• IN THE UK OFFICE

    Non-Use Revocation Actions in the UK

    The UK Trade Marks Act 1994 provides, under Section 46(1), that a trade mark registration may be revoked for non-use on the following grounds:

    “Section 46(1) …

    (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

    (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;”

    The use shown of the mark may include use of the mark in a form differing only in elements which do not alter the distinctive character of the mark in its registered form and may also include use in relation to goods purely for export from the UK. It is for the proprietor to show what use has been made of the mark when his registration is the subject of a non-use revocation action.

    The registration may be saved from revocation if use is begun or resumed after the five year period expires, provided that such use (or preparations therefor) began before the proprietor became aware that an application for revocation might be filed.

    If the revocation action is successful, then the registration will be revoked from the date on which the application for revocation was filed, unless the Registrar is satisfied that the grounds for revocation existed at an earlier date.

    The ECJ, in its judgment of 11 March 2003 in the case Ansul BV v. Ajax Brandbeveiliging BV, set out the interpretation to be placed on the meaning of “genuine use” of a trade mark. The ruling made by the ECJ in that case was reported in the last edition of Make Your Mark, Autumn 2003. A brief resumé of the ruling, on points to be considered in this article, is as follows:

    • Genuine use is not token use made purely to preserve a registration, but actual use of the mark in the market for the goods or services registered.

    • The use should therefore relate to goods/services already on sale or for those about to be marketed and for which there are preparations under way to secure potential customers, for example by an advertising campaign.

    • In assessing whether use is genuine, one must have regard to all relevant facts and circumstances to establish whether the use shown is real commercial use. This includes considering the nature of the goods, the characteristics of the particular market , the scale and frequency of the use made of the mark and whether the use is warranted in the particular market in order for the proprietor to maintain or create a share in that market sector for his goods.

    • The amount of use required to be proved need not always be quantitatively significant in order to be considered as genuine.

    • Use may also be genuine where the goods, for which the mark is registered, are no longer sold, but the proprietor makes use of the same mark for newly sold component parts, integral to the goods, or for goods or services directly connected with the previously sold goods of registration, provided these connected goods/services are marketed to meet the needs of customers of the previously sold goods.

     

    Some of these aspects have recently been considered in UK cases involving the following trade marks:

    Provue - In this case Siemens Nixdorf Informationsysteme AG (“Siemens”) applied to revoke a UK registration, of Imperial Chemical Industries plc (“ICI”), that was now in the beneficial ownership of ABB Ltd. (“ABB”). ABB was joined as an Intervener in the proceedings. The registration was for the mark Provue and covered computer programs in Class 9. Siemens claimed that the registration had not been put to use within five years of completion of the registration process, that there had been no subsequent use for an uninterrupted period of five years prior to filing the action for revocation, and there were no proper reasons for non-use.

    Evidence filed by ABB demonstrated that Provue was a trade mark for a Windows-based database program. It was used internally within the ABB organisation. ABB also licensed the product to third parties. A similar situation, of internal group use and authorised use of the mark by third parties, had previously existed with ICI.

    ABB’s evidence stated that the Provue product had been marketed, sold and serviced as part of a suite of software products known collectively as PEL software. In support of this there was submitted in the evidence a list of 32 licensees, with the commencement dates of their licences, a promotional flyer for the ABB PEL suite of software packages, which referred to ProvueDB, as a major component of the package, and a further promotional flyer, which referred to a software datasheet product under the name Provue DB or ProvueDB.

    The revocation action was successful for the following reasons:

    • The list of licensees may have demonstrated licences were in place but it did not demonstrate that any use was made by the licensees of the mark Provue.
    • The exhibited flyers did not demonstrate use of the mark, as registered. The marks demonstrated all had the additional suffix DB which the Hearing Officer felt had, from the perspective of the relevant public, a significant visual, verbal and conceptual impact on the mark. In the absence of any evidence to prove that this suffix was merely descriptive or non-distinctive, the conclusion was that the mark, as used, was different in its overall distinctive character from the mark as registered.

     

    Nellie The Elephant - Dash Music Co. Ltd. (“Dash”) owned copyright in the song “Nellie the Elephant” and licensed others to use the song.

    Animated Music Ltd (“Animated”) owned a trade mark registration for Nellie The Elephant in Class 41 for various recording, production and entertainment services. Animated had acquired the registration when its predecessor in title (101 Film Productions Ltd) was dissolved and all of its rights were assigned to Animated. Animated’s predecessor had also been a licensee of Dash for purposes of using the song in a television cartoon series featuring a female elephant named Nellie. The last royalty payment that Dash had received under this licence had been in 1996.

    Dash filed two actions against Animated’s trade mark registration for Nellie The Elephant. Firstly, there was an invalidation action, based on Dash’s claim to ownership of copyright in the song, and also based on the argument that Animated’s predecessor had not been entitled, under the terms of the licence, to apply for registration of the trade mark. Secondly, there was the action relevant to this article which was for revocation of the trade mark registration, on grounds of non-use for a period of five years and three months immediately preceding filing of the application for revocation.

    Although some evidence of use was filed, Dash contended that this was not trade mark use. Invoices submitted by Animated showed use of Nellie The Elephant as a film title. This indicated the subject matter of the films and so was indicative of the film content, but was not use of the sign as an indication of source or trade origin. The origin of the products was shown, on the invoices, as the entity producing the film. The demonstrated use could not therefore qualify as genuine use of a trade mark, since it did not fulfil the essential function of a trade mark, which is to guarantee the origin of goods/services. Accordingly the revocation action was successful.

    Riviera - The trade mark Riviera was registered for chocolate, chocolates and non-medicated confectionery in Class 30 by Stella Products Ltd. (“Stella”). Stella relied on this registration, together with its use of Riviera, in invalidity proceedings against a later registration for Franco’s Riviera Cone registered for ices and ice creams in Class 30 by Domenico Tanzarella, trading as Franco’s Ices (“Franco”). Franco retaliated by applying to revoke the Stella registration for non-use during the five year period ending three months prior to the filing of the revocation action. Stella sought to maintain the registration for ice cream logs, ice cream cones and ice lollies by filing evidence