Brutt force or inference? Latest IP Review

The IPKat has recently spotted Target Fixings Ltd v Brutt Beteiligungsgesellschaft and others, a UK trade marks decision of Appointed Person Richard Arnold QC, Case O-372-06 from 20 December 2006. It's a real 'lawyers' law' sort of case, all 34 pages of it.

This was an appeal by the Brutts and their companies against a decision of the hearing officer rejecting their application for declarations that certain trade marks owned by Target had been invalidly registered. Target owned the registered trade marks BRUTT HELICAL and BRUTT for goods in Classes 6 and 9, BRUTT BAR for goods in Class 6 of BRUTT BOND for goods in Class 19. According to the Brutts, Target had applied to register them in bad faith and/or was a "person who was an agent or representative of a person who was the proprietor of the trade marks" under the Trade Marks Act s.60(1). According to the Brutts, Target had been their agent or distributor in the UK, that relationship had since ceased and Target acted in bad faith by applying for its marks without their permission or knowledge. Target said the Brutts had got it the wrong way round: it was they who were Target's agent or distributor.

Faced with this mammoth clash of perspectives, where it was plain that both sides couldn't be telling the truth, the hearing officer said that the onus of proving bad faith rested firmly with the Brutts, as applicants for invalidation of a presumptively valid trade mark; the evidence being inconclusive, that onus of proof was not satisfied and the marks had to stay validly registered.

The Brutts appealed to the Appointed Person. In their view the hearing officer (1) applied an incorrect standard of proof, the correct standard being the balance of probabilities, which the officer had rejected in favour of a higher standard; (2) wrongly proceeded on the basis that he was not permitted to draw any inferences at all; (3) speculated as to a scenario that neither party had argued for and (4) failed to consider the evidence as a whole, with the result that the decision contained no clear findings of fact based on his assessment of the evidence.

Richard Arnold QC allowed the appeal, taking the following line:

* The hearing officer was correct to conclude that the burden of proof lay with the Brutts as applicants;

* However, where both sides are clearly at loggerheads over the central issue, the hearing officer should try to decide what the correct version of events actually was, without being confined to having to chopose between the versions advanced by the opposing parties;

* In civil proceedings, only rarely should a tribunal have to decide a disputed issue purely on the basis that the party bearing the burden of proof had not discharged that burden, ie where the tribunal could not reasonably have made a finding in relation to that issue despite having striven to do so;

* Proof in civil disputes was on the balance of probabilities. On the assumption that the more serious was an allegation that the applicant sought to prove, the less probable it was, the more cogent the evidence relied upon to support it had to be. This was not the same thing as imposing a higher standard of proof;

* When proving bad faith it might be both necessary and proper to rely upon inferences, this being a key mode of judicial reasoning - it was not the same thing as mere conjecture or guesswork;

* Taking all the facts into account, including the fact that the Brutts' business partners in other countries all believed that the mark belonged to the Brutts, Target's action in applying to register the marks fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced businessmen. This was a case where a party sought to lay its hands on the marks of another party with whom it had had business dealings.

The IPKat was initially a little surprised by this decision, which appears to be supported by the authorities cited. He was a lot more surprised that, given the incomplete nature of each side's evidence and the sharp contradiction between their versions of events, neither side applied to cross-examine any of the other's witnesses. He wonders whether, if they had done, the facts would have crystallised before the hearing officer and an appeal would have been avoided.


Issue 17, the winter 2006/2007 issue of the IP Review, published by CPA, has a really nice picture of outgoing MARQUES chairman Tove Graulund on the front cover (an 'up-close and personal' feature on Tove appears inside, the IPKat says, with all sorts of little personal details such as how she thinks that good communication skills are an essential asset for in-house IP counsel ...). There are lots of short, pithy pieces on topics spanning the various registered IP rights, together with lots of colour piccies. You can also read what Kaz Kazenske (Microsoft) and Mike Kappos (IBM) have to say about their respective companies' IP strategies. Not wanting to spoil the storyline, Merpel whispers, it can be reported that IBM and Microsoft are both pretty much in favour of IP rights.

Full contents here