Vitasoy International Holdings Limited, relying on its earlier VITA trade mark, was successful in obtaining a declaration of invalidity in respect of part of Sunrider Corporation’s VITALITE mark.
On 24 May 1991 Vitasoy applied for a UK registered trade mark for the word "VITA”, but the mark was not registered until 17 November 2000. Its specification in Class 32 was for “carbonated and non-alcoholic beverages, all made from or including sugar cane, guava and mango”. On 3 September 1993 Sunrider applied for the word "VITALITE" to be registered as a UK trade mark. This mark was registered on 10 December 1999 in several classes. Its specification in class 32 was for “syrups, preparations for making beverages, all being nutritional supplements in liquid form; nutritional syrups, herbal drinks…”.
Vitasoy applied under section 47 of the Trade Marks Act 1994 to the Registrar for part of the VITALITE mark to be declared invalid on the basis of its earlier similar mark. This application was granted in respect of parts of Sunrider’s specification in classes 5, 29 and 32. Sunrider appealed to the High Court and Vitasoy eventually conceded the appeal other than in respect of class 32. The core dispute was whether the goods in question were similar and in particular whether “herbal drinks” and/or “syrups, preparations for making beverages, all being nutritional supplements in liquid form” were similar to the fruit juice based beverages described in Vitasoy’s specification.
Sunrider attempted to rely on section 48 of the 1994 Act to argue that as Vitasoy had acquiesced for 5 years to its use of the VITA mark it was prevented from obtaining a declaration of invalidity in any event. Vitasoy countered that section 48 could not apply here as Vitasoy’s action for a declaration of invalidity had been commenced within 5 years of Sunrider’s registration
Article 9(1) of the EU Trade Marks Directive states “Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the uses of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.” This has been implemented in the UK by section 48.
In relation to section 48 the High Court judge concluded that time does not start to run until the later mark is in fact registered. He noted that “the reference in section 48 to the use of a registered trade mark means use whilst the mark is actually registered". The judge accepted however that Sunrider's position that use following the date of application should be taken into consideration was "not absurd". He considered that there might be some merit in holding that an earlier mark owner’s failure to act during the opposition window could result in its being unable to prevent the conflicting mark from remaining on the register if more than five years passed between the date of application and the date of registration. However such a finding was inconsistent with the absence of a provision in the EU Trade Marks Directive barring oppositions in a similar situation: "it is to my mind strange that this should be the case when the Directive does not at the same time prevent the proprietor of the earlier trade mark from opposing registration of the later mark even after 5 years’ acquiescence in the use of the later mark".
In respect of the similarity of goods point the judge concluded that carbonated and non-alcoholic beverages, all made from or including sugar cane, guava and mango are not similar to "herbal drinks". However he also concluded that such beverages are similar to "syrups, preparations for making beverages, all being nutritional supplements in liquid form". This was because the nature of the herbal drink was self-evidently different from that of the VITA drink (a sugar cane, guava and mango fruit juice) - even if such a juice had a herbal ingredient. In contrast liquid nutritional supplements could include beverages containing sugar cane, guava and mango and therefore preparations and syrups to make such a beverage would also be caught.
Although the judge’s section 48 reasoning is consistent with the Directive it does mean that an earlier right owner/earlier trade mark owner could learn about a later applicant’s use of a similar mark but sit on its hands for several years whilst the later application makes its way through the registration process. The earlier right owner would then have up to another five years after the later mark is registered to bring its validity attack based on its earlier right before section 48 took effect to prevent such a challenge.
Note however that such a strategy may involve other risks. For example if the earlier right owner did not clear the way first and its earlier right was in passing off it would risk an infringement action against use of its unregistered mark unless and until it obtained a declaration of invalidity in respect of the later mark.