A stream of recent rulings from both UK and EU courts has demonstrated how crucial evidence of trade mark use – or lack of such evidence – can be to determining brand disputes. We shall briefly review a selection of these rulings and their implications, and see what lessons can be learned from them.
How evidence of use by a third party can ruin your branding hopes
SOVEREIGN doesn’t rule OK[1]
The Royal Mint Limited applied to register SOVEREIGN as a UK trade mark for gold commemorative coins. Sovereign coins were first struck in England as long ago as 1489, and since the applicant enjoyed a statutory monopoly on the manufacture and distribution of legal tender in the UK, its application looked very likely to succeed. But The Commonwealth Mint and Philatelic Bureau Limited opposed the application, relying on evidence that (inter alia) the word “sovereign” was commonly used to describe non-UK coins (from, for example, Australia, Gibraltar and the Isle of Man) that were traded in this country.
The English High Court accepted this evidence, and since “trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”[2] may not be registered, it upheld the decision of the UK Intellectual Property Office (UKIPO) rejecting the application. The decision is a striking demonstration of how even applications that appear to be absolutely watertight can be torpedoed by evidence of third party use.
A block on ALCOLOCK[3]
Alcohol Countermeasure Systems’ registration of ALCOLOCK as a European Union Trade Mark (EUTM) was attacked by Lion Laboratories Limited, which adduced evidence of prior use by it of the same mark for the same category of goods, namely breathalyser devices. Even though only 350 of these devices had ever been sold by Lion Laboratories, the EU General Court (the General Court) decided that this was “not so low as to be merely token minimal or notional”, and declared the registration invalid. The decision is a salutary reminder that even relatively insignificant sales by a rival can, if they are genuine, be enough to undermine one’s subsequent registration.
How lack of evidence of use of your own trade mark can undermine it
POPCHRONO goes “Pop!”[4]
The case involved an application by Pirelli Tyres S.p.A to revoke an EUTM registration of the mark POPCHRONO in respect of vehicles. In his defence, the registrant evidenced proposals to negotiate a trade mark licence for the goods, and sought to rely on EU case law to the effect that preparations to secure customers can be enough to prove genuine use. But the General Court, unpersuaded by this evidence, revoked his registration. Its decision is a useful reminder that even if one cannot demonstrate actual use of one’s brand in the market place, evidence of preparations and advertising campaigns might be enough, but that mere licence negations will not be.
It’s just not NATURAL[5]
In an attempt to block its rival from registering NATURAL INSTINCT as an EUTM, M.I Industries adduced evidence of its use of earlier trade marks, including its registration of NATURE’S VARIETY as an EUTM registration. But according to the General Court the evidence showed that the latter was not being used as a trade mark for goods and services, only as a trade name to denote the company itself. The opposition therefore failed, which teaches brand owners to beware situations in which their business name is the same as their trade mark.
iPHONE? No, my phone! [6]
Dome Mobile Services Limited’s predecessor–in–title had managed to register the brand iPhone as a UK trade mark in 2008 for “encoded telephone cards”. Apple Inc., unsurprisingly, sought to revoke the registration, and in response to its argument that the mark had not been put to genuine use for more than five years the registrant countered by adducing evidence that the mark had been used in respect of paper receipts for electronic vouchers, which allowed purchasers to access credit. The UKIPO rejected this evidence on the grounds that telephone cards were different from e-vouchers, and held that the fact that the two had the same general purpose was irrelevant: “Both a horse and a tractor may pull a plough, but that does not make them the same”, it said. The ruling reminds brand owners that, when using their trade marks, they need to make absolutely sure that the use relates to the goods for which the trade mark is registered.
Conclusion
Unless a trade mark is used – and used properly – its career is likely to be short, and “use it or lose it!” is a very relevant maxim. This is one of the characteristics that differentiates trade marks from other IP rights, most of which are not dependent upon use in order to validate them.
It is therefore surprising how often the subject of use is neglected by applicants and registrants alike. Cases such as the ones discussed above are, accordingly, very useful in prolonging the active life of one’s brand.
For further information please contact Jonathan Cornthwaite at jcornthwaite@wedlakebell.com.
[1] The Royal Mint Limited v The Commonwealth Mint and Philatelic Bureau Limited [2017] EUHC417(Ch).
[2] Trade Marks Act 1994, Section 3(1)(d)
[3] Alcohol Countermeasure Systems (International) Inc v EUIPO, Case T-638/15, 29 March 2017.
[4] IR v EUIPO, Case T-132/15, 14 March 2017.
[5] M.I. Industries v EUIPO, Case T-30/16, 15 February 2017
[6] In the matter of registration number 2380997 in the name of Dome Mobile Services Limited,Case 0-128-17, 21 March 2017