Bessant & Ors v South Cone Incorporated

An appellate court reviewing a specialist trade-mark hearing officer’s multifactorial evaluation should show real reluctance to interfere. It may correct a distinct and material error of principle, but it must not substitute its own view merely because it would assess the written evidence differently.

For likelihood of confusion under Trade Marks Act 1994, the comparison must reflect the evidence concerning marks, goods, trade channels and relevant consumers. A tribunal may use ordinary knowledge, but it cannot fill a material evidential gap by intuition. A passing-off objection also fails where the opponent proves goodwill only in a particular product and does not establish likely deception in relation to the applicant’s proposed goods.

Bessant & Ors v South Cone Incorporated was a second appeal concerning the proposed registration of REEF for promotional clothing and accessories connected with a pop group. South Cone owned the earlier REEF BRAZIL mark for footwear, particularly surfers’ sandals.

The Principal Hearing Officer dismissed South Cone’s opposition under sections 5(2)(b) and 5(4)(a) of the Trade Marks Act 1994. On the first appeal, Pumfrey J, whose judgment was reported at [2002] RPC 387, reversed the decision on likelihood of confusion but upheld it on passing off.

The central issues were the proper appellate approach to the hearing officer’s evaluative findings, whether the judge was entitled to reverse the section 5(2)(b) conclusion, and whether South Cone had established a notional passing-off claim.

1. Appeal allowed unanimously. Lord Justice Robert Walker gave the leading judgment, with which Lord Justice Buxton and Lord Justice Clarke agreed. The court restored the hearing officer’s dismissal of the opposition.

2. An appeal under section 76 of the Trade Marks Act 1994 is ordinarily a review. The appellate court must distinguish primary facts from an evaluative conclusion drawn from them. The proper degree of restraint depends on the nature of the evaluation, the tribunal’s expertise and whether it heard oral evidence. Applying Benmax v Austin Motor Co Ltd [1955] AC 370, the court held that a specialist hearing officer’s multifactorial assessment based on untested written declarations deserved real, though not the highest, degree of appellate restraint.

3. The judge had stated the general approach correctly, but he erred in reversing the section 5(2)(b) finding. The hearing officer had considered trade outlets and target consumers. The evidence did not reliably show the parties’ channels of trade, or the extent of any overlap, at the application date. Although REEF was a prominent and potentially distinctive element of REEF BRAZIL, that did not permit the judge to fill the evidential gap by intuition or substitute his own evaluation.

4. The hearing officer was also entitled to reject the section 5(4)(a) objection. South Cone’s goodwill was principally in sandals. Evidence that customers called those goods Reefs did not establish that consumers would use that name for T-shirts or be deceived as to their origin. The notional passing-off claim was therefore unproved.

• Court of Appeal (Civil Division): Allowed the group’s second appeal and restored the hearing officer’s dismissal of the opposition.

• High Court, Chancery Division (Pumfrey J): Allowed South Cone’s appeal on section 5(2)(b) of the Trade Marks Act 1994, but dismissed its appeal concerning section 5(4), in a judgment reported at [2002] RPC 387.

• Registrar of Trade Marks: The Principal Hearing Officer dismissed South Cone’s opposition to registration on 14 November 2000.