express reference thereto in Section 10(2), appears to me to emphasise that the proprietor of a trademark can claim that the use of a sign infringes his rights notwithstanding the absence of any confusion between the sign and his mark.  Mr Bloch submitted, however, that in order for a claim for infringement to succeed under Section 10(3), the owner of a mark will normally have to establish confusion, at least in the absence of being able to show real and substantial detriment.  In my judgment, that puts a gloss on the natural wording of Section 10(3),and indeed of Article 5(2), which is not justifiable, or even helpful as general guidance.  It is normally inappropriate to cut down an express provision of a statute, or indeed of an EC Directive, unless it is plainly necessary to do so.  It is conceivable that, as the jurisprudence on Section 10(3) is developed by the ECJ and national courts, Mr Bloch’s suggestion will provide a good working rule, but, at any rate at this comparatively early stage of its life, I do not think that Section 10(3) should even be treated as being subject to such a rule of thumb, let alone such an implied term.  It appears tolerably clear to me from the terms of Section 10, that confusion is not a necessary ingredient to establishing infringement under Section 10(3).  Indeed, this now seems to be established by authority: see Sabel [1998] RPC 199 at 223: the same view was taken by Advocate-General Jacobs in General Motors [1999] All ER (EC) 865 when he said at 870 (paragraph 26):

“[T]he issue was resolved by the [ECJ] in its judgment in Sabel ..., which made it clear, when ruling on Article 5(1)(b) that Article 5(2) did not require confusion.”

(This is also consistent - or at least not inconsistent - with the view expressed obiter by Aldous LJ in British Telecommunications PLC v One In a Million Ltd [1999] FSR 1 at 25).

Mr Arnold contended that the effect of Section 10(3) was that the stronger the distinctive character and reputation of a particular mark, the easier it would be to establish a detriment to it.  In my judgment, that is a good point.  First, it seems to follow as a matter of inevitable logic from the way in which Section 10(3) is expressed, as supported by the above discussion.  Secondly, I think that the contention is supported by the reasoning of the ECJ in General Motors [1999] All ER (EC) 865 at 878 where one finds this:

“23. ...it is only where there is a sufficient degree of knowledge of [as earlier] mark that the public, when confronted by [a] later trade mark, may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the earlier trade marks may consequently be damaged ...

26.  The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.

27.  In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case ...”

Finally, it is right to mention that, as Mr Arnold also submitted, Section 10(3) is not intended to have the sweeping effect of preventing the use of any sign which is the same, or similar to, a registered trade mark with a reputation; nor is Section 10(3) intended to enable the proprietor of a well known registered mark to be able to object as a matter of course to the use of a sign which may remind people of his mark.  In at least three decisions in the Trade Mark Registry, it has been held that what Section 10(3) is intended to prevent is the use of a sign which exploits the distinctive character or repute of an established trade mark in either or both of the ways contemplated in paragraphs (a) and (b) of that sub-section: see AUDI-MED Trade mark (1998) RPC 864, Oasis Stores Ltd’s Trade Mark Application (1998) RPC 631 and VISA (unreported, cited above).

Without Due Cause
The effect of the words “being without due cause” in Section 10(3) is a matter of substantive dispute between the parties; there was also a more minor, technical argument as to which of the parties had to discharge the onus or proof on this issue.  I shall consider the substantive issue first.

On behalf of Premier, Mr Bloch contended that this is not a case where the alleged infringer, TEL, can be said to be using the sign, in this case TYPHOON, “without due cause”.  His contention was that that expression effectively means “in good faith” or “for good and honest commercial reasons”, or at any rate, not for a purpose which involves in any way seeking to benefit from, or to harm, the goodwill established by Premier and any other proprietor or licensee of the ‘126 Mark.

If this construction of the effect of the words “being without due cause” is correct, then I would accept Mr Bloch’s submissions that TEL’s use of the sign cannot fall within Section 103).  Mr Battersby explained how, with the benefit of suggestions and advice from others, he decided to adopted the sign TYPHOON for the kitchenware marketed by TEL in this country.  On the basis of his evidence, and of my view that he was an honest witness, it does appear clear that he determined on the name for its own merits (as he perceived them) in relation to kitchenware.  Any similarity with, let alone any benefit from any possible similarity with, the TY.PHOO mark formed no part of his thinking.  Indeed, it was not referred to in any relevant discussions leading up to his decision to adopt the sign TYPHOON, save on the isolated occasion to which I have referred, namely Mr Lum’s note, which either Mr Battersby did not see or (as I think it more likely) Mr Battersby saw, although it made no significant impression on him.

However, I do not consider that the interpretation advanced by Mr Bloch of the words “being without due cause” is correct.  First, particularly having considered the general purpose and effect of Section 10(3), it appears to me that such a construction of the words “being without due cause” renders the effect of the section unpredictable and, in some cases, positively unfair.  The purpose of Section 10(3) is, as I have indicated, to protect the value and goodwill of trade marks, particularly in cases where they are well known, from being unfairly taken advantage of or unfairly harmed.  I accept, of course, that, as the very use of the word “unfairly” demonstrates, the section is not intended to confer absolute rights on trade mark proprietors in all circumstances.  However, it does not appear to me likely that it could have been envisaged that the use of a sign for goods which may in practice very heavily damage the value of a mark, whose development and exposure has been the subject matter of considerable effort and expense by the proprietor, should be immune from attack by the proprietor of the mark simply because the sign was innocently adopted.  Such a construction of Section 10(3) would not only be capable of producing an unfair, even a capricious, result so far as the proprietor of the trade mark is concerned; it would also encourage those considering adopting new signs to carry out a minimum amount of research, and could fairly be said to be conferring an advantage on the ignorant and lazy over the well-informed and careful. Furthermore, it seems to me undesirable that that outcome of a case where the court is satisfied that the allegedly infringing sign will seriously damage the reputation of the registered mark should depend on the view which the court forms as to the knowledge, subjective intentions, and even the unconscious desires, of the owner of the allegedly infringing sign.

Secondly, although I accept that the words “being without due cause” are somewhat opaque in their effect, I consider that they have to be read as not merely governing the words “the use of the sign”, but also as governing the words “takes unfair advantage of, or is detrimental to”.  Section 10(3) must be read in a commercially sensible way.  Bearing in mind its overall purpose, it appears to me that (without at this stage intending to indicate where the burden of proof lies) it requires the defendant to show not merely that the use of the allegedly infringing sign in connection with the defendant’s goods is “with due cause”; it also requires him to show that although the use of the sign might otherwise be said “to take advantage of or is detrimental to” the mark, the advantage or detriment are not “without due cause”.

Thirdly, it appears to me that this conclusion is consistent with the view of the Benelux Court in Lucas Bols [1976] IIC 420 at 425, where, when discussing the meaning of “without justifiable reason” which appeared in a similar context in the Uniform Benelux Trade Mark Act as “without due cause” in Section 10(3), the Court said this:

“What this requires, as a rule, is that the user (of the mark) is under such a compulsion to use this very mark that he cannot honestly be asked to refrain from doing so regardless of the damages the owner of the mark would suffer from such use, or that the user is entitled to the use of the mark in his own right and does not have to yield this right to that of the owner of the mark...”.

On the same page, the court went on to suggest that a “justifiable reason” may be “if the user can assert an older right than that of the [registered proprietor]” but went on to emphasise that whether the alleged infringer can establish a “justifiable reason” must be “resolved by the trial judge according to the particular facts of each case.”

In my judgment, those observations represent the approach which should be adopted to the words “being without due cause” in Section 10(3), although it is fair to say that two criticisms can be made of this conclusion.  The first criticism raises a practical problem, in the sense that this construction could be said to produce a degree of uncertainty; the second point which may be made is that, on this construction, it is not entirely to see what function the words “being without due cause” actually have.  So far as the practical problem is concerned, I do not consider that it has a great deal of weight.  Most cases of alleged trade mark infringement turn on their own particular facts; further, the protection potentially accorded to a trade mark proprietor by Section 10(3) can be pretty wide. It does not therefore seem to me inappropriate that the tribunal considering the question of infringement under this provision is accorded some degree of flexibility as to how the provision is to be enforced.  It should be made clear that I am certainly not suggesting that the court has some sort of roving commission or wide discretion; the observations I have quoted from Lucas Bols are quite clear on that point.

