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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Holland And Barrett International Ltd & Anor v General Nutrition Investment Company  EWCA Civ 1586 (04 July 2018)
Cite as:  EWCA Civ 1586
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
Mr Justice Warren HC-2014-000862
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTIVE KITCHIN
MR JUSTICE BIRSS
| (1) HOLLAND AND BARRETT INTERNATIONAL LIMITED
(2) HEALTH AND DIET CENTRES LIMITED
|- and -
|GENERAL NUTRITION INVESTMENT COMPANY
John Baldwin QC and Henry Ward (instructed by Carpmaels & Ransford) for the Respondent
Hearing dates : 20th June 2018
Crown Copyright ©
Lady Justice Arden, Lord Justice Kitchin and Mr Justice Birss:
i) CTM no. E183533 ("the GNC word mark")
ii) UK Trade Mark no. 1468996 ("the Silhouette mark");
iii) CTM no E183475 ("the Center mark").
iv) UK Trade Mark no. 2263388 ("the Herbal Plus mark");
v) CTM no E940981 ("the GNC Live Well word mark").
vi) UK Trade Mark no. 1468832 ("the Oval mark");
vii) UK Trade Mark no. 2101307 ("the Centres Live Well mark")
"If the Licensee ceases to Use the Trade Marks or any of them in respect of the Products for a continuous period of 5 years or more the Licensor shall be entitled to terminate this Licence in respect of such Trade Mark or Trade Marks."
"the exclusive right to Use the Trade Marks during the term of this Agreement (as provided for under clause 5 below): (a) within the Territory…."
"'Exclusive': means that only the Licensee (including Sublicensees) have the right to use the Trade Marks in the Territory […] as contemplated in this Agreement to the exclusion of all other persons including the Licensor"
"298. Clearly an exclusive licence over a mark (whether a mark originally licensed or an additional mark) would preclude GNIC from using it during the currency of the exclusive licence. But this is not because there would be any trade mark infringement or passing off as a result of such use but because it is necessarily implicit in the grant of an exclusive licence that the licensor will not itself use the licensed mark. When the licence over a particular mark is terminated, the necessary implication falls away. It is not, however, necessarily implicit in the grant of the GNC mark that GNIC will not make use of any other mark, such as GNC Herbal Plus; such an implication is entirely unnecessary because it is the exclusive licence of the other mark (such as GNC Herbal Plus) which prevents use of that mark. The possibility of confusion does not, in my view, make it necessary to imply into the LA a prohibition on GNIC using the mark over which the licence has terminated.
299. The position may be different in relation to the use by GNIC of a mark incorporating "GNC" where there has been no attempt to register the mark. In those circumstances, H&B would have no exclusive licence from GNIC to use the mark (any more than it had a licence to use its own mark, "GNC SPORTS NUTRITION"). The use of such a mark might well (it is unnecessary for me to decide) be a breach of the terms of the exclusive licence of "GNC" since the exclusive licence is all that H&B would have on which to base a claim. The important difference between that case and the case of the Unused Marks is that clause 5.6 of the LA has no application to the former. In contrast, H&B can prevent use of a mark over which it does have a licence by enforcement of the exclusivity of that licence. It is implicit, to repeat, in the exclusive licence of that mark that its use by GNIC can be prevented."
"That might be seen as an undesirable consequence of the construction of clause 5.6 for which GNIC argues. But that potential confusion is a consequence of the agreement which the parties have entered into. Given a choice between a construction which precludes GNIC from using the marks in order to prevent revocation (and thus defeats the intended purpose of the provision) and one which runs the risk of bringing about a situation giving rise to confusion, I prefer the latter."
Holland and Barrett's submissions on Ground II
GNIC's submissions on Ground II
"The proper mode of construing any written instrument is, to give effect to every part of it, if this be possible, and not to strike out or nullify one clause in a deed, unless it be impossible to reconcile it with another and more express clause in the same deed."