EI Du Pont De Nemours & Company v S.T. Dupont

A telephone-directory threshold is administrative guidance, not a substitute for the statutory assessment of whether a surname mark can distinguish goods. Capacity under section 10 of the Trade Marks Act 1938 depends on the mark, its use, the goods, the trade, other traders’ needs and conditions in the United Kingdom. Use on related goods may assist where a sound extrapolation is possible.

Under section 11, earlier use of a non-distinctive surname does not itself bar registration. The court asks whether normal and fair use would probably deceive or confuse a substantial number of people and, if so, whether that would disentitle the applicant to protection.

Appeals from the Trade Marks Registrar are ordinarily reviews under CPR Part 52. Fresh evidence remains governed by general appellate principles, applied with attention to the nature and public consequences of trade mark registration.

EI Du Pont De Nemours & Company v S.T. Dupont concerned two appeals from Neuberger J in trade mark opposition proceedings. In the first proceeding, the Registrar had rejected S.T. Dupont’s opposition to registration of DU PONT for clothing. The judge permitted a late surname-based objection under sections 9 and 10 of the Trade Marks Act 1938, admitted new telephone-directory evidence and also upheld an objection under section 11.

In the second proceeding, the Registrar had upheld E.I. Du Pont’s opposition to S.T. Dupont’s application to register a stylised S.T. DUPONT mark for clothing. The judge reversed that decision. The parties agreed that success in the first appeal entailed success in the second.

The Court of Appeal considered the treatment of surname marks, capacity to distinguish, confusion under section 11 and passing off under section 5(4)(a) of the Trade Marks Act 1994. It also addressed whether appeals from the Registrar under the 1938 Act were reviews or rehearings and the principles governing late amendments and fresh evidence.

1. The appeals were allowed unanimously. Aldous LJ delivered the substantive judgment, with which May and Keene LJJ agreed. The judge’s orders were set aside and the Registrar’s decisions were restored. E.I. Du Pont’s application was therefore to proceed to registration, while S.T. Dupont’s application was refused.

2. The judge had no sound basis for reversing the Hearing Officer’s refusal of the late surname-based amendment. The delay had impaired E.I. Du Pont’s opportunity to obtain evidence of public attitudes near the relevant date. It was unjust to require the party resisting the amendment to incur substantial expense gathering evidence conditionally. The Hearing Officer’s specialist experience, the age of the application and the probable need for an adjournment also favoured refusal.

3. Alternatively, the objections under sections 9 and 10 of the Trade Marks Act 1938 failed on their merits. Telephone-directory thresholds were Registry guidelines, not decisive statutory tests. Section 10 required consideration of the mark and all surrounding circumstances, with the focus on its capacity to distinguish in the United Kingdom. Relevant matters included use, the mark’s characteristics, the goods and trade, and the needs of other traders. Although DU PONT had not been used to indicate a trade connection between E.I. Du Pont and finished clothes, its established distinctiveness for fibres and fabrics could soundly be extrapolated to clothing.

4. The section 11 objection also failed. Following Bali Trade Mark [1969] RPC 472, the court had to ask whether normal and fair use would probably deceive or confuse a substantial number of people and, if so, whether that would disentitle the applicant to judicial protection. Section 11 protected the public rather than merely rewarding priority of use. Because S.T. DUPONT was not inherently distinctive, the extent and nature of S.T. Dupont’s use were relevant. Its limited menswear sales through two outlets did not create the required likelihood of substantial deception or confusion.

5. Long use on related goods was not an “other special circumstance” under section 12(2) permitting registration of an unused mark for goods in another class. Defensive registration had instead been available under section 27.

6. The second appeal necessarily succeeded under the parties’ agreement. Aldous LJ added that it would also have succeeded independently under section 5(4)(a) of the Trade Marks Act 1994. Applying A.G. Spalding & Bros v A.W. Gamage Ltd (1915) 32 RPC 273, use of the substantially identical S.T. DUPONT mark on clothing would imply an association with the established DU PONT fabric mark and would be liable to restraint in passing off.

7. May LJ held, with the agreement of the other members of the court, that CPR Part 52 applied to appeals under section 18 of the 1938 Act. Such an appeal was ordinarily a review engaging the merits and giving the Registrar respect appropriate to the nature of the determination. A full rehearing would be rare. Fresh evidence was governed by rule 52.11(2); the ordinary appellate principles applied, although their application could reflect the public and commercial features of trade mark registration.

1. Court of Appeal (Civil Division): By [2003] EWCA Civ 1368, unanimously allowed both appeals, set aside the orders of Neuberger J and restored the Registrar’s decisions.
2. High Court, Chancery Division: Neuberger J allowed S.T. Dupont’s appeals in both opposition proceedings. In the first proceeding he permitted a late surname-based objection and upheld objections under sections 9, 10 and 11 of the Trade Marks Act 1938. No neutral citation is stated.
3. Trade Marks Registry: The Hearing Officer rejected S.T. Dupont’s opposition to E.I. Du Pont’s application and upheld E.I. Du Pont’s opposition to S.T. Dupont’s application.