A recent UK Trade Mark Office decision (Viacom International Inc. v Nottingham Group Limited) has shown that use of a UK registered trade mark as part of a combination mark may not be sufficient to prevent the revocation of the registration.
The facts were these. Nottingham Group owned a UK trade mark registration for Arnold covering a broad range of goods in Class 9. Viacom applied to revoke the registration under Section 46(1)(b) of the 1994 Trade Marks Act on the basis that the mark had not been used in the UK in relation to the goods claimed for a five year period prior to the date of application for revocation. Having reviewed the evidence filed by both parties, the Hearing Officer found that Nottingham Group did not use the trade mark Arnold as such in relation to the Class 9 goods claimed. However, he took the view that the proprietor’s evidence did illustrate use of the trade marks NES Arnold and NES Arnold & Bird Device for about seven years prior to the application for revocation.
Under Section 46(2) of the 1994 Act, the owner of a UK registered trade mark can resist a non-use attack if he uses the mark "in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". The proprietor argued that this was the position in the present case and that their use of the trade mark NES Arnold (with or without the Bird Device) was sufficient to prevent the revocation of their registration for Arnold. The Hearing Officer disagreed. He commented as follows:
The presentation of NES as the first element in the mark and in upper case letters gives it a degree of prominence and importance within the totality of the mark which cannot fail to make an impression on the viewer.
NES was itself a distinctive trade mark which made a significant contribution to the overall character of the mark in use.
Even if it had been the intention of the proprietor that the presence of the NES element would not affect the identity of the Arnold mark, this was irrelevant. It was the effect actually achieved by the presence of NES within the totality of the mark that was important not what the proprietor thought he was achieving.
In view of this finding, the Hearing Officer decided that there had not been any relevant use of the trade mark Arnold in relation to the Class 9 goods claimed and he therefore revoked the registration.
The writer is unaware of any earlier UK cases decided on the same facts as the above revocation action. In an earlier case (1997 FSR 529), it was found that the use of the trade mark Elle did not sustain a registration for elle in the middle of the symbol for the female gender. However, in that case the mark in use was less than the totality of the mark registered. In the case discussed above the whole of the registered mark was in use but the use was as part of the composite mark employed by the proprietor in the market.
In the writer’s view, the above case was rightly decided and should act as a warning to the owners of registrations for marks of limited inherent distinctiveness. Arnold is prima facie a non-distinctive trade mark, having both a surnomial and a geographical significance. It would therefore only be registered in the UK on the basis of distinctiveness acquired through use. It is extremely unlikely that use of the composite mark NES Arnold would be sufficient to achieve registration of Arnold alone in the UK. In fact, registration of the trade mark Arnold had been achieved nearly 25 years prior to the revocation action discussed above on the basis of user evidence and at a time when the owner used the trade mark Arnold alone in relation to the Class 9 goods claimed.
It follows, in the writer’s opinion, that if the actual use (e.g. as NES Arnold) made of a mark such as Arnold by its proprietor would not be adequate to achieve registration of Arnold in the first place, that same use should not be accepted as genuine use of Arnold, if a registration for Arnold is attacked on the ground of non-use.
If you obtain a registration for an inherently non-distinctive trade mark by providing convincing evidence of use, you must continue to use the mark in a manner that would achieve registration in the first place. If you do not, you should not be surprised if you lose your prized asset in a revocation action.