Dalsouple Societe Saumuroise Du Caoutchouc v Dalsouple Direct Ltd & Anor

Consent to trade mark registration need not be in writing. Under section 5(5) of the Trade Marks Act 1994, consent must demonstrate unequivocally an intention to renounce the relevant earlier rights, but an express oral statement can satisfy that requirement. The existence and scope of consent are questions of fact. The burden lies on the party alleging consent, and the applicable standard is the ordinary civil standard of proof. The seriousness or inherent improbability of the allegation does not create a heightened standard of proof.

An appellate court should not retry factual or evaluative issues, particularly where the decision was made by a specialist tribunal. It should intervene only for an error of principle or where the decision is plainly wrong.

Dalsouple Société Saumuroise du Caoutchouc appealed against a decision of the Hearing Officer dismissing its invalidity objections to a United Kingdom registration for DALSOUPLE and upholding an opposition to a later international registration.

The central issue was whether Raymond Mortoire, the owner of Dalsouple France, had consented in 1998 to Timothy Gaukroger applying to register DALSOUPLE in the United Kingdom in his own name. The appeal challenged the legal requirements for consent and the Hearing Officer’s assessment of the evidence, including issues concerning an agency agreement, an alleged trust, a later Community trade mark application and similar-fact evidence.

1. The appeal was dismissed. The Hearing Officer had found, on the balance of probabilities, that Raymond Mortoire had expressly consented to the registration of DALSOUPLE in the United Kingdom.

2. There is no requirement that consent under section 5(5) of the Trade Marks Act 1994 be given in writing. The comparison with section 24(3), which expressly requires assignments to be in writing, reinforced that conclusion. No writing requirement applies in the bad-faith context under section 3(6).

3. Consent under article 4(5) of the Directive must be interpreted autonomously and uniformly. It must be expressed so as to demonstrate unequivocally an intention to renounce the relevant earlier rights. An express statement of consent satisfies that requirement. Whether such a statement was made is a question of fact governed by the ordinary rules of evidence.

4. The burden of proving consent lies on the party alleging it. The standard is proof on the balance of probabilities. The seriousness of the allegation, or the apparent improbability of the event, does not impose a heightened standard of proof.

5. The Hearing Officer was entitled to accept Mr Gaukroger’s evidence despite the passage of time, the absence of precise details and evidence suggesting that consent would have been commercially unlikely. The evidence did not establish an error of law, impermissible speculation or a failure to consider the agency agreement. The Hearing Officer was also entitled to treat the 2004 Community trade mark consent issue as distinct and pending before OHIM.

6. The appellate court’s function was to review rather than retry the case. Particular caution was required because the decision under appeal was made by a specialist tribunal and involved assessment of oral evidence and evaluative factual judgments. The Hearing Officer’s conclusion was one he was entitled to reach.

7. It was not open to Dalsouple France to contend that Mr Gaukroger had been untruthful when that allegation had not been put to him in cross-examination. However, this was not an additional basis for dismissal because the Hearing Officer had assessed whether the witnesses’ accounts could be reconciled and had reached his conclusion on the evidence as a whole.

The judgment states that the consolidated opposition and invalidity proceedings were decided by the Hearing Officer on 20 May 2014 in decision O/219/14. The appeal to the High Court was dismissed.