Mastercard International Incorporated v Hitachi Credit (UK) Plc

On an appeal by way of review from a Trade Mark Hearing Officer, the appellate court should not substitute its view for an experienced decision-maker’s findings or discretionary decisions unless there is an error of principle or the decision is plainly unreasonable. An amendment application requires a balance between allowing a fair determination on the merits and the timing of the application, delay, adjournment, additional evidence and prejudice to the other party.

For section 5(3) of the Trade Marks Act 1994, similarity is assessed by the same visual, aural and conceptual approach as under section 5(2), but confusion is unnecessary. The relevant public must establish a link between the marks, and the opponent must establish a real basis for unfair advantage or detriment. Reputation alone does not establish infringement.

Mastercard appealed from the decision of Allan James, Hearing Officer in the Trade Mark Office, dated 10 March 2004. The Hearing Officer dismissed Mastercard’s opposition to Hitachi’s application to register CREDIT MASTER for goods and services in classes 9, 16, 35, 36 and 42.

Mastercard relied on its MASTERCARD registrations and originally pleaded opposition under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994. On appeal it challenged only the section 5(3) decision, the refusal to permit amendment of the grounds, and the award of costs. The central issues were whether the Hearing Officer had applied the correct approach to amendment, similarity, the required link, and proof of unfair advantage or detriment.

1. Appeal standard. The appeal was governed by CPR 52.11(1) and was a review, not a rehearing. Following Bessant v South Cone Incorporated and Norowzian v Arks Ltd (No 2), the court should not substitute its own assessment merely because it might reach a different view. Interference with a discretionary decision requires an error of principle or a decision that no reasonable Hearing Officer could have reached.
2. Amendment. The Hearing Officer correctly found that the original grounds did not raise a section 5(3) objection based on identical or similar goods. His refusal to permit amendment was a proper discretionary balancing exercise. Relevant considerations included the late stage of the proceedings, the inevitable adjournment, further evidence, delay, prejudice to Hitachi, and the existence of an alternative section 5(2) argument. The decision was consistent with the approach in E I Du Pont De Nemours & Co v S Du Pont.
3. Section 5(3). The interpretation in Davidoff v Gofkid and Adidas-Salomon AG v Fitness World Trading Ltd permitted section 5(3) to apply whether or not the goods or services were similar. The Hearing Officer correctly distinguished the link required under section 5(3) from likelihood of confusion under section 5(2). Similarity is assessed globally by visual, aural and conceptual comparison of the marks as wholes. Confusion is unnecessary, but the relevant public must establish a link.
4. Unfair advantage or detriment. Reputation does not create an automatic monopoly over a common element of a mark. The statutory requirements of unfair advantage or detriment must have a real evidential basis. They are not established merely by theoretical risk, word association or the fact that the earlier mark has a reputation. The Hearing Officer was entitled to find that Mastercard had not proved the necessary link or the further statutory consequences.
5. Disposition and costs. The substantive grounds of appeal failed. The Hearing Officer’s decision was upheld. The costs assessment required reconsideration because no bill had been obtained, and the costs were to be assessed by the judge on the basis of the parties’ actual costings and bills.

• High Court (Chancery Division): Appeal from the Trade Mark Office decision of Allan James, Hearing Officer, dated 10 March 2004. The appeal was dismissed and the costs issue was directed to be assessed.