So far as the second criticism of my conclusion is concerned, it is fair to say that it is not easy to see how the use of a sign could take “unfair advantage” of a registered mark and yet be not “without due cause”.  In my judgment, however, there are two answers to that point.  First, it is conceivable that, in certain circumstances, the court might conclude that, notwithstanding the fact that the alleged infringer’s use of a sign took “unfair advantage” of a mark, this was outweighed by the use being with “due cause”, within the limited meaning of that expression as explained in Lucas Bols [1976] 7 IIC 420.  Secondly, the words “being without due cause” apply not only to a case of alleged unfair advantage, but also to a case where the use of the sign is allegedly “detrimental” to the mark: there is no difficulty in envisaging circumstances where a “detrimental” use could not be “without due cause” within the sense I have suggested.

Having come to this conclusion as to the meaning and effect of the words “being without due cause” in Section 10(3), it appears clear to me that those words do not assist TEL in the present case.  Its use of the TYPHOON sign in relation to its kitchenware started little more than a year ago, and only a very short time before these proceedings were begun by Premier.  Indeed, TEL did not wait to see if its application to register the TYPHOON sign was challenged by anyone before it launched its kitchenware under that sign.  Premier’s TY.PHOO mark has been in substantial commercial use for nearly a century, and has been on the register for over 70 years; it is a very well known, and plainly a very valuable, mark.  In these circumstances, I have no real hesitation in reaching the conclusion that, if Premier can otherwise succeed in its claim for infringement under Section 10(3), TEL obtain no assistance from the words “being without due cause” in that section.

The conclusions I have reached on the facts of this case, whether premier’s analysis of the law is correct (as I believe to be the case) or if TEL’s analysis is correct, are reached irrespective of where the onus of proof lies.  However, it is right to record that in my view on either analysis the onus of proof would rest on TEL.  I cannot pretend that the point is straightforward, because there is obvious force in Mr Bloch’s contention that, where a proprietor of a trade mark alleges infringement under a particular statutory provision, it is up to him to establish each of the prescribed statutory ingredients necessary to establish infringement.  However, as I see it, the words “being without due cause” although not plainly expressed as such, really represent a proviso or exception to the generality of Section 10(3).  In those circumstances, if an alleged infringer, such as TEL, wishes to rely on those words, it is up to it to establish that it falls within the exception, rather than up to a proprietor of the mark to establish that the proviso does not apply.  It is fair to say that this a conclusion I would have reached even if I had held the TEL’s analysis was correct.

It follows that Premier will succeed in establishing infringement under Section 10(3) provided that it can show that TEL’s use of the TYPHOON sign “takes unfair advantage of” and/or “is detrimental to” “the distinctive character or repute of the [TY.PHOO] mark”.  Premier’s case is now based solely on detriment, as Mr Arnold (rightly I think) abandoned what was always Premier’s secondary argument based on unfair advantage.

Detriment: Premier’s case in summary
In summary, Premier’s case that TEL’s use of the TYPHOON sign causes and will cause detriment to the distinctive character or repute of the TY.PHOO trade mark is as follows:

1.	The very close similarity between the sign and the mark, coupled with the close connection between kitchenware and tea, result in members of the public associating TYPHOON with TY.PHOO.  This will be exacerbated because TEL normally uses the TYPHOON sign with similar typography (capital letters with a larger capital T) and similar colouring (white on red) to that normally used for the TY.PHOO mark by Premier.  In this connection, Premier relies on the survey evidence, which I have mentioned; and, albeit to a lesser extent the scene in “Fools and Horses”, to which I have referred.

2.	(a)	The use of the sign in such circumstances will lead to blurring, as it will reduce the uniqueness of the TY.PHOO mark as a brand name in the kitchen;

	(b)	The use of the sign in such circumstances will also lead to tarnishing, as the mark’s brand image is associated with what Mr Arnold called “the British institution of the cup of tea”, whereas the use of TYPHOON will give rise to unfavourable associations, namely the destructive power of tropical cyclones.  In this connection, Premier relies upon a survey it commissioned in connection with the proposal to launch the TY.PHOO mark in the United States, which demonstrated that a fair number of consumers reacted negatively because of the mark’s visual and/or aural similarity to the words typhoon and typhoid as a result, Premier did not go ahead with the proposed launch.

I shall consider those contentions in turn.

Detriment: association
Some of the evidence and arguments relating to the question of association between the sign and the ‘126 Mark were similar to those relating to the question of confusion between the sign and the defensive marks.  However, it is obviously important to bear in mind that, although there is an inevitable degree of overlap, or at least of similarity, between the two questions, they are quite distinct, involving a different issue (namely association as opposed to confusion) and different marks (namely the ‘126 Mark as opposed to the defensive marks).  Before turning to the specific evidence and argument on association, it is right to emphasise that Premier’s task to establish association with the ‘126 Mark is rather easier than to establish confusion with the defensive marks.  First, at least in general, it appears to me to be less hard to establish association between a sign and a mark than to establish confusion between them.  In this connection, despite the closing words of Section 10(2), I believe that confusion and association are different concepts, although confusion could be said to be a particular type of association, depending how widely one defines the latter word.  Secondly, with its established reputation, the ‘126 Mark has an acquired, indeed a very substantial acquired, reputation, as well as an inherent distinctiveness, whereas, as already mentioned, the defensive marks really stand or fall on their inherent distinctiveness.

I have already discussed the visual and even greater aural similarity between TYPHOON and TY.PHOO.  While plainly not conclusive, or indeed anything like conclusive, it seems to me that this is a fact on which Premier can fairly rely on the issue of association.

Secondly, there is the evidence of the survey which Premier commissioned from NOP Consumer.  This survey was based on research carried out in February and March 1999.  After an initial pilot scheme with 100 interviewees in four different towns, a further 216 people were interviewed in four different cities.  The interviewees were shown a card with the TYPHOON logo and asked: “What kind of products do you think are sold under this name?”, to which 52, approximately 16%, mentioned TY.PHOO, TY.PHOO tea or TY.PHOO tea bags, and a further 102, approximately 32%, mentioned tea.  The next question asked of all interviewees was: “Why do you say that?” to which 87, approximately 27%, mentioned TY.PHOO even though they had not referred to it in the first question.  The third question asked was whether the interviewees would be surprised to be told that kitchen products were sold under the TYPHOON name, to which 209, approximately 66%, said they would be surprised, and 87, approximately 27%, said they would not be surprised.  (For completeness, I should mention that the question asked of the first 100 interviewees were slightly different from those asked of the subsequent 216, but nothing hangs on that).

Although one or two criticisms were made by Mr John Barter, a very experienced market researcher called on behalf of TEL, I am unpersuaded that the survey was unsatisfactory so far as its procedure and technique were concerned.  Indeed, Mr Barter described the survey as having “been executed to a reasonably satisfactory standard”.  He also quite rightly accepted that the answers to the first two questions showed “a very high level of association” between the TYPHOON logo and TY.PHOO tea (whether expressly by brand or not).

The survey helps confirm certain points which were either accepted or were not hotly contested, by TEL.  Thus, the results of the survey show, to my mind, that TY.PHOO is a name which is very well known indeed, and that, albeit not necessarily when it is used in connection with specific products other than tea and tea-related goods, the word or sign TYPHOON puts people in mind of TY.PHOO.

However, I am not persuaded that the results of this survey take matters much further so far as Premier’s case on Section 10(3) is concerned.  There was much in Mr Barter observation that the survey:

“Merely establishes that if people are shown a card with a name on it which differs by only one letter from a very well known brand name, a substantial minority of them will mention that brand name [and a significant further proportion will be prompted to identify the goods with which the brand name is associated] when they are prompted to make some sort of association” (words added by me).

