KAMBLY SA SPÉCIALITÉS DE BISCUITS SUISSES v INTERSNACK KNABBER-GEBÄCK GMBH & CO. KG

Under the Trade Mark Act 1938, the relevant date for section 12 is the date when the later mark is entered on the register, not the date of its application. An earlier registration therefore does not bar registration if it is removed before the later mark is registered. Five years’ statutory non-use operates as a practical statutory modification of abandonment, preventing the former proprietor from relying on earlier use to create a bar to registration. Permission to introduce a new case or fresh evidence on a trade mark appeal is exceptional. The applicant must explain the delay fully, provide precise evidence, and show that admission would further the overriding objective. The application failed because the proposed section 12 case was legally untenable and the fresh evidence was inadequately explained, potentially prejudicial and insufficiently shown to affect the outcome.

Kambly appealed from the Registrar’s decision accepting Intersnack’s applications to register two Goldfischli marks. The applications were governed by the Trade Mark Act 1938 under transitional provisions of the Trade Mark Act 1994. Before the appeal, Kambly sought permission to amend its grounds and to adduce eight witness statements concerning sales of its cracker product at United States military bases in the United Kingdom.

The proposed amendment relied on section 12, contending that Kambly’s existing registrations barred Intersnack’s applications. The proposed evidence was intended to support objections under sections 11 and 17. The court had to decide whether permission should be granted for the new case and the fresh evidence.

1. Section 12 application refused. The proposed case was legally bad. Under the Trade Mark Act 1938, the critical date under section 12 was the date of entry of the later mark on the register. A prior mark could therefore be removed before that date without barring registration. The same conclusion was supported by GE Trade Mark [1973] RPC 297 and In the Matter of a Trade Mark “Palmolive” (1932) 44 RPC 269.
2. Permission was also refused because the section 12 case could and should have been raised before the Registrar. A change of view was not an exceptional circumstance. The overriding objective required parties, where possible, to advance their entire case at the outset.
3. The proposed fresh evidence could not be relied on to establish use during the relevant five-year period because the First Decision had created an issue estoppel. Further, section 26 was a statutory modification of the common-law doctrine of abandonment. Non-use for the statutory period had the practical effect of abandonment under the 1938 Act. The former proprietor could not rely on earlier use to establish a mark which barred registration by the successful rectification applicant.
4. The court left unresolved whether sales at United States military bases constituted the necessary public use to engage section 11 in relation to sales outside those bases.
5. The approach to fresh evidence on trade mark appeals was governed by ordinary CPR Part 52 principles, with the particular nature of trade mark appeals capable of affecting their application. The Ladd v Marshall criteria remained basic guidelines and had peculiar weight in considering the overriding objective. The application failed because the evidence about Kambly’s knowledge and enquiries was inadequate, credibility difficulties were unresolved, admission would prejudice Intersnack and delay the litigation, and its likely influence on the appeal was not established.
6. The application was dismissed.

• Registrar of Trade Marks: Mr Foley rejected Kambly’s opposition and accepted Intersnack’s applications for registration.
• High Court (Chancery Division): Mr Justice Lightman refused permission to amend the grounds and to adduce fresh evidence. The application was dismissed.