Meemi Ltd v Wardrobe (Beautiful Clothes) Ltd

On an appeal from a trade mark hearing officer, the court should interfere only for a distinct and material error of principle, not merely because it might evaluate the evidence differently. Under section 3(1)(c) of the Trade Marks Act 1994, the sign must designate a characteristic of the goods or services. The provision does not contain separate alternatives covering descriptions of goods or services as such. In passing off, goodwill, misrepresentation and damage must be considered together. A hearing officer must stand back and assess the overall likelihood of deception, including the descriptive character of the name, the parties’ respective trading spheres, geographical reach and the absence or presence of actual confusion.

Meemi Limited appealed from a decision of the Registrar’s hearing officer dated 14 May 2012. The hearing officer dismissed Meemi’s application to invalidate Wardrobe (Beautiful Clothes) Limited’s registration of the word mark WARDROBE, but partly allowed WBC’s application to invalidate or limit Meemi’s MY-WARDROBE.COM and device mark registrations.

The appeal concerned whether WARDROBE was invalid under sections 3(1)(b) or 3(1)(c) of the Trade Marks Act 1994, and whether use of Meemi’s marks was liable to constitute passing off under section 5(4)(a). The central issues were the proper construction of the descriptive-characteristic ground and whether the hearing officer had correctly evaluated misrepresentation.

1. Appeal standard. The appeal was by way of review. The court should show real reluctance to interfere with the hearing officer’s evaluation, impression and value judgments, and should intervene only where there was a distinct and material error of principle. This applied particularly to factual assessments and the overall evaluation of passing off ([2003] RPC 5; [2003] 1 WLR 2406).
2. Distinctiveness. Section 3(1)(c) of the Trade Marks Act 1994 refers to characteristics of goods or services. It does not contain two separate limbs, one for descriptions of goods or services as a whole and another for descriptions of their characteristics. The “Paperlab test” did not support a broader construction. WARDROBE did not designate a characteristic of the individual clothing and other goods for which it was registered. The hearing officer was therefore correct to reject the invalidity challenge to WBC’s mark. The challenge under section 3(1)(b) could not succeed independently on the facts.
3. Passing off. The classical trinity remained goodwill, misrepresentation and damage. The hearing officer was entitled to find substantial goodwill in the WARDROBE business and there was no procedural unfairness in considering the issues of goodwill or damage.
4. However, the hearing officer had failed to stand back and assess the cumulative effect of the relevant circumstances when deciding misrepresentation. WARDROBE was an ordinary descriptive English word; WBC operated a geographically limited haute couture shop; Meemi operated an online retail business; the marks were not identical; and there had been no evidence of actual confusion. Taken together, those matters meant that use of Meemi’s marks for the relevant goods would not realistically involve misrepresentation or passing off.
5. The appeal was dismissed as to WBC’s WARDROBE registration and allowed as to the limitation of Meemi’s registrations. Consequential matters were left for further hearing.

• High Court (Chancery Division): allowed Meemi’s appeal against the limitation of its registrations, dismissed its appeal against the refusal to invalidate WBC’s WARDROBE registration, and reserved consequential matters.