There is also force in what Mr Barter went on to say:

“This does not in any way establish that if people were to encounter the TYPHOON brand of kitchenware in an ordinary market place situation such as a hardware shop of a department [store] they would be confused and might believe that the words had something to do with TY.PHOO.”

The survey establishes a significant link in the minds of the public between the sign TYPHOON and the mark TYPHOON and TY.PHOO tea in a moderately non-leading way.  However, there is an obvious leading aspect to the first question: it puts the possibility of types of products being connected with the word TYPHOON, written in white capitals on a red background.  Further, although the third question clearly linked the sign TYPHOON to kitchenware, there is something of a gap in the questions, in the sense that there was no question which directly addressed the issue of the degree of connection or association, if any, in the minds of the public between the sign TYPHOON when used in connection with TEL’s kitchenware, or kitchenware generally, on the one hand, and on the other hand, the mark TY.PHOO for Premier’s tea.  In my judgment, particularly given the very substantial acquired reputation of the mark TY.PHOO in relation to tea, especially if written in white and capital letters on a red background, it is scarcely surprising that a large proportion of the public, if asked specially what products they would expect to be sold under the sign, answer TY.PHOO and/or tea.  It does not necessarily follow that anything like that proportion of members of the public or indeed any  members of the public, would give the same answer if they were shown the sign specifically attached to, or otherwise identified with, a different product, namely kitchenware, and were then asked the same question or were asked to make an association.  Even then, one might have to exercise caution, because there is an obvious, and a potentially significant, difference between an involuntary, and quite possibly subconscious, association in the minds of a consumer, when looking at kitchenware with the TYPHOON mark, and a considered, prompted, and articulated association in the somewhat artificial circumstance of a survey.

Thirdly, there is the nature of the products.  On the face of it, there is a substantial difference between hardware products and tea.  However, on closer examination, it seems to me that there is a somewhat greater closeness between the two types of product that might appear at first sight.  First, TEL’s products are connected with the kitchen and/or food and drink, and tea itself is obviously connected with items such as cups, mugs, spoons, kettles and teapots.  Secondly, although tea and kitchenware are either sold from different sorts of shops (namely groceries or hardware shops) or from different areas in a supermarket, there are a substantial number of shops in which both types of products might be sold.  Specialist kitchenware shops are now frequently found not merely in large towns and cities, but also in small towns, and they normally sell tea and coffee (as well as, for instance, salt and pepper) in addition to kitchenware.  Further, one company, Whittards of Chelsea Ltd, has rather more than 100 retail outlets in England; as well as selling many different brands and styles of tea and coffee, it also sells some hardware in connection with drinking, as well as plates and some other hardware connected with eating.

I now turn to the evidence relied on as negating the likelihood of there being an association in the minds of the public between the sign and the mark. First, there is the evidence given by Mr Battersby, Mr Gordon and Mr Marchant, both in relation to the unlikelihood of confusion or even association, and in relation to the typical purchaser and potential purchaser of kitchenware to which I referred in the penultimate section of the previous part of this judgment.  The more careful the purchaser, the less likely he or she is to make an associated based on a mistaken reading of the sign.  However, that point is of slight force.  More significant, perhaps, were the observations of Mr Gordon and Mr Marchant which I quoted when considering the question of confusion under Section 10(2).  It appears to me that those observations apply also to the question of association under Section 10(3).  While confusion is self-evidently difficult to establish in practice, particularly when the goods sold under the allegedly confusing sign are of high quality (and are therefore unlikely to be the subject matter of much complaint), it seems to me that, if customers do associate the sign with the mark, retailers of kitchenware under the sign would be more likely to hear observations from customers indicating such an association between the sign and the mark.  However, because association can often be subliminal and because, even when conscious, there is no particular likelihood of it being mentioned by the customer to the retailer, it appears to me that the expert evidence called by TEL is of limited value on the Section 10(3) issue, as well on the Section 10(2) issue.  However, as I mentioned when dealing with Section 10(2), the expert evidence extends to the opinion of the witnesses as well as their experience.

On the other hand, there are other facets of the evidence called by TEL on this issue which I do not consider take matters, significantly further.  First, there are a number of trade mark registrations, or applications of trade mark for the sign TYPHOON.  Such registrations, let alone applications, are not evidence of use (see e.g. in British Sugar [1998] RPC 199 at 223), and therefore can take matters no further.  The same point can be made about another aspect relied on by TEL, namely registrations of companies whose names include the word TYPHOON.  In any event, even if those companies trade, the goods or services with which they are involved and the extent of their trade are matters of speculation.  I am also unpersuaded that mere evidence of internet websites containing the name TYPHOON takes matters much further, save that they do establish use of the sign.  In this case, most of the websites appear to be American or Japanese, and it is unclear to what extent any of the goods or services offered on those websites are available in the United Kingdom. TEL also relied on the promotional literature of two companies, which do appear to trade in the United Kingdom, and who goods are sold under the name TYPHOON.  It is unclear how long the goods have been available in this country, and in what quantities, if any, they have been sold.  While it would be wrong to characterise TEL’s evidence in this connection as all worthless, the furthest it goes is to show that the sale of goods under the sign TYPHOON in two fields very far from tea and kitchenware, namely in motor scooters, and in watersports clothing and equipment, has taken place to an unspecified extent and for an unspecified period without any apparent damage to the TY.PHOO mark.  It does not seem to me that that provides much of a reliable basis for drawing conclusions as to the likely reaction to the use of the sign TYPHOON in relation to kitchenware.

In light of the evidence and argument discussed above, I have come to the conclusion that it is more likely than not that, in the minds of some consumers, there will be a degree of association between the TYPHOON sign as used by TEL in connection with its goods and the TY.PHOO mark in relation to tea as used by Premier.  However, I consider that such an association will occur in comparatively few cases and that, in those cases, the degree of association will not be particularly strong.

So far as the proportion of people who will make the connection is concerned, I do not consider that it would be anything like the quantity which might be suggested by an uncritical application of the results of the survey, which show that nearly half those interviewed connected the sign TYPHOON with TY.PHOO and/or tea when asked what products would or might be sold under the sign. As I have said, this question does not mirror the situation with which I am concerned, namely where the TYPHOON sign is on, or connected with, TEL’s kitchenware goods.  In any event the question is a leading one, in that it prompts people to think of products being sold under the sign.   Add those two factors together, and one gets a position rather removed from the reality with which the court has to grapple.  On any view, this justifies a substantial reduction from the just under 50% that could be said to have made the association according to the survey; logically, there is no reason why the deduction should not be to zero.  It is not possible on the evidence to express a view as to the likely proportion of customers who would make the association, but I am satisfied that it would be closer, indeed far closer, to zero than to 50%.  In this context, language is not only imprecise, but it can mean different things to different people, and indeed different things to the same people in different contexts.  With that qualification, I would say that the proportion of customers who would make the association would not be substantial, but would probably be significant, in terms of percentages; I do not think it could be characterised as de minimis.  If required to identify the percentage, which I do not believe I am, I would go well below 5%.

Furthermore, the association made by this comparatively small, but not insignificant, proportion of customers would be a particular deep or particularly commercially significant.  Some people, perhaps the more heuristically inclined, from time to time play mental games with words and letters, particularly when bored or in idle moments. It is those sort of people, I believe, who would make that type of association between the sign and the mark.  I consider that this association could be said to impinge on TY.PHOO qua the ‘126 Mark, because the reason any such person would think of TY.PHOO would be because he knew of that name as a brand of tea, and, conceivably in a few cases, also because of the connection between TEL’s products and tea.  In my judgment, that would be the only type of significant association which members of the public seeing the sign TYPHOON on TEL’s products would make, so far as the TY.PHOO mark is concerned.

