ADVERTISEMENTS

Under a recent ruling in Minimax GmbH & Co KG v Chubb Fire Limited (Chubb), the High court has allowed an appeal from a hearing officer???s decision made in January 2008,  and has rejected Chubb Fire Limited???s opposition to the registration of the word MINIMAX as a trade mark by Minimax GmbH & Co KG (Minimax).

Origins of the appeal:

In August 2003, Minimax applied to register the trade mark MINIMAX in class 1 for fire extinguishing agents and compositions, and class 9, for fire extinguishing and fire protection appliances. In January 2006, Chubb opposed this application under s.5(4)(a) of the TMA, which provides that ???a trade mark shall not be registered if, or to the extent that its use in the

United Kingdom

is liable to be prevented ??? (a) by virtue of any rule of law (in particular the law of passing off). In January 2006 the hearing officer held that at the relevant date Chubb did have a good will and reputation in the word MINIMAX for fire extinguishers and their servicing and refurbishment, as well as for the servicing and refurbishment of hose reels.

Minimax appealed this decision, claiming that the hearing officer had applied incorrect principles in reaching the decision and had failed to take into consideration the decision made by a hearing officer in earlier proceedings. (These earlier proceedings relate to MINIMAX???s successful application in 2005 to revoke two trade marks for the words MINIMAX owned by Chubb on the basis of non-user under s.46(1)(b) of the TMA).

Ruling:

Judge Floyd J ruled in favour of Minimax???s appeal and rejected Chubb's opposition under s.5(4)(a). The following reasoning was applied:

• When hearing an appeal for Trade Marks Registry, the court was conducting a review and not a re-hearing (REEF TM [2003] RPC 101)

• It is possible for a party to have made no real use of a mark for a period of 5 years, but to have retained goodwill in the name sufficient to support a passing off action (Ad-Lib Club v Granville [1972] PRC 673 and Sutherland v V2 Music Limited [2002] EMLR 2)

• In January 2006 the hearing officer was deemed incorrect to have treated Chubb???s evidence as demonstrating continued use of the MINIMAX trade mark, when all it had been doing was servicing and refilling existing MINIMAX extinguishers which had been returned to it. There was no supply to the public of any product marked MINIMAX.

• Although there was some use up to 1999, from then until this application there was no evidence of use. Chubb???s argument that this case should be contrasted with cases such as Ad-lib as the business in MINIMAX fire extinguishers had taken place over many decades, was rejected.

The case demonstrates that there is nothing in principle to prevent a person bringing an opposition based on passing off under s.5 (4)(a) of the TMA, even though it has a ruling against it that it had not made genuine use of the trade mark under s.46(1)(b) of the TMA. The problem for Chubb was that they could not demonstrate any residual goodwill in the MINIMAX mark. It had simply been servicing and refilling MINIMAX extinguishers returned to it. 

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