The Court of Session today issued its judgment in the case of CCHG Limited t/a Vapourized v Vapouriz Limited. We understand that this case represents the first time a Scottish Court has heard an appeal of a decision from the UK Intellectual Property Office’s Hearing Officer, under section 76 of the Trade Marks Act 1994. We acted for the successful Respondent, Vapouriz Limited alongside its trade mark attorneys Cam Trade Marks and IP Services.

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 (No. 3085823).

The appeal took place in the Court of Session in Edinburgh over two days in front of Lady Wolffe. Today’s Judgment notes that CCHG Limited failed in its appeal with her Ladyship noting that “having considered the parties’ arguments, and the cases cited, I am not persuaded that in respect of his assessment of the likelihood of confusion, there is any detectable error in principle on the part of the Hearing Officer. Nor do I find that he was plainly wrong in the conclusion he reached.”

Whilst the appeal discussed the likelihood of confusion between the marks, comparison of the trade marks and whether or not the Hearing Officer was plainly wrong, perhaps the most significant aspect is the different basis upon which an appeal proceeds north and south of the border.

In England and Wales an appeal to the Court is a “review” of the Hearing Officer’s decision. However, Court of Session rule 55.19(1) states that an appeal to the Court of Session “shall be a rehearing.” Whilst there is use of different wording here i.e. rehearing v review there was general agreement between respective Counsels that there should not be a difference depending on whereabouts in the UK the appeal was raised. Her Ladyship was also of this view noting that “for the purpose of this appeal at least, in my view nothing turns on the differences in formulation in the respective procedural rules of the two jurisdictions, providing for a review (in England, under CPR rule 52.11(1)) and a”rehearing” (in Scotland, in terms of rule 55.19(10) of the Rules). Given that the TMA 1994 is of UK-wide application, it is desirable that the exercise of the appellate function by this court, if not its procedural rules, accords with that in England.”

As this case was an appeal under statute and was heard in the Outer House of the Court of Session, CCHG Limited have the option of appealing this decision to the Court of Sessions appeal court, known as the Inner House.

The full Judgment can be read here.