Accordingly, albeit to this rather limited extent, I accept Premier’s case under Section 10(3) in so far as it involves establishing that TEL’s use of the TYPHOON sign would result in some members of the public associating TYPHOON with TY.PHOO.

Detriment: general
However, in order to succeed under this first alternative ground under Section 10(3), Premier has to establish that the association is such as to be “detrimental as to the character or repute of the [126] Mark.”  As I see it, the mere fact that a proportion of the public associate the allegedly infringing sign with the claimant’s mark does not of itself mean that the sign infringes the rights of the proprietor of the mark by virtue of Section 10(3): something more, namely detriment, is required.  Indeed, Mr Arnold accepted that Section 10(3) was not intended “to make it automatically objectionable for the use of a sign to remind people of a trade mark”.  He contended that what Section 10(3) prohibited in this context, was the “use of a sign which exploits the distinctive character or repute of the trade mark either positively or [as is alleged by Premier here] negatively”.  This is a view which appears to coincide with that of Mr Geoffrey Hobbs QC, in VISA (unreported, cited above).

As I have found that, albeit to a limited extent, Premier has established the likelihood of an association between the sign and the mark in the minds of at least some members of the public, the next question therefore to be considered is whether, because of the association (or indeed for some other reason) TEL’s use of the TYPHOON sign is detrimental to the distinctive character or the repute of the ‘126 Mark.  In this connection, Premier put its case in two alternative ways.  The first is that TEL’s use of TYPHOON will lead to blurring because (to quote from Mr Arnold’s argument) “it will reduce the uniqueness of the TY.PHOO brand name in the kitchen”.  Secondly, there is Premier’s contention that TEL’s use of the TYPHOON sign will cause tarnishing to the TY.PHOO brand image, because of its association with the destructive power of tropical cyclones.  I propose to deal with these contentions in reverse order.

Detriment: tarnishing
The contention that a similar, or indeed identical, sign would lead to the tarnishing of a mark due to potentially damaging connotations associated with the sign being the linked with the mark is not an unfamiliar one.  It was the basis upon which infringement was established in Lucas Bols (detergents being an unattractive association for gin) and in three cases where a sign, either very similar to or identical with the mark, was used for condoms, leading to an association which was held “to impair [the claimant’s] advertising power in regard to the original goods and, moreover, to ruin their positive image, at least as far as part of the public is concerned”.  The three cases are the New York District Court decision in American Express Co v Libra Approved Corp 10 US PQ 2d 2006, (financial services) the German Federal Supreme court decision in MARS (1995) 26 IIC 282 (confectionery) from which the quotation is taken at 289, and VISA (unreported, cited above, also concerned with financial services) where Mr Hobbs QC also cited the observations from MARS.

The present case is slightly different from those cases, in that Premier does not contend that the goods associated with the allegedly infringing sign will, because of the similarity of the infringing sign to its mark, tarnish the value and effectiveness of the mark.  Indeed, Premiers case is close to being the converse of that.  It is more than, because of the degree of connection between the product sold under its mark and the product sold under the sign, as well as the close similarity between the sign and the mark, some members of the pubic may associate unattractive features inherent in the sign as a word with the TY.PHOO mark, hence damaging the repute of that mark.

In my judgment, Premier has fallen a long way short of making out its case under this head.  It seems to me that Premier’s case, as Mr Bloch argued, involves a number of steps, namely:

1.	Some people who associated the TYPHOON sign with cyclones will also associate the TYPHOON sign with TY.PHOO;

2.	Some people will associated the TYPHOON sign with cyclones;

3.	Some of those who associate the TYPHOON sign with cyclones and who also associate the TYPHOON sign with TY.PHOO will also therefore associate TY.PHOO with cyclones;

4.	Such association will cause significant detriment to the TY.PHOO mark.

I have already found that there will be some people in the first category; they will be a comparatively small proportion and not nearly as many as Premier would suggest in reliance on the survey.  On the basis of the evidence I have heard, I believe that there will be, if anything, even fewer people in the second category than in the first category.  In support of its case on the second point, Premier relies on four factors, namely the results of the research effected on its behalf in the United States, the question raised by an Australian importer of TEL’s products, the scene from “Fools and Horses” and the evidence of Mr Thomas.  I do not find any of those factors impressive.

It is understandable that Mr Thomas, with his responsibility for such a valuable and important mark as TY.PHOO, should be concerned about anything which could conceivably harm that brand name, but it obviously does not follow that any specific concern that he honestly has is reasonable or justified.  I have already indicated that the scene from “Fools and Horses” does not take matters much further.  The fact that the sign TY.PHOO (and therefore, presumably the sign TYPHOON) has an unfortunate connotation in the United States according to a survey carried out under the supervision of a person, who has not given evidence as to the circumstances of the survey, strike same as of precious little value to the question to which I have to determine.  Equally, what appears to have been little more than a throw-away remark, which, if it represented a genuine concern appears to have been alleviated in any event, by someone in Australia does not seem to me to take matters any further.  While it is fair to say that none of the three questions put to the participants in the survey would necessarily have been expected to elicit the information, I note that none of them appears to have suggested that the sign TYPHOON had an unfortunate connotation in so far as the consumers in this country were concerned.

The third point in the chain of reasoning also appears to me to raise a difficulty for Premier. Given that only a comparatively small proportion of the public would, in my judgment, fall within the first category and an even smaller proportion of the public would fall in the second category, the proportion who would fall in the third category would be effectively insignificant, if indeed, there were any members of the public who fell within that category.  This appears to me to follow as a matter of logic.  As I see it, a person can only fall within the third category if he falls within both the first and the second category; given that each of the first two categories is comparatively small, and given that there is no reason why a person who falls within the first category could particulary be expected also to fall within the second category (and vice versa) logic indicates that the third category must be very small indeed.  However, it is not merely logic which leads to that conclusion.  There is some evidence to suggest that, if anyone falls within the third category at all, it would be a very unusual case indeed. The mark TY.PHOO may have unfortunate connotations in the United States, but the very fact that it is such a successful and valuable brand in this country suggests pretty strongly that it has no significant unfortunate connotations here, quite conceivably due to its successful promotion and development as a mark for tea over the past century or so.  In any event, it seems to me unlikely, in the absence of any cogent evidence, or indeed any primary evidence at all, that the use of the sign TYPHOON in relation to kitchenware will trigger an unfortunate connection between the destructive force of typhoons and the TY.PHOO mark, if that association is not already present in light of the long-standing use of the mark TY.PHOO in any event.

I am fortified in this conclusion by the fact that, until closing speeches, Premier relied through Mr Thomas not only on the adverse connection with the destructive force of typhoons, but also with the allegedly detrimental connection with the Orient generally.  I have to say that this appeared to me to be a somewhat fanciful concern even when the case was opened and, by the time that Mr Thomas’ cross-examination had been completed, it seemed to me to be an argument which had no prospect of success, and one which Mr Arnold was therefore well advised to abandon.  I mention it because it illustrates that the proprietor of a well known and very valuable brand can persuade itself, honestly but misguidedly, of the detrimental effect on that brand of the use of anther sign, in circumstances where, on analysis, that concern can be shown to be misconceived.  That has happened, effectively admittedly, in the present case, at least so far as an allegedly detrimental connection with the Orient is concerned.  In my judgment, it has also happened in connection with the allegedly detrimental connection with the destructive power of typhoons.

Accordingly, I reject Premier’s case, in so far as it is based on tarnishing.  I reach that conclusion without taking into account the fact that the degree and extent of association in the minds of those members of the public who would associate TEL’s use of the TYPHOON sign with TY.PHOO would not be particularly extensive, in the sense that it would be more a matter of playing with words than anything else.  However, it is right to add that the comparative shallowness of the association reinforces the conclusion I have reached.

Detriment: Blurring
Premier’s contention in this connection is that TEL’s use of a sign, TYPHOON, which is very similar visually, and even more similar aurally, to the TY.PHOO mark, in relation to kitchen-related products “inevitably and insidiously erodes” the uniqueness of the TY.PHOO mark in relation to tea.

