Dixy Fried Chickens (Euro) Ltd, Re

For an invalidity challenge under section 5(4)(a) of the Trade Marks Act 1994, the challenger must prove, on the balance of probabilities, that use of the registered mark could be prevented by passing off. A registered mark is presumed valid. Mere assertion is insufficient: the evidence must be relevant, credible and sufficiently weighty to establish at least a prima facie reputation extending to the registered goods. Strong allegations of forgery or other wrongdoing require correspondingly cogent proof, and the level of proof is not reduced because Registry proceedings are intended to be inexpensive or a party is unrepresented. The passing-off question is assessed at the date of the application for registration, although earlier conduct may be relevant.

Dixy Fried Chickens (Euro) Limited appealed under section 76 of the Trade Marks Act 1994 against a decision of the Registrar of Trade Marks dated 29 May 2003. The Registrar had declared invalid Euro’s registration for a device and the words “DIXY FRIED CHICKEN” in relation to chicken and chicken products.

Dixy Fried Chicken (Stratford) Limited relied on section 5(4)(a), alleging earlier goodwill and reputation belonging to Mr Akhtar, Old Stratford or New Stratford. It also alleged that a franchise agreement relied on by Euro was forged. The central issues were whether the alleged earlier goodwill was established, whether it was transferable to the respondent, and whether the evidential case justified invalidating the registration.

1. The appeal was allowed. The section 5(4)(a) ground had not been made out. The respondent bore the burden of proving, on the balance of probabilities, that use of the registered mark was liable to be prevented by passing off.

2. A registered trade mark is presumed valid. Following the guidance in REEF Trade Mark [2002] RPC 19, the challenger had to produce sufficient relevant evidence to raise a prima facie case that its reputation extended to the goods covered by the registration. Mere assertion was inadequate. The evidence concerning both Station Road and West Ham Lane did not establish the nature, extent or trade-mark impact of the alleged trading, nor any sufficient protectable goodwill.

3. The allegation that the 1986 franchise agreement was forged was a serious allegation. Applying Hornal v Neuberger Products Limited [1957] QB 247, stronger proof was required, and the alleged indicia of forgery had to be identified so that Euro could respond. The evidential standard was not lowered because Registry proceedings were inexpensive or because the allegation had been made by a non-lawyer. The material relied on did not come close to proving forgery.

4. The relevant date for the passing-off issue was the date of the application for registration, namely 27 September 1996. Earlier conduct could assist in assessing the position at that date. Prolonged peaceful coexistence might also be relevant to defences based on delay or laches.

5. The terms of the alleged franchise agreement with Mr Ahmed did not require use of the mark or provide that any goodwill generated by such use belonged to Mr Akhtar. It was therefore not a franchise agreement and did not support the respondent’s case. The additional sites were unpleaded or unsupported by sufficient evidence.

1. Registrar of Trade Marks: on 29 May 2003, declared Trade Mark Registration No 2111700 invalid on the section 5(4)(a) ground.
2. High Court (Chancery Division): allowed Euro’s appeal and held that the section 5(4)(a) ground had not been made out.