Altecnic Ltd v Reliance Water Controls Ltd ('CAREMIX' trade mark)

Legislation

Trade Marks Act 1994 ss. 3(6), 34, 39
Trade Marks Rules 1994

Keywords

opposition; priority; change of class; obvious mistake in application; bad faith

Counsel

Iain Purvis, Simon Thorley QC, Amanda Michaels, Daniel Alexander

Solicitors

Field Fisher Waterhouse; Squire & Co; Treasury Solicitor

Judge

Kennedy, Mummery, Sedley LJJ

Court

Court of Appeal

Reported

[2002] RPC 34

Summary

Altecnic applied to register ALTECNIC CAREMIX and CAREMIX as a series of two marks in Class 7 for, inter alia, valves. However, they later requested that the Trade Mark Registry allow its application be amended to Class 11, Class 7 being inappropriate given the specification of goods. The Registry did so, accepted the application and advertised it accordingly. However, prior to the change of class, the opponent had applied for the same mark in Class 11 in respect of substantially the same goods, and argued that the applicant's change of class was ultra vires, since it had the effect of adding goods to the original application and which thus falls outside s. 39 of the Act. The opponent further argued that to maintain the application in the original class would constitute bad faith under s 3(6) Trade Marks Act 1994, and therefore claimed priority for their own application.

Altecnic argued that the class mentioned in the original application was an obvious mistake, and so could be amended under section 39(2)(c). The system of classes existed for administrative convenience only, so that the change of class did not operate to add goods to the specification. However, the request for amendment was not submitted on form TM21 as required by r.17 of the 1994 Trade Mark Rules (now replaced with the 2000 Rules). Alternatively, they argued that this was a determination of class by the Registrar under section 34.

Decision

The Court of Appeal held that the amendment was not an obvious mistake, as valves could also fall within Class 7. Nor was this a case falling under s.34 of the Trade Marks Act 1994, as no application for a determination under that section had been made. Accordingly, the application could not be amended. The Court declined to hear argument on bad faith under s.3(6).