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24 July, 2017

Landmark Decision in Scottish Trade Mark Appeal

Ampersand’s Usman Tariq acted for the successful respondent in the case of CCHG Limited t/a Vaporized v Vapouriz Limited. This case was an appeal to the Court of Session against the decision of the UK Intellectual Property Office’s Hearing Officer under section 76 of the Trade Marks Act 1994. The case is understood to be the first time that the Scottish Court has heard an appeal of this nature.

The appeal was brought by CCHG Limited following the invalidation of its registered trade mark for the device incorporating the stylised words “VAPORIZED INHALE THE FREEDOM”.  The competing trade marks in this appeal were widely used in the branding of two leading retailers of e-cigarettes in the UK.

The appeal addresses several important points of principle for IP practitioners including the character of the appeal to the Court of Session as well as providing useful guidance on the legal principles applicable to the assessment of competing trade marks. The preliminary issues in the appeal arose partly because the procedural rules in England and Wales stated that an appeal to the Court was a “review” of the Hearing Officer’s decision whereas Court of Session rule 55.19(1) stated that an appeal to the Court of Session was a “rehearing” of the case.

The appeal took place in the Court of Session over two days in front of Lady Wolffe with submissions focusing on the important preliminary issues as well as the substantive merits of the appellant’s grounds of challenge to the Hearing Officer’s decision. The Court found in favour of the respondent on all of the issues in dispute.

The Court held that it should approach the review of the Hearing Officer’s decision with an appropriate degree of circumspection (paragraph 95); it was important that the Court’s approach should accord with that in England given that the Trade Marks Act 1994 is of UK-wide application; the difference between a “review” and “rehearing” was semantic in the circumstances of this appeal (paragraph 96); and that a challenge to the Hearing Officer’s decision in a multi-factorial assessment under section 5(2) of the Trade Marks Act 1994 could only succeed where there was a distinct error of principle or where the decision was plainly wrong (paragraphs 97 – 99).

Having addressed these important points of principle, the Court considered the merits of the appellant’s challenges to the Hearing Officer’s decision on the characteristics of the average consumer and the purchasing process of e-cigarettes; the comparison of the trade marks; and the likelihood of confusion. Each of these grounds of challenge failed.

The full Judgment can be read here. Usman Tariq represented the Respondent and Applicant and was instructed by Burness Paull LLP.

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