The Royal Mint Ltd v The Commonwealth Mint And Philatelic Bureau Ltd

On an appeal from a trade mark Hearing Officer, the court should interfere only where the decision was wrong. Particular caution is required in relation to multifactorial assessments, although a distinct and material error of principle is not required if, after anxious consideration, the appellate court concludes that the decision was wrong.

A sign may be refused registration under sections 3(1)(c) or 3(1)(d) of the Trade Marks Act 1994 where it designates a kind or characteristic of the goods, or has become customary in the relevant trade. A statutory or practical monopoly over goods does not necessarily make the corresponding sign distinctive. Acquired distinctiveness requires evidence that a significant proportion of the relevant public perceives the goods as originating from a particular undertaking because of the sign itself.

The appellant applied to register SOVEREIGN for gold commemorative coins. The respondent opposed registration under sections 3(1)(c) and 3(1)(d) of the Trade Marks Act 1994, and relied on the absence of acquired distinctiveness. The Hearing Officer upheld the opposition and refused registration.

The appellant appealed, challenging the findings that “sovereign” was a denomination and a kind of gold commemorative coin, that it was customary in the trade, and that it had not acquired distinctive character through use. The central issues were whether the Hearing Officer had made an appealable error and whether the evidence justified those conclusions.

1. The appeal was dismissed. The Hearing Officer’s decision was not shown to be wrong.

2. The principles governing appeals from a Hearing Officer are those summarised in Talk for Writing Trade Mark O/017/17. An appeal is a review. The appellate court must respect primary factual findings and discretionary decisions. For multifactorial assessments, special caution is required before interference. Mere doubt is insufficient, but the court may allow an appeal where, after anxious consideration, it concludes that the decision was wrong.

3. The finding that “sovereign” was a denomination of money had an evidential foundation. The Coinage Act 1971, statutory references to “Sovereign” and “Half sovereign”, RM’s promotional material and the fact that sovereigns were legal tender for 100 pence supported the conclusion. The distinction between numismatic terminology and the perception of the average consumer did not alter the result.

4. The Hearing Officer was entitled to find that “sovereign” was a kind of gold commemorative coin and that the sign was customary in the relevant trade. Sovereign coins from jurisdictions outside the United Kingdom were traded in the United Kingdom, and the trade was international in nature. RM’s exclusive authority to make or issue sovereigns as United Kingdom legal tender did not make the word distinctive for all gold commemorative coins traded in the United Kingdom.

5. The Hearing Officer was also entitled to reject acquired distinctiveness. The relevant question was whether a significant proportion of the relevant public perceived the goods as originating from a particular undertaking because of the sign alone. Association of “sovereign” with coins issued by the UK Government or RM did not establish that the association arose because of the trade mark, particularly when similar coins from other territories were also traded in the United Kingdom.

6. The validity of the approval process for Tristan da Cunha coins was irrelevant to the trade mark issue. The Hearing Officer was entitled to treat expert evidence from museum curators as non-determinative when the issue concerned the perceptions of average consumers.

• Trade Marks Registry: On 3 March 2016, the Hearing Officer upheld the opposition under sections 3(1)(c) and 3(1)(d) of the Trade Marks Act 1994 and refused registration.
• High Court (Chancery Division): The appeal was dismissed. The Hearing Officer’s decision was upheld.