As mentioned, I accept that, by virtue of the reasonably close similarity between the word and the mark and the rather more tenuous similarity between kitchenware and tea, there will be members of the public who will associate the sign with the mark.  However, I do not consider that Premier has made out a case for contending that this association can properly be said to be “detrimental to the distinctive character or repute of the ... mark”.

First, and most importantly, it does not appear to me that the existence of the association in the minds of a limited proportion of members of the public would result in a “lessening of the capacity of [the TY.PHOO] mark to identify and distinguish goods”, namely tea, to quote from section 45 of the Lanham Act.  Nor do I consider that it would impinge upon “the position of exclusivity [Premier] acquired through large expenditure of time and money” or “could impair the originality and distinctive character of [the TY.PHOO] mark”, to quote from QUICK [1959] GRUR 182.  As I have mentioned, the mere fact that the way in which the sign is used by TEL may give rise to an association between the design and the mark in the minds of some members of the public is, in my judgment, simply not enough on it own to enable the proprietor of the mark, however well known and valuable it may be, to invoke Section 10(3).

In a passage in Mostert on “Famous and well known Trade Marks” (1997), cited by Mr Arnold, the concept of “blurring”, is described in these terms at pages 58-59:

“If, for example, the TIFFANY mark has become well-known in connection with jewellery, and it is used on a multiplicity of other goods such as chocolates, clothing, a motion picture house, and a restaurant, the likelihood that the TIFFANY mark will still exclusively call to mind its owner’s jewellery products becomes increasingly diminished.”

In agreement with Mr Bloch, on the evidence and arguments I have heard, I have no reason to suppose that anything that TEL is doing in connection with its use of the TYPHOON sign will have the consequence that “the likelihood that the [TY.PHOO] mark will still exclusively call to mind its owner’s [tea] becomes increasingly diminished.”  The sign and the mark in the present case are not the same, and there is no likelihood of confusion between them, and nothing in any evidence called on behalf of Premier, or indeed on behalf of TEL, suggests any likelihood of damage to the exclusiveness of the TY.PHOO mark in relation to tea, save the concerns expressed by Mr Thomas which I do not accept as justified.  As I have already observed, his responsibility is such that it is not surprising if he over-sensitive on this score.

In this case, while I consider that there would be an association in the minds of some members of the public, I am also of the opinion that the proportion of people who would make that association would be small, and that the nature of the association would be such as to involve little more, or indeed perhaps no more, than playing with words.  Largely because of the visual and even greater aural similarity between the word and the sign, and, albeit to a much lesser extent, because of the more tenuous connection between the goods for which TEL uses the sign and tea, there are some people who would make an association between the sign and the mark although it is a sort of obvious word-play or word association.  However, I am unconvinced that, even if one concentrates on the people in whose minds the association is made, there would be any significant effect, or even any significant potential effect, on the commercial value, force and effect of the ‘123 Mark (including the differentness of that mark).  The only conceivable group, or perhaps sub-group, whose minds could be said to be effected in such a way as to have any significant potential for such a detriment effect would be those who make the association not merely because of inherent similarity of the sign of the mark, but also because of the connection between the goods for which the sign is used and tea.  I consider that, in the context of the run of customers as a whole, this sub-group really can be treated as de minimus.  Even if that were not right, I do not accept that, even in relation to people falling within this sub-group, the existence of the association between the sign and the mark would cause any detriment whatever to the ‘123 Mark, or, indeed, to the differentness of the ‘123 Mark.

In expressing this view, I do not overlook the fact that Section 10(3) confers upon proprietors of trade marks, and particularly of well known trade marks, a type of protection not so far afforded to them under English law.  However, it appears to me that, while, as already indicated, I accept that the concept of dilution is a useful one, one must be careful of applying it too blindly.  If the fact that a sign is associated with a mark by a small but not insignificant proportion of members of the public and only to a limited and verbal extent, is enough to amount to “dilution” of the mark, then I consider that dilution is a concept which goes further than Section 10(3).  Indeed, to concentrate on the concept such as dilution shows the danger of departing from the words of the statutory provision too readily.

Secondly, this is not a case where confusion has been established.  As already mentioned, I am quite satisfied the confusion is not a necessary ingredient for establishing a claim under Section 10(3).  However, in a case such as this, where confusion has not been established, it is necessary for the claimant to find some other detriment before the case can be brought within Section 10(3).

If mere association between an allegedly infringing sign and a well established mark could in some circumstances be enough to constitute detriment to the mark within Section 10(3), then, unless it was simply enough to establish that a significant proportion of the public would be likely to make the association, I would hold in the present case that the degree of association was, in the circumstances of this case, not enough for Premier to succeed.  First, it appears to me that not only the proportion of members of the public who associated with the TYPHOON sign, as used by TEL, with the TY.PHOO mark and/or Premier’s tea being comparatively small, but the association would not be a particularly significant one.  Secondly, there would be no confusion between the sign and the mark.  Thirdly, the damage alleged by Premier would not be of the sort discussed and established in cases such as Lucas Bols or VISA.

The fact that Premier’s case involves no allegation of confusion is certainly not fatal to its case under Section 10(3); the fact that Premier cannot show that TEL’s use of the sign TYPHOON has diluted the reputation of the mark, as opposed merely to the differentness of the mark, is not fatal to Premier’s case under Section 10(3); the fact that only a small proportion of members of the public will make the association between the sign and the mark is not of itself fatal to Premier’s case under Section 10(3); the fact that those members of the public who make the association will not do so to any substantial effect may not on its own be fatal to Premier’s case under Section 10(3); the fact that Mr Thomas, tendered by Premier as a witness of fact and an expert witness, accepted that members of the public are not going to have any greater difficulty in picking TY.PHOO tea from the shelves in the supermarket, is not fatal to Premier’s case under Section 10(3).  However, when one takes all these facts together, and bears in mind that there is no other detriment which Premier can identify as a result of TEL’s use of the sign TYPHOON on its kitchenware, I cannot accept that the effect of Section 10(3) is nonetheless to enable Premier to establish that TEL infringes the ‘126 Mark its use of the TYPHOON sign.

REVOCATION: SECTION 46/ARTICLES 10, 12 AND 13
Introduction
There appears to be no direct assistance from the ECJ, or from any Court of Record in this country, as to the meaning and effect of Section 46.  Accordingly, the law on this topic appears to be at an even earlier stage of its development time than in relation to Section 10(3).

In the present case, TEL’s application for revocation of the defensive marks is on the basis that neither of those marks have “been put to genuine use in the United Kingdom by [Premier] or with [its] concerns in relation to the goods ... for which it is registered and there are no proper reasons for non-use”.  Because the 1994 Act has no equivalent to Section 27 of the 1938 Act, paragraph 17(2) of schedule 3 contains the following transitional provision, which is applicable in the present case:

“No ... application for the revocation of an existing registered trade mark registered by virtue of section 27 of the 1938 Act (defensive registration of well-known trade marks) may be made until more than five years after the commencement of this Act.”

On behalf of Premier, Mr Arnold contended that TEL’s present application must be made under Section 46(1)(b), rather than Section 46(1)(a), and I did not understand Mr Bloch to contend otherwise.  It may be that the point is academic, but it is right to record my agreement in that contention.  First, it appears to me to the best way of reconciling Section 27 of the 1938 Act, Section 46(1), and paragraphs 17(2) of schedule 3, as a matter of language and concept. Secondly, it seems unlikely that the legislature can have intended that an application for revocation of a mark registered in, say, 1950 could succeed on the basis of there had been no use of the mark until, say, 1957, even though the use of the mark thereafter had been considerable.  Such an application may be difficult to determine, and could be very unfair if it resulted in revocation of the mark; so far as difficulty is concerned, there are obvious problems in investigating after 1994 what use was made of a mark from forty years ago; as to unfairness, it would seem quite wrong that a mark should be revoked in circumstances, over more than thirty years, without any reason to think that the mark was vulnerable, the proprietor had expended substantial effort and money on building up the reputation of the mark, only to find it liable to revocation because of a change in the law more than thirty-five years after he started building up the reputation of the mark.

