Oral-B Laboratories, Re Trade Marks Act

Under the Trade Marks Act 1938, an invented word may contain a subtle allusion to the character or quality of the goods, but it must not be an obvious meaning, a mere amalgam of existing words, or a minor variation of an existing word which still conveys that word’s idea. Whether a mark is such a variant, and whether an ordinary word directly refers to the goods, are principally matters of impression. An appellate court should give special weight to concurrent findings by an experienced hearing officer and specialist judge. Registration in Part B is discretionary; use is not invariably required, but absence of use may show that a case is not borderline. A mark refused registration under section 9 cannot provide the earlier mark needed for an opposition under section 5(2) of the Trade Marks Act 1994.

Gillette sought registration of CONTURA for toothbrushes. The application was governed by the Trade Marks Act 1938 under the transitional provisions of the Trade Marks Act 1994. Wisdom opposed it. The hearing officer accepted that CONTURA was an invented word and dismissed the opposition, but Laddie J allowed Wisdom’s appeal, finding CONTURA visually similar and phonetically almost identical to “contour”.

In associated proceedings, Gillette opposed Wisdom’s application to register WISDOM CONTOUR under section 5(2) of the Trade Marks Act 1994, relying on CONTURA as an earlier trade mark. The appeals concerned registrability under section 9, the possible Part B discretion under section 10, and the consequential opposition.

1. CONTURA application. The appeal was dismissed. The six-part classification used for invented words was not statutory text, but reflected the underlying principle. A newly coined word with no obvious meaning may contain a subtle allusion to the goods. It is not registrable as an invented word where it is merely a variant of an existing word and still conveys that word’s idea. The court considered Eastman Photographic Materials Co v Comptroller-General [1898] AC 571, Re H N Brock & Co [1910] 1 Ch 130 and Philippart v William Whiteley Ltd [1908] 2 Ch 274.
2. The concurrent conclusions of the hearing officer and Laddie J that “contour” had a direct reference to the character or quality of toothbrushes were entitled to special respect. The court was not persuaded that those conclusions were wrong. It preferred the judge’s view that CONTURA was visually similar and phonetically almost identical to “contour”, and held that CONTURA was not registrable under section 9 of the Trade Marks Act 1938.
3. The court declined to decide whether it had power under section 18(7) to direct registration in Part B on an appeal from a Part A opposition. Assuming that such power existed, it upheld the refusal to exercise the discretion. The mark was outside the borderline cases in which Part B registration might be appropriate, and there was no acquired distinctiveness through use.
4. WISDOM CONTOUR application. The opposition under section 5(2) of the Trade Marks Act 1994 depended entirely on CONTURA being registrable and therefore an earlier trade mark. Since the CONTURA appeal was dismissed, the ground of opposition disappeared and the related appeal was also dismissed.

The appeals were dismissed with agreed costs of £9,000, divided equally between the two matters if there were separate orders. Permission to appeal to the House of Lords was refused.

• Court of Appeal (Civil Division): appeals from two orders of Laddie J made on 15 July 1999; both appeals dismissed with costs. Permission to appeal to the House of Lords refused.
• High Court of Justice, Chancery Division: Laddie J allowed Wisdom’s appeal concerning CONTURA and refused, on the assumed existence of a power, to direct Part B registration. The related WISDOM CONTOUR opposition depended on CONTURA being registrable.
• Hearing officer: Mr M Knight dismissed Wisdom’s opposition to CONTURA, holding that the mark satisfied section 9.