Tapper v Beak Fried Chicken

In Tapper v Beak Fried Chicken, the Appointed Person has provided guidance on when a party may resile from an admission, upholding Tapper’s appeal and remitting the matter to the Hearing Officer for consideration.

Court: Appointed Person
Judge: Dr Brian Whitehead
Judgment: Here
Trade mark: UK3380292, UK3120818, UK3815842, UK3849951
Issue: Trade Mark Invalidity

Trade marks

Hearing Officer

The Hearing Officer heard two consolidated oppositions, Tapper’s opposition in relation to Beak Fried Chicken’s UK ‘842 and Beak Fried Chicken’s corresponding opposition in relation to Tapper’s UK ‘951.

The Hearing Officer concluded that Tapper’s opposition was successful under s. 5(2)(b) of the Trade Marks Act 1994 and so the registration proceeded only in relation to “retail services relating to stationery, namely stickers”.

As to Beak Fried Chicken’s opposition, the Hearing Officer relied on an admission by Tapper in its TM8 counterstatement that the services in class 35 were identical with those for which UK ‘951 was to be registered.  He concluded that, because the marks were visually similar to a medium degree, aurally identical and conceptually similar to a high degree there was a likelihood of confusion.

As a result, he refused registration for the certain services in class 35 including: “Advertising, marketing, promotion and / or retail … of key rings, pens, books on brewing beer, beer mats, etc.”

Appointed person

Tapper appealed the Hearing Officer’s decision, arguing that the admission in its TM8 counterstatement was in respect only of the challenged services in the ‘842 mark.

The Appointed Person disagreed, finding that there was no ambiguity in the TM8 counterstatement, which read:

“The Applicant accepts that the word element is identical, however the Applicants mark has a strong and distinctive visual identity. The Applicant accepts that the services in Class 35 are identical.”

Tapper further argued that it was contrary to Registry practice and procedure for the Hearing Officer to continue on the basis of identicality when this was wrong as a point of fact.

Here, the Appointed Person disagreed with the appellants reasons, citing §4.1 of Contentious Trade Mark Registry Proceedings (2nd Edition):

“If an allegation is admitted, then that fact or matter is no longer in issue between the parties, and so (a) no evidence needs to be adduced to establish it; (b) no argument needs to be advanced to promote or defend it; and, (c) the tribunal need not trouble itself about it, as it becomes an agreed point between the parties and may be used by the tribunal as a basis for its decision”.

However, the Appointed Person found that the Hearing Officer had erred by not investigating with Tapper as to whether it wished to resile from the admission. He pointed to CPR 14.5, which explains that a Court can give permission to withdraw or qualify an admission. In doing so, the Court should consider:

“(a)  the grounds for seeking to withdraw the admission;

(b)  whether there is new evidence that was not available when the admission was made;

(c)  the conduct of the parties;

(d)  any prejudice to any person if the admission is withdrawn or not permitted to be withdrawn;

(e)  what stage the proceedings have reached; in particular, whether a date or period has been fixed for the trial;

(f)  the prospects of success of the claim or of the part of it to which the admission relates; and

(g)  the interests of the administration of justice”.

As a result, the Appointed Person remitted the matter to the Registry for consideration of whether Tapper should be permitted to resile from or qualify the admission of identicality of services made in its TM8 counterstatement.