Wyeth v Knoll Aktiengesellschaft

Date

9 May 2002

Legislation

Trade Mark Act 1994 ss. 3(6), 32, 46, 47, 54
Trade Marks (International Registration) Ord 1996 (SI 1996/714)
Sch. 3 Trade Mark Rules 2000

Keywords

Bad faith; declaration of invalidity; scope of goods

Counsel

Ms Anna Carboni, Douglas Campbell

Solicitors

Linklaters, Briffa (Islington)

Judge

Neuberger J.

Court

High Court (Chancery Division)

Reported

[2002] EWHC 899 (CH), [2003] RPC 10

Summary

The Claimant was seeking a declaration of invalidity in relation to one of the Defendant's pictorial marks that had been registered in respect of a wide range of goods and services in classes 5, 16 and 41, save in respect of pharmaceutical products for the treatment of obesity where the Defendant could show actual use of the mark.

The Claimant alleged that the Defendant had sought inappropriately wide registrations in relation to their present and intended use of the mark. The application to register the mark could therefore be considered to be contrary to the requirement for a bona fide intention to use the mark in respect of the specified goods and services as required under section 32(2) of the Trade Mark Act 1994. As such the registrations should be treated as having been made in bad faith and therefore liable to (in this case partial) revocation. The Defendant brought an action to strike out the claims.

Decision:

Neuberger J. held that any attempt to define bona fide for the purposes of s.32(2) would be "…dangerous, indeed, I think, impossible", and on reviewing the evidence presented concluded that he could not, at least for the purposes of the present strike out hearing, find that the Defendant's conduct was covetous or lacking in good faith.

In respect of the issue of bad faith under s.3(6) the judge considered whether a very wide specification of goods/services would amount to bad faith per se (as it would have done under the 1938 Trade Mark Act). He proceeded on the basis that bad faith should be considered to include both dishonest conduct and following Lindsay J. in Gromax Plasticulture Ltd v. Don & Low Nonwovens Ltd [1999] RPC 367, dealings that "…fell short of acceptable commercial behaviour". As there was no evidence to support such a finding in respect of class 5 that claim was dismissed. However, as only limited evidence was available at the present hearing in respect of the class 16 and 41 registrations these claims could proceed to trial.