It therefore follows that TEL’s application for revocation of the defensive marks is based on the contention that there has been no use as contemplated by Section 46(1)(b) of either of the defensive marks for the period of five years immediately preceding the date of the application to revoke, 8th November 1999.  The issues raised by the revocation application, in relation to each of the defensive marks, appear to me to be as follows:

1.	Has there been a use of the type contemplated by Section 46(1) (which I shall call the “stipulated use”) of each of the defensive marks during the five year period?

2.	If so, has the stipulated use been limited to certain goods, so that there is still a case for revocation in relation to some of the goods for which the defensive marks are registered?

3.	If a case of complete or partial revocation has otherwise been made out for either or both of the defensive marks, is there a discretion whether or not to revoke, and if so, how should that discretion be exercised?

I propose to consider those three questions in turn.

The alleged stipulated use of the defensive marks
It is convenient first to set out certain matters which are either agreed or, at least in my judgment, are not controversial.  First, for what it is worth, the onus of establishing the stipulated use of each of the defensive marks is on Premier; that follows from Section 100 which provides:

“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.”

Mr Arnold suggested that the evidence which Premier seeks to rely on to support its case on the specified use may be incomplete through no fault of Premier.  In this connection, the first occasion on which TEL raised the question of the use of the defensive marks was less than five weeks before this hearing began, and therefore, Mr Arnold said, Premier has not had much time to collate its evidence on this issue.  I am not very impressed by this argument.  I accept that, in the normal course of events, Premier might have expected to have a significantly more than one month to carry out its investigations into this sort of allegation.  However, Premier is a very substantial company, and I have no doubt that it employs a large number of competent individuals, and there is, to put it at its lowest, no reason to think that it does not keep efficient records. Additionally, it has had the benefit of the advice of experienced solicitors and counsel.  Furthermore, I presume that, if there was real concern as to whether or not the investigations relating to the use of the defensive marks had not been completed, they would have continued up to the beginning of the trial, and indeed during the trial. Nonetheless, there has been no suggestion of any records having been found which show, or even suggest, that there may be more evidence on this topic within Premier’s records or control than was produced in these proceedings.

As I have mentioned in the first section of the second part of this judgment, it is clear that the TY.PHOO mark has been used in relation to a number of products (which I have called “the Goods”) some of which are directly connected with tea (e.g. tea caddies and tea pots), some of which are rather less connected with tea, but can be said to be indirectly so connected (e.g. milk jugs, sugar bowls, biscuit barrels, mug trees and trays) and some of which have a plainly more tenuous connection with tea, albeit that they do have a connection with the kitchen (e.g. tea towels, aprons, storage jars, memo boards, cafetieres and drinking glasses).  As also mentioned, with the exception of a tea caddy sold by a third party with Premier’s licence for no consideration, and of mugs and a wooden mug tree marketed as a special offer in 1997, all the Goods are given away by Premier.  It is also agreed between the parties that the use of the TY.PHOO mark on the Goods is intended to promote TY.PHOO tea, rather than the Goods themselves.

When discussing the use of the mark in relation to the Goods, Mr Arnold and Mr Bloch used the word “genuine”.  It may be rather pedantic, but I am not sure that that word is helpful in the present context, which is why I have adopted the word “stipulated”.  It seems to me that “genuine” carries with it a contradistinction to “colourable” or, possibly, “de minimis”.  In so far as it may be suggested that the use of the mark TY.PHOO in relation to any of the goods is not “genuine” in either of those senses, I reject it.  I have little doubt but, that, whether one compares the total number of the Goods in quantity or value with the total number of packets of TY.PHOO tea sold over the past five years, the former pales into insignificance, but that does not appear to assist any argument that the use of the mark in relation to the Goods was not “genuine” in the sense that I understand that word.   Although it was a decision involving somewhat different facts, it appears to me that this view is consistent with the decision in ELLE Trade Marks [1997] 529 at 536-537.  In that case, an advertisement in the single edition of a magazine advertising a particular product (soap) under a particular mark (ELLE) was held to be “a genuine use” within Section 46(1), even if it did “not produce a single sale”, but I note that Lloyd J described his decisions as “fairly near the borderline”.

Mr Bloch’s real point on behalf of TEL, as I see it, is that, even though the use of the mark on the Goods was genuine, that use was not “in relation to” the Goods.  His contention was that use of the mark in relation to goods does not simply mean affixing the mark to the goods in question, and, just as there can be stipulated use without the mark being affixed to the goods in question, so there can be cases where the mark is affixed to goods which does not involve it being used “in relation to” those goods. An example of the former type of case could be where fruit is displayed on a shelf and the shelf indicates the brand of fruit: so, Mr Bloch contended, use of the TY.PHOO mark on a tea pot for instance, is used not to “in relation” to the pot, but is “in relation” to the tea which may be inside.  An example of the second case would be the use of the TY.PHOO mark on an advertising hoarding: that is not use of that mark “in relation” to the hoarding.

As a matter of principle, it appears to me that there is obvious force in Mr Bloch’s argument.  As the passage I quoted earlier in the judgment of the ECJ in Canon [1999] RPC 117 at 133 makes clear, “the essential function” of a trade mark is “to guarantee the identity of the origin of the marked product to the consumer”.  In this connection, the ECJ cannot have had in mind that its observation would be taken literally, so as to apply in all cases simply to the physical object to which the mark was attached, such as the shelf in the case of the fruit or the advertising hoarding in the case of the tea, to refer back to Mr Bloch’s two examples.  However, as Mr Arnold pointed out, the present case is not really analogous to those two examples, because the consumer cannot, and obviously knows that he cannot, acquire the shelf or the hoarding, whereas in the present case he not only can acquire the relevant Goods, but he can use them for his own purposes, and can do so wholly independently of TY.PHOO tea. Accordingly, while Mr Bloch’s examples make good his point that the mere fact that a mark is attached to a certain physical item does not mean that it is used “in relation to” that item, it does not really assist TEL’s case further than that in relation to the alleged use of the mark “in relation to” the Goods in this particular case.

In my judgment, when considering whether the mark has been used “in relation to” goods within the meaning of Section 46(1), it is right to go back to the nature and purpose of a trade mark, and in this connection the observations of the ECJ in Canon are of assistance, as indeed, is the guidance given by the Court of Appeal in Bach Flower Remedies in the passages which I quoted.  Although Mr Arnold took issue with this, contending that what mattered was not how members of the public perceive the usage, but “whether the mark is in fact acting as an indication of quality control”, it appears to me that the difference between the two approaches is more apparent than real.  In a sense, the two ways of looking at the matter can be conflated: does the use of the TY.PHOO mark on the Goods convey to members of the public that the source of the well known TY.PHOO mark or tea is responsible for, and in some way guarantees, the quality of the Goods?  To revert to Mr Bloch’s two examples, if the shelf collapsed, or was in a condition such as to damage the fruit, or if the tea-advertising hoarding fell down or failed in some other way, no sensible member of the public would think that this reflected badly on products marketed under the brand of the fruit concerned or products under the TY.PHOO mark.

In the present case,  consider that Mr Bloch is right in the sense that people would understand the mark on the Goods to be recommending TY.PHOO tea, but that Mr Arnold is right in saying that it does not follow that members of the public seeing one of those Goods would not assume that it has been marketed by, or with the approval and licence of, the person responsible for the marketing TY.PHOO tea, i.e. Premier.  Indeed, in my judgment, as a matter of common sense and on the evidence I have heard, it seems to me that that is more likely to be the case than otherwise.  As far as the evidence is concerned, in the great majority of cases, the Goods are obtained by members of the public from a source which appears to be Premier itself. Further, in the case of the majority of the Goods, no brand name other than TY.PHOO is to be found on the Goods.  The fact that in all cases, with the two exceptions of the tea caddy sold under licence and the 1997 special offer of the mug tree and mugs, the Goods were given away, is a factor which gives real pause for thought so far as Premier’s case is concerned.  In my judgment, it brings this case near to the borderline (as in ELLE Trade Marks, albeit for somewhat different reasons) but in the end it is not sufficient to bring it over the line.  First, although it pales in comparison with the use of the mark in relation to tea, the use of the mark TY.PHOO in relation to the Goods over the past five years does appear to have been reasonably substantial; secondly, the use has been genuinely in relation to the Goods, in the sense that they are supplied in part for their own intrinsic merit, unlike an advertising hoarding or a shelf; thirdly, “giving away” involves a slightly narrow view, in the sense that Premier were clearly not indulging in charitable activities, and hoped therefore to profit indirectly from the manufacture and distribution of the Goods; fourthly, although very limited, there is evidence of two types of actual sale of the Goods, one of which was by Premier itself; fifthly, paragraph 28 of the judgment of the ECJ in Canon [1999] RPC 117 at 134 seems to me to suggest that trade mark use involves use in connection with goods in the course of trade, and, while in the main given away, the way in which, and the purpose for which, the Goods are distributed by Premier appears to me to fall within that concept; sixthly, the breadth of the sort of activities which fall within the requisite use seems to me to be underlined by the reference in Section 46(1) to the “consent” of the proprietor being sufficient.

In the event, therefore, at least in so far as use of the mark TY.PHOO on the Goods is concerned, TEL’s case on non-use of the two defensive marks fails.  I should mention two other matters.  First, the construction of Section 36(1) is not assisted by reference to Article 10(1): the only difference is that the article uses the expression “in connection with” rather than “in relation to”; I do not perceive anything hanging on that distinction.  Secondly, although Mr Bloch referred in this connection to Kodiak Trade Mark [1990] FSR 49, I do not consider it safe to rely upon a decision relating to bona fide use of a trade mark under the 1938 Act, particularly in connection with the question of revocation, where the wording and principles of the 1994 Act are plainly different.  I note the same view was taken by Park J in Magic Ball Trade Mark (unreported 23rd June 1999).

Revocation or partial revocation
Although I have found that the use by, or permitted by, of Premier of the TY.PHOO mark in relation to the Goods constitutes trade mark use, that is not the end of the matter in relation to the defensive marks.  It will be recalled that the Goods are tea caddies, tea pots, mugs, tea towels, milk jugs, sugar bowls, biscuit barrels, cups, mug trees, aprons, storage jars, memo boards, tea cosies, trivets, tea pot stands, trays, cafetieres and drinking glasses.  It will also be recalled that the ‘270 Mark is registered in respect of “hand tools and hand implements, all for domestic use; and cutlery, forks and spoons”, and that the ‘276 Mark is registered in respect of “domestic utensils and containers  ...., combs, brushes ... sponges and instruments ... and materials for cleaning; and glassware, porcelain and earthenware...”.

Mr Arnold raised the question as to how Section 46(5) is to be applied once one concludes, as I have done in relation to the ‘276 Mark, that it has been used in respect of some of the items for which it is registered, but not in respect of others.  It appears to me that one simply looks at the list of items on the register and asks oneself, in relation to each such item, whether or not the mark has been used “in relation to” or “in connection with” that item during the past five years.  If the answer is in the affirmative, then the mark can remain registered in respect of that item; if the answer is in the negative then, subject to any question of discretion, the registration is revoked in respect of that item.  One does not dig deeper and, as it were, narrow a particular category of item to reflect the extent of the goods to which the mark has been used.  Thus, if the only “domestic ... container” in connection with which the mark had been used was a red tea caddy, it seems to me that the registration should remain in respect of domestic containers: it should not be cut down to, for instance, containers for food, containers for tea, tea caddies, or red tea caddies. First, as  matter of principle, it appears to me that one should take the registration as one finds it.  Secondly, as a matter of practice, if the law were otherwise it would lead to uncertainty (as indicated by the example I have just given) and a potential welter of applications for partial revocation.  I note that the approach which I favour appears to have been adopted in the Trade Marks Registry in ZIPPO Trade Mark [1999] RPC 173.

As at present advised, I find it difficult to see which of the Goods naturally fall within any of the types of product for which the ‘270 Mark is registered.  Although use of each of the Goods can fairly be said to involve the hand in some way, it does not seem to me that any of them can fairly be said to be a “tool” or an “implement”, although, of course, I readily accept that they are “all for domestic use”.  Nor do I think that any of the Goods could fairly be described as “cutlery, forks [or] spoons”.  Accordingly, it appears to me that, even on Premier’s case (which I have effectively accepted) on trade mark use as a matter of fact, I do not consider that there has been any use of the TY.PHOO mark in relation to any of the products for which the ‘270 Mark is registered.

The position with regard to the ‘276 Mark is different.  In light of the discussion in the previous section of this judgment, I am satisfied that the mark has been used in relation to “domestic utensils and containers”: there is plainly no difficulty about that.  Equally, I am satisfied that there has been the stipulated use of the mark in relation to “glassware, porcelain and earthenware”.  It also appears to me clear that there has been no use of the mark in relation to “combs [and] brushes” or in relation to “materials for cleaning”.  The one difficulty, as I see it, is whether tea towels fall within the expression “instruments .. for cleaning”.  On balance, bearing in mind the list of items for which the ‘276 Mark is registered, the fact that tea towels are really used for drying kitchen and dining hardware, and the act that drying such hardware is the final part of the cleaning process, I have reached the conclusion that there has been use of the mark in relation to “instruments ... for cleaning”.

In these circumstances, subject to the final point, namely that of discretion, to which I now turn, it appears to me that:

1.	The ‘270 Mark should be revoked;

2.	The ‘276 Mark should be revoked, but only in relation to “combs, brushes included in class 21, sponges ... and materials for cleaning”.

The question of discretion
The first question is whether there is a discretion at all.  If one confines oneself to Section 46 itself, it appears to me that there are contrasting indications.  On the one hand, the governing words of Section 46(1) provide that the registration “may be revoked”, which tends to suggest a discretion, particularly when one contrasts that working with Section 46(3) which provides that in certain circumstances the registration “shall not be revoked”.  Secondly, Section 46(1)(d) provides for revocation where the use made of the mark “is liable to mislead the public”: if such misleading has only recently occurred, has been put right, and does not occur in the future, it could be said to be rather surprising if the Court had no discretion but to revoke.  Neither of these points is particularly powerful: the word “may” is perfectly capable of meaning “must” particularly in a context such as Section 46(1), and the contrast between “may” and “shall not” in the two sub sections is not very difficult to explain even if Section 46(1) is mandatory.  If the Court were to have no discretion where section 46(1)(d) applied, while might be harsh in some cases, it would not be particularly surprising.

The contention that the Court should have no discretion is supported by the absence of any guidance in Section 46, or elsewhere, as to how any alleged discretion is to be exercised.  Further, Section 46(1)(c), which provides for revocation where the mark “has become the common name in the trade for a product ... for which it is registered” can be said to suggest that revocation should be automatic.  Additionally, Section 46(5) is phrased in such a way as to suggest that “where grounds for revocation exist” revocation will occur.  It can also be said that it would seem a little odd if there were a discretion, giving the express exceptions at the end of Section 46(1)(a) and (b), with their reference to “no proper reasons for non-use”. Again, I cannot pretend that any of these points is particularly powerful.  The legislature frequently gives the Court a discretion without providing any guidance as to how that discretion is to be exercised.  It might be appropriate for the Court to have a discretion whether or not to revoke even in a case where Section 46(1)(c) applies.  Section 46(5), it can be said with force, is really envisaging a case where the Court concludes that it should revoke, and that begs the question as to whether it is obliged to revoke.  Although the closing words of Section 46(1)(a) and (b) clearly have some relevance, it is perfectly possible for the Court to have a residual discretion nonetheless.

The position is no clearer if one looks at the English decisions.  In a number of cases, it appears to have been assumed that there is a discretion (e.g. in ELLE [1997] FSR 529 at 532) and in only two cases, both in the Trade Marks Registry, has the point been argued.  In INVERMONT Trade Mark [1997] RPC 125, Mr M J Tuck held that there was a discretion (see at 130-132); however, in ZIPPO [1999] RPC 173, Mr S J Probert, after considering that decision, took a different view (see at 183-184).

It is appropriate to have regard to the provisions of the Directive.  Article 10(1) provides that, in the event of non-use for five years:

“The trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use”.

Rather confusingly, Article 11, which is headed Sanctions for Non-use of a Trade Mark ...”, seems to be concerned largely with the circumstances in which a “trade mark may not be declared invalid”, and it is Article 12, headed “Grounds for Revocation”, which is really in point.  Article 12(1) provides:

“A trade mark should be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods ... in respect of which it is registered ...”.

This is the genesis of Section 46(1)(a) and (b); Article 12(2) which also refers to a trade mark being “liable to revocation” has been implemented as Section 46(1)(c) and (d).

While the words “shall be subject to the sanctions” in Article 10(1) suggests that the sanction in question, which must be revocation, is mandatory, the way in which the sanction is worded in Article 12(1), namely “liable to revocation” can fairly be said to be ambiguous; indeed, if it is intended to confer a discretion, it does not seem to me to be inconsistent with the apparently mandatory words of Article 10(1), because there is nothing inconsistent in being subject to a sanction which involves a risk of a penalty.  At one time, I wondered whether Article 11(3) provided assistance.  It states:

“... [W]here a counterclaim for revocation is made, any Member State may provide that a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked pursuant to Article 12(1).”

However, on reflection it appears to me that this provision is consistent with either view of Article 12(1).

Article 13, both in purpose and wording, is closely reflected by Section 46(5), and therefore it can be said, albeit to my mind with limited force, that it tends to support the view that there is no discretion.

I do not find it surprising that two members of the Trade Marks Registry came to different conclusions on this difficult point.  With diffidence, I have reached the conclusion that the view expressed in ZIPPO [1999] RPC 173, namely that there is no discretion, is to be preferred.  For reasons I have given, I do not find any of the reasons supporting either view particularly strong.  However, it does seem to me somewhat odd if the legislature has specifically provided for no revocation in the event of there being good reason for the non-use, but nonetheless has left the Court with a residual discretion, particularly without giving any indication as to what factors should be taken into account when exercising that discretion.  Further, consideration of the combined effect of Section 46(1)(c) and (d) suggest to me that it is more likely that the legislature intended that those two paragraphs were to represent mandatory, rather than discretionary, grounds for revocation.  Section 46(5) and Article 13 tend to point in favour of the conclusion I have reached.  The words “may” in Section 46(1) and “liable” in Article 12 are perfectly consistent with the concept of revocation being mandatory but only occurred in the event of an application being made.  I also bear in mind that it is not only a privilege for a person to be the proprietor of a registered trade mark, but it represents a monopoly: the Court should not be too ready to perpetuate a monopoly in favour of a person who has not done anything to promote or enjoy it for a period of five years.  Decisions of the ECJ to which I have referred show that a major purpose of the trade mark legislation is to protect those who have expended time, effort, ingenuity and money in disseminating a trade mark and building up goodwill in relation to it.  It seems to me that the observe of this approach is that  person who does not use a trade mark for five years or more should lose it.

However, it is right to consider Premier’s claim that I should exercise any discretion, that may exist, in its favour, in case this matter goes further.  Essentially, Mr Arnold’s contention that such discretion should be exercised in favour of Premier, was based on Premier’s intention to market the “tea paraphernalia” referred to by Mr Thomas in connection with the Millennium, and in particular from the Millennium Dome.  Such projected sales would be taking place just outside the five year period: as I have mentioned, that period ended at the beginning of November 1999, and the sales of the paraphernalia, namely tea caddies, glasses, tea towels, cups, mug, mug trees, teapots and kettles, will have started less than two months after that date.

In the event, the question of discretion appears to me to be academic, because all these items fall within the category of items for which the ‘276 Mark is and will continue to be registered, even if the items, which I have held should be deleted, are deleted from the register.  Nor as it as if Premier is intending to market products which are within the category of items for which the ‘270 Mark is registered.  In these circumstances, even if I had a discretion, I would not be prepared to exercise it in Premier’s favour, and, indeed, I doubt that Mr Arnold would be inviting me to do so.

Finally, it is right to indicate how I would exercise my discretion if I were wrong in rejecting TEL’s claim for revocation of the ’276 Mark in its entirety and I was also wrong in my view that there is no residual discretion.  In other words, how would I exercise my assumed discretion if, contrary to my views, there has been no stipulated use of the TY.PHOO mark in relation to items for which the ‘276 Mark is registered, and there would be a discretion in those circumstances not to revoke the ‘276 Mark (or indeed the ‘270 Mark).

I find that a difficult issue, not so much because I am proceeding on the assumption that I am wrong on two issues, but more because I find it difficult to identify on what basis the discretion should be exercised.  With that caveat, I should say that I would have been prepared to exercise my discretion in Premier’s favour.  First, even though it may not have been sufficient to be within the stipulated use on this hypothesis, Premier nonetheless have used the mark on a substantial number of items falling within the category of goods for which the ‘276 Mark was registered over a substantial period.  Secondly, within the five year period, Premier was well underway in its arrangements for manufacturing and marketing goods which are items for which the ‘276 Mark was registered, and “in relation to” which the mark is intended to be used.  Thirdly, the use of the mark in relation to these items will have started, and was for many months intended to have started, only just outside the five year period.  Fourthly, it does not seem to me that there is any prejudice to TEL (or indeed to Mr Battersby, who is also party to these proceedings) if the ‘276 Mark is allowed to remain on the register: Premier’s claim under Section 10(2) for infringement has failed.  Fifthly, while I appreciate that this is an assumption fraught with dangers because no other party is before me, I doubt that any other party will be detrimentally, let alone unfairly, affected if the ‘276 Mark remains on the register.  Sixthly, this is not a case where Premier have acted in any sense in an underhand way or incompetently, save, perhaps, not to have got going with their Millennium-related production a couple of months ahead of time.

It is right to add this.  If the question of whether or not the ‘276 Mark remains on the register were a matter of discretion, while I would permit the mark to remain on the register, I would require the deletion of those items from the registration which, at the end of the preceding section of this judgment, I have indicated should be deleted.  First, there has been no use of the mark o those items in any event; secondly, there is no intended use of the mark on those items.  It seems to me it would be quite wrong in the exercise of my discretion to allow the mark to remain on the register in respect of those items in these circumstances.

If I had discretion in relation to the ‘276 Mark, I would not permit it to remain on the register.  My reasons are effectively the same as those for deleting the items I have just been discussing in relation to the ‘276 Mark.

CONCLUSIONS AND REFERENCE TO THE ECJ
In these circumstances, my conclusions are as follows:

1. 	Premier’s claim for infringement under Section 10(2) is dismissed;

2.	Premier’s claim for infringement under Section 10(3) is dismissed;

3.	So far as TEL’s claims for revocation are concerned:
a.	The ‘270 Mark is revoked;
b.	The ‘276 Mark is not revoked, save to the extent of the reference to combs, brushes, sponges and materials for cleaning.

Not surprisingly, the question of a reference to the ECJ has been raised.  Initially, I was sympathetic to the suggestion, at least in relation to some of the issues on Section 10(3) and Section 46(1).  However, I would like further assistance on the point in light of my conclusions in this judgment.  So far as Section 10(3) is concerned, I have, in the main, accepted Premier’s submissions on the law, although I have found for TEL on the facts.  On revocation, by contrast, I have largely accepted TEL’s submissions on the law, but, at least if my understanding is correct, I have largely found for Premier on the facts.  Further, the question of a reference to the ECJ may be connected with the issue of a possible appeal to the Court of Appeal.