WINEAPP LIMITED v BENEDICT JOHNSON

An appeal from a trade mark opposition decision is a review, not a rehearing. The appellate court should interfere with a hearing officer’s evaluation only for a distinct and material error of principle, an identifiable flaw undermining the reasoning, or a conclusion that was clearly wrong.

In passing off, the claimant must establish goodwill or reputation, misrepresentation likely to deceive, and damage. The assessment of misrepresentation is a fact-sensitive evaluation of the marks, the relevant market, the services and likely consumer behaviour. Virtually identical verbal elements may be outweighed by sufficiently distinctive non-verbal device elements where the verbal elements are descriptive and have acquired no secondary meaning.

Wineapp Limited opposed Benedict Johnson’s application to register a mark for sommelier services. The opposition relied on section 5(4)(a) of the Trade Marks Act 1994 and the alleged earlier unregistered mark and goodwill of Wineapp Limited.

The Hearing Officer found that Wineapp had established a small but non-trivial goodwill and that its sign was distinctive of that goodwill. She nevertheless found no misrepresentation and therefore no damage, allowing the application to proceed to registration.

Wineapp appealed, alleging errors concerning goodwill, misrepresentation, comparison of the marks and the appellate approach. The central issues were whether the Hearing Officer had made a material error of principle or had reached a clearly wrong conclusion.

1. Appeal jurisdiction. The appeal was a review of the Hearing Officer’s decision, not a rehearing. The appellant had to establish a distinct and material error of principle, clear wrongness, or an identifiable flaw such as a gap in logic, inconsistency or failure to consider a material factor. The court owed real reluctance to interfere with the Hearing Officer’s evaluative conclusions.
2. Goodwill. The Hearing Officer was entitled to find that the evidence established a small but non-trivial goodwill at the relevant date. She had directed herself correctly and evaluated the evidence open to her. Lumos Skincare was properly used as authority that limited sales may establish sufficient goodwill for passing off. It did not require a direct comparison of sales figures between different markets.
3. Misrepresentation. The Hearing Officer correctly applied the guidance in Halsbury’s Laws and was entitled to evaluate the relevant factors, including the respective services, market, marks and likely consumer behaviour. The factors did not compel a finding of misrepresentation.
4. Comparison of marks. The marks had virtually identical verbal elements, but the Hearing Officer considered them globally and found that distinctiveness arose from the different device elements. The shared words “wine/wines” and “app” were descriptive and had not acquired secondary meaning. In the absence of consumer evidence, the Hearing Officer was entitled to make a reasoned assessment of likely consumer behaviour on the available evidence.
5. Damage and disposition. Since there was no misrepresentation, there could be no damage. The appeal failed and was dismissed. The Hearing Officer’s decision stood. Consequential matters were reserved for further agreement or determination.

• High Court (Chancery Division): appeal from the Hearing Officer’s decision dated 26 May 2021 in Trade Mark Opposition No. OP000418626. The appeal was dismissed and the decision stood.