Sunrider Corporation (t/a Sunrider International) v Vitasoy International Holdings Ltd

On an appeal concerning trade mark specifications, the court may confine the specification to goods properly falling within the relevant class and supported by the wording of the original registration. A claim for invalidity should ordinarily be met by an appropriate declaration where the successful party is entitled to the full benefit of the decision. The court should not grant an option to surrender part of the registration merely because surrender might produce the same practical result, particularly where the possibility of surrender was raised only after judgment and the parties may face different legal consequences.

Sunrider appealed from a decision of the Registrar of Trade Marks concerning Vitasoy’s VITALITE class 32 specification. In an earlier judgment, the court allowed the appeal in part and required further submissions on the form of relief.

The supplemental judgment addressed whether the specification should include syrups not intended for making beverages, and whether Sunrider should be given the option of accepting a partial surrender instead of a declaration of invalidity.

1. Class 32 specification. The relevant question was whether the original wide VITALITE specification included syrups other than those intended for making beverages. The wording placed references to syrup alongside drinks and preparations for making drinks, and the whole specification was qualified by the words that the goods were included in class 32.
2. A syrup not intended for making a beverage did not fall within the original VITALITE class 32 specification. The specification was therefore restricted to syrups and other preparations for making herbal drinks, nutritional supplements in liquid form, herbal drinks, and nutritional syrups for making herbal drinks, subject to the stated sales restrictions and the qualification that the goods were included in class 32.
3. Form of relief. The court did not decide whether class 32 could ever properly include a syrup not intended for making a drink. It decided only that such goods were not included in this original specification.
4. The court declined to give Sunrider an option to surrender the mark, with a declaration of invalidity to follow if surrender was not effected. The authority of Hormel Foods Corp v Antilles Landscape Investments NV [2005] EWHC 13, [2005] RPC 28 did not support that proposition because the defendant there had offered surrender in closing submissions, leading the claimant not to pursue invalidity of that part.
5. Vitasoy was entitled to a declaration reflecting the result it had obtained. Counsel were directed to draft a Minute of Order reflecting this judgment, the earlier judgment, and the existing costs order.

• Registrar of Trade Marks: decision on the validity and specification of Vitasoy’s VITALITE class 32 mark, as described in the judgment.
• High Court (Chancery Division): the appeal was allowed in part in the earlier judgment. This supplemental judgment restricted the specification and ordered relief by declaration rather than by an optional surrender mechanism.