U.K. PRACTICE

Proving Use in a Non-Use Attack: Latest Developments

Recent decisions of the UK Registry in proceedings for revocation on grounds of non-use have dealt with the following issues:

(1) the extent to which the registered proprietor is required to prove use under Rule 31(2) at the first evidence stage;

(2) “use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered” under Section 46(2), and

(3) whether the use has been in relation to the goods of registration under Section 46(1)(a) of the Trade Marks Act 1994.

 

LITTLE ME

Proceedings for revocation under Section 46 (1) (a) were brought by Floraroma against three registrations in the ownership of S. Schwab Company Inc., two for the trade mark LITTLE ME and one for the trade mark LITTLE ME & device covering a range of products for infants and children across Classes 18, 21, 24, 25 and 28.

An interlocutory hearing was held at which to consider whether the evidence of use filed by the registered proprietor in support of each of its registrations under Rule 31 (2) was sufficient to allow the proceedings to continue.

Rule 31 (2) evidence is the evidence the registered proprietor must file together with a Form TM8 and counterstatement, unless he is instead seeking to rely on proper reasons for non-use. The proprietor has three months to file this evidence from the date on which a copy of the notice on Form TM26 (N) and the statement of grounds filed by the applicant for revocation are sent by the Registrar to the registered proprietor.

The proprietor may file further evidence later on in the proceedings under Rule 31(6) if the applicant for revocation files evidence or the registrar otherwise directs.

The evidence filed by S. Schwab Company Inc. under Rule 31 (2) in support of its three registrations consisted of a witness statement and three separate copies of an exhibit comprised of copies of invoices. Sales were shown in the invoices but many of the items were listed in code form making it difficult to identify the individual items.

Furthermore, “Little Me Childrenswear Co.” was identified on the invoices as the company to whom payment should be made, but no reference was made on the invoices to the registered proprietor. No explanation was offered for the absence of a reference to the registered proprietor in the invoices, nor was it indicated that there was a link between Little Me Childrenswear Co. and the registered proprietor. Consequently, the evidence raised questions as to the extent of the use of the mark and whether the use was use by (or with the consent of) the registered proprietor.

Reference in the invoices to ZEO America at a New Jersey, U.S.A. address as the shipping address and to ZEO America at a Belfast address as the billing address planted further doubts in the Registrar’s mind, as this suggested that the mark may not have been used in the United Kingdom.

The Registrar took a preliminary view that the evidence did not meet the requirements of Rule 31 (2). The Registrar’s letter reporting her view referred to the ADRENALIN case, which held that in non-use revocation proceedings, the proprietor was expected to supply turnover figures, details of the exact goods/services offered under the mark, advertising expenditure figures and advertising materials.

The registered proprietor disagreed with the Registrar and requested a hearing. At the hearing, its representatives made the following submissions:-

1. the registered proprietor had received no warning that applications for revocation would be filed;

2. the Registry made an error in sending the papers relating to all 3 cases to the agent of record for 2 of the cases,

3. there was a delay in contacting the US instructing attorneys caused by the Registry’s error and the transfer of cases to one agent,

4. there were difficulties in making contact with the US instructing attorneys resulting in delays,

5. delays also occurred due to the proceedings taking place in the run-up to Christmas, and

6. the proprietor had filed what evidence it could within the three-month period and intended to file more later on in the proceedings.

Although there were a number of gaps in the proprietor’s evidence, the Registrar concluded that the evidence was adequate, although only just adequate enough, to allow the proceedings to continue. The registered proprietor had demonstrated through the evidence and submissions that it intended to defend its registrations, and in the Registrar’s view the proprietor had presented “at least an arguable case under Section 46 (1) (a)”.

In reaching her decision, the hearing officer took guidance from Chapter 15 of the Trade Marks Registry Work Manual in which it is stated that full evidence is not required at the counterstatement stage. More specifically, it states that turnover and advertising details are not required at this stage, but the range of goods/services on which the mark has been used should be demonstrated.

The Hearing Officer concluded that “more than a mere assertion that the trade mark(s) in question had been used” was required, but the proprietor need not file all of its evidence at the Rule 31(2) stage.

 

Comment

This decision offers some reassurance to proprietors of trade mark registrations that come under attack for non-use that the registered proprietor does not have to collate and file full evidence within the first three-month period. However, it also serves as a warning that unless good reasons can be supplied for the absence or sparseness of evidence at the Rule 31 (2) stage, the mark could be struck off the register.

This case also highlights the proprietor’s need to look critically at the evidence it has collated and consider whether the evidence proves use of the mark by or with the consent of the registered proprietor and in relation to the goods/services of registration. The registered proprietor and his attorney should consider whether the goods or services for which the mark has been used are clearly identified in the documents supplied. If the registered proprietor’s name does not appear in the documents, why doesn’t it? An explanation should be given for an omission in the evidence.

BIG BLUE

In two other cases before the UK Registry, applications for revocation on grounds of non-use under Section 46 (1) (a) were successfully brought by Big Blue Box Studios Limited against a registration for the word mark BIG BLUE and a registration for a mark comprising the words BIG BLUE in a slightly stylised font beneath a device consisting of two back-to-back letter “B”s made up of a series of horizontal lines. The registrations stood in the ownership of Big Blue Products Inc.

Both registrations covered “computers, computer terminals, disk drives, monitors, printers, modems and interfaces; parts and fittings therefor; computer software; computer programs for business, accounting, communications and amusement; data carriers for the aforesaid” in Class 9.

The evidence filed in support of the BIG BLUE device mark registration did not show use of the mark as registered. Instead, evidence of use of the company name Big Blue Products Inc. was shown.

The same type of evidence was supplied in support of the BIG BLUE word mark registration.

Not surprisingly, the evidence filed in support of the BIG BLUE device mark registration did not sustain the registration because the use of the company name, Big Blue Products Inc., was deemed not to constitute use of the trade mark “in a form differing in elements which do not alter the distinctive character of the mark” under Section 46(2).

However, use of the company name Big Blue Products Inc. was considered by the Registrar in the BIG BLUE word mark case to constitute use of the registered mark BIG BLUE because the words “Products” and “Inc” were regarded as non-distinctive. The company name appeared on the documents submitted as evidence (schedules, computer printouts, an advertisement and invoices), but one might ask, does use of a company name in this manner amount to use of the trade mark in relation to the goods?

Whilst many trade marks derive from company names, company names do not tend to be used in the same manner as trade marks. It is usually the trade mark (not the company name) that is emblazoned across the packaging of the goods. If the company name features at all on the packaging, it will usually appear in the small print on the back of the packaging. It is usually the trade mark (not the company name), which distinguishes the product from another trader’s product. The fact that the registered proprietor’s name appears on invoices for the product does not mean that the registered trade mark was affixed to the goods or the packaging for the goods to which the invoices relate.

In the BIG BLUE word mark and device mark cases, the Registrar considered the question of whether ‘the use’ had been in relation to the goods of registration as required under Section 46 (1) (a). The applicant for revocation submitted that the registered proprietor did not use its marks in relation to the Class 9 computer goods for which the marks were registered because other companies’ trade marks were affixed to the goods, including the trade marks of IBM, Toshiba and Compaq. The applicant for revocation submitted that the registered proprietor was instead providing retail services.

The Registrar took guidance from the Euromarket Designs case and concluded that one must look at whether the retail name is also a brand name. Big Blue Products Inc. supplied no evidence of trade in own brand goods, therefore, the Registrar concluded that customers would not regard the registered proprietor’s use as being use in relation to the goods.

Comment

These two cases highlight a problem that is faced by retailers who own trade mark registrations that were acquired before trade mark protection was available for retail services. It used to be common practice for retailers to register their trade marks for the retailed goods. Unless the retailer supplies own brand goods, it must now regard its trade mark registrations in the goods classes as being vulnerable to cancellation for non-use and should file new applications for registration covering the Registry’s accepted terms for retail services in Class 35.