Dalsouple Société Saumuroise Du Caoutchouc v Dalsouple Direct Ltd & Another [2014] EWHC 3963 (Ch), a High Court, England and Wales, ruling of Mr Justice Arnold of 1 December, offers some useful guidance on the meaning of “consent” to register a trade mark (section 5(5) of the Trade Marks Act 1994, among other things.

Dalsouple UK was the UK distributor of rubber flooring products made by Dalsouple France. In 1998, Dalsouple UK obtained a UK trade mark registration for the word DALSOUPLE. When, in 2011, Dalsouple France sought to register DALSOUPLE in the UK, Dalsouple UK opposed on the basis of their earlier mark.  Dalsouple France then sought to invalidate Dalsouple UK's earlier mark but failed since the Hearing Officer found that Dalsouple France had consented to Dalsouple UK registering the earlier mark and was thus barred from obtaining a declaration of invalidity.

Before considering the grounds of appeal, Arnold J emphasised that an appeal court must be especially cautious to interfere with decisions which are essentially value judgements or multi-factorial assessments. He added that as the Trade Mark Registry is a specialist tribunal, its decisions should be respected unless it is quite clear that they have misdirected themselves in law.

The key issue on appeal was whether the test for consent which was articulated by the Court of Justice of the European Union in Zino Davidoff SA v A&G Imports Ltd Case C-414/99, which related to consent in parallel imports cases in infringement proceedings, applied equally as the test for consent to register a trade mark where earlier rights were asserted. Zino Davidoff required that consent be unequivocally demonstrated, but this requirement had not previously been applied in the context of trade mark applications.

Arnold J held that the approach to consent in Zino Davidoff SA did apply to determining whether there had been consent to an application to register a trade mark. Thus consent must be unequivocally demonstrated. However, in determining whether express consent was given, even if the consent was oral, its existence must be determined as a matter of fact in accordance with the normal English rules of procedure governing the burden and standard of proof.

This blogpost is based on a media release by Hogarth Chambers, whose member Guy Tritton (instructed by Carpmaels & Ransford LLP) acted for the successful respondent.