Silver Spring Mineral Water Company Limited v Concentrate Manufacturing

Date

15 February 2002

Legislation

Trade Marks Act 1938 ss. 7, 11, 12

Keywords

opposition; honest concurrent use

Counsel

Michael Edenborough, Colin Birss

Solicitors:

Briffa; Wragge & Co

Judge:

Lloyd J.

Court:

High Court (Chancery Division)

Reported:

unreported

Summary:

The applicant sought registration (under the Trade Marks Act 1938, since the application was made in early 1994) of the mark 'CHERRY UP' in respect of non-alcoholic beverages and preparations for making them, all being cherry-flavoured. This was opposed by the registered proprietor of the trade marks 'SEVEN UP' and 'CHERRY 7UP'. The latter mark was registered in 1992, but the applicant claimed to have been using his mark since at least 1986. At first instance, the Hearing Officer upheld the objection under section 11 of the 1938 Act that there would be likely to be confusion between the mark applied for and the opponent's mark. In so doing, he rejected the applicant's counterargument based on prior use under section 7 on grounds that there was insufficient evidence of use of the applicant's mark prior to 1988.

On appeal to the High Court, the Applicant sought to adduce further evidence. Permission was refused, because although there was a discretion in the appeal court to such evidence, not only did the new evidence fail substantially to remedy the deficiencies pointed out at first instance, but it could and should have been then adduced: Ladd v Marshall.

Decision:

The Court held that the mark applied for was confusingly similar to both of the opponent's marks, and went on to consider whether there was any scope for registration under section 12(2) of the Act, which permitted similar or identical marks to be registered where there had been honest concurrent use. In this case, the use of the applicant's mark was relatively small, so that even if honest use, the circumstances did not justify the registration of a confusingly similar mark.