Yellow Bulldog Ltd v AP & Co Ltd

An appeal from a trade mark opposition decision is ordinarily a review, not a rehearing. The appellate court should respect an experienced tribunal’s evaluative judgments and intervene only for an identifiable flaw, such as a gap in logic, inconsistency or failure to take account of a material factor. In passing off, goodwill may be established by the totality of the evidence, including evidence of a customer base and the association of a sign with the claimant’s goods. A common field of activity is not essential, although overlap remains an important factor when assessing misrepresentation. The appellate court must not substitute its own evaluation merely because it might have reached a different conclusion.

Yellow Bulldog Ltd appealed under section 76(2) of the Trade Marks Act 1994 against the Hearing Officer’s decision on three consolidated oppositions. The Hearing Officer upheld A P & Co Ltd’s opposition to Yellow Bulldog’s two applications under section 5(4)(a), refused those applications, and allowed A P & Co’s application to proceed to registration. The dispute concerned whether A P & Co had protectable goodwill in GEEKCORE and whether use of GEEKSTORE would amount to misrepresentation and damage. Yellow Bulldog challenged the findings on goodwill, similarity and overlap. The central issue was whether the Hearing Officer’s evaluative conclusions were wrong on review.

1. Appeal dismissed. The court reviewed the Hearing Officer’s decision under CPR rule 52.21. It was not conducting a rehearing, and intervention was justified only if the decision was wrong because of an identifiable flaw in the treatment of the issue.
2. The court applied the approach in Re Sprintroom Ltd [2019] BCC 1031. An appellate court must not carry out the evaluative exercise afresh. It must ask whether there was a gap in logic, inconsistency or failure to take account of a material factor undermining the conclusion. The specialist experience of a Hearing Officer also warranted real respect, as explained in South Cone Inc v Bessant, The REEF TM [2003] RPC 5.
3. The Hearing Officer was entitled to assess the evidence collectively. The evidence of the witness statement, website captures, advertising, website traffic and sales supported a finding that A P & Co had more than trivial goodwill in an online retail business associated with GEEKCORE.
4. The court rejected the challenge that sales could not establish goodwill without further evidence of public recognition. The findings showed a customer base aware of the association between GEEKCORE and A P & Co’s goods.
5. As to misrepresentation, the Hearing Officer correctly treated a common field of activity as unnecessary but highly important, applying Harrods Ltd v Harrodian School Ltd [1996] RPC 697. Her findings on similarity, the wide selection of goods and likely customer belief were evaluative conclusions open to her.
6. Yellow Bulldog’s applications remained refused and A P & Co’s application could proceed to registration.

1. High Court (Chancery Division): appeal from the Hearing Officer for the Registrar of Trade Marks, United Kingdom Intellectual Property Office. The appeal was dismissed.