TRADE

Registration of trade marks - appeal under Trade Marks Act 1938 - appeal by way of rehearing rather than review and admission of fresh evidence governed by Act

E I Du Pont de Nemours and Co v S T Dupont: ChD (Mr Justice Neuberger): 31 October 2002

The objector appealed from three decisions of the Trade Marks Registry that its grounds of opposition to the registration of the applicant's trade mark were not made out.

One of those appeals was governed by the Trade Marks Act 1994, the other two by the Trade Marks Act 1938.

It was agreed that in relation to the appeal under the 1994 Act the provisions of Civil Procedure Rules rule 52.11 applied but the objector contended that appeals under the 1938 Act were, owing to certain provisions in that Act, taken out of CPR rule 52.11(1)(2) by virtue of CPR rule 52.4.

Accord-ingly, such appeals were by way of rehearing rather than review and the admission of fresh evidence was governed by the Act.

Richard Arnold QC (instructed by Briffa, London) for the objector; James Mellor (instructed by Blair & Co, London) for the applicant.

Held, that the provisions of section 18 of the 1938 Act indicated that an appeal under that Act was by way of rehearing rather than review; that the court's power to admit further evidence was governed by section 18(8) of the Act and not CPR rule 52.11(2); that in many cases the question of whether to admit fresh evidence on an appeal under the 1938 Act would be answered by reference to very similar principles and in an identical way to cases governed by CPR rule 52.11(2); but that, since the grant or refusal of a trade mark registration had obvious public interest results, it was appropriate that a more relaxed regime should apply to trade marks appeals.