Reliance Water Controls Ltd v Altecnic Ltd

An applicant’s class number forms part of the application when the application is construed as a whole. Changing the specified class at the applicant’s request is therefore an amendment governed by section 39 of the Trade Marks Act 1994, even though classification also serves administrative purposes.

Section 34 does not independently authorise deletion of one class and substitution of another where the applicant seeks to preserve the original filing date. Such a change is permissible only if it corrects an error of wording or copying, an obvious mistake, or another correction within section 39(2), and does not extend the goods or services covered. A mistake is not obvious where the specified goods fall within the original class.

Altecnic applied to register CAREMIX for valves, identifying Class 7 and listing valves and related goods. It later asked the Trade Marks Registry to transfer the application to Class 11, where the goods fitted more appropriately, and the Registry accepted the amendment.

Reliance, whose competing application for the same mark had been filed later in Class 11, opposed the application. The Hearing Officer held that the change of class was ultra vires, but Laddie J allowed Altecnic’s appeal and directed that the application proceed in Class 11.

Reliance appealed. The central issue was whether changing the class number was an amendment governed by section 39 or merely a classification determination under section 34.

1. Appeal allowed. Lord Justice Mummery delivered the judgment, with Lord Justice Sedley and Lord Justice Kennedy agreeing. The order was amended so that the matter was remitted to the Registry with an effective filing date of 15 March 1997.
2. Altecnic’s original application identified the goods both by a list and by reference to Class 7. Although the words referring to all goods in that class were validly deleted under section 39(1), Class 7 remained part of the application.
3. The request to delete Class 7 and insert Class 11 was, in substance, an amendment of the application. The Registry’s description of the step as a transfer to the correct class did not alter its legal character.
4. Section 39(2) provided the applicable limits. The requested change did not correct the applicant’s name or address, an error of wording or copying, or an obvious mistake. The goods were capable of falling within Class 7, so the selection of that class was not obviously erroneous.
5. Section 34(2), which gives the Registrar final authority to determine the class in which goods fall, could not be used to amend the existing application and preserve its priority. A classification determination might instead precede a fresh application.
6. The class number remains relevant to construing the scope and meaning of an application, including where the specification is ambiguous. The application must be read as a whole. The court rejected the submission that the class number could be considered only when expressly incorporated into the specification.
7. The court declined to hear argument on the separate bad-faith issue under section 3(6). Altecnic was to reconsider its position, and any application to proceed in Class 7 was to be considered initially by the Registrar.

• Court of Appeal (Civil Division): allowed Reliance’s appeal from Laddie J and remitted the matter to the Trade Marks Registry with an effective filing date of 15 March 1997.
• Chancery Division: Laddie J allowed Altecnic’s appeal from the Hearing Officer, dismissed Reliance’s opposition and directed that the application proceed in Class 11.
• Trade Marks Registry: the Hearing Officer rejected the bad-faith objection but held that changing the application from Class 7 to Class 11 was ultra vires.