Joop v Canadelle Ltd Partnership of Canada (WUNDERKIND trade mark)

Date

28 November 2001

Legislation

Trade Marks Act 1994 s. 5

Keywords

registration; opposition; appeal; additional evidence

Counsel

Madeleine Heal, Mark Vanhegan

Solicitors

Herbert Smith; Freshfields

Judge

Pumfrey J.

Court

High Court (Chancery Division)

Reported

[2002] RPC

Summary

The applicant sought to register the trade mark WUNDERKIND, which was opposed on grounds of the prior registration of the marks WONDERBRA and WUNDERPANTS. At first instance, the Hearing Officer cut down the range of goods in relation to which the mark could proceed to registration. He held that since the mark sought would not be understood by the average consumer as meaning 'child prodigy', but rather merely as the laudatory prefix 'wunder-' or 'wonder-'. Accordingly, the marks were confusingly similar.

On appeal, the applicant sought to introduce new evidence as to the way the mark sought would be understood by the public. The judge ruled this evidence inadmissible. In the first place, it could have been obtained with reasonable diligence for the Hearing Officer, and secondly, evidence that the word 'wunderkind' had entered the English language was not in any case conclusive that it would not still be understood as a compound of the English words 'wonder' and 'kind': Ladd v Marshall applied.

Decision

Given this ruling, the Hearing Officer had clearly been entitled to reach the conclusion he had, and since the appeal was in the nature of a review rather than a rehearing, it was not open for the judge to interfere with that decision: South Cone Inc v Bessant [2002] RPC 19 (upheld [2003] RPC 5).

This case was followed in AKT Obohtohestov Zakritogo Tipa Torgovy Dom Potomkov v. UDV North America [2002] EWHC 2911.