Osaji-Umeaku & Anor v National Foundation For Teaching Entrepreneurship Inc

Under the trade mark legislation, a person who brings goods bearing another party’s mark into the United Kingdom with that party’s permission thereby establishes use by, and supports the ownership claim of, the overseas proprietor. Such use does not give the importer a bona fide claim to ownership. A claim to continue using the mark under an agreement is a different issue from ownership of the mark. An appeal founded on provisions of the repealed Trade Marks Act 1938 is misconceived where proceedings are commenced after repeal.

The appellant sought revocation of three United Kingdom trade marks registered to an American charitable organisation. He claimed that he was their proprietor because he had first used the marks in the United Kingdom after receiving permission to bring the respondent’s goods and teaching materials into the country.

Ferris J dismissed the originating summons. The appellant appealed, also challenging matters outside the originating summons and relying on provisions of the repealed Trade Marks Act 1938. The central issues were whether the statutory grounds were available and whether the appellant had a bona fide claim to ownership.

1. Appeal dismissed. The appellant’s proceedings were misconceived because they relied on the Trade Marks Act 1938, which had been repealed before the originating summons was issued. The Court nevertheless considered the merits on the assumption that corresponding provisions of the Trade Marks Act 1994 had been intended.
2. The power to rectify the Register was contained in section 32 of the 1938 Act. Sections 3, 5(2) and 13 did not provide grounds for revocation of registered marks. The remaining statutory arguments concerned registrability under sections 11 and 12 and whether the respondent was the bona fide proprietor.
3. The appellant’s reliance on AL BASSAM Trade Mark [1995] RPC 511 was misplaced. That case concerned a different factual situation and did not support ownership by a person who had brought goods into the United Kingdom bearing the respondent’s mark with the respondent’s permission.
4. Permission to import or use goods bearing the mark established use by the respondent in the United Kingdom and supported its claim to proprietorship. It did not confer proprietorship on the appellant. Any contractual entitlement to continue using the marks or to receive further supplies was a separate question and was not determined in these proceedings.
5. The appellant had acted on behalf of the Abraham and Sarah Foundation when applying for the mark. The judge’s factual findings were supported by the evidence. The appeal was dismissed with costs assessed at £3,500, and leave to appeal to the House of Lords was refused.

• High Court of Justice, Chancery Division: Ferris J dismissed the originating summons on 30 October 1997, with costs.
• Court of Appeal (Civil Division): The appeal was dismissed with costs assessed at £3,500. The court refused leave to appeal to the House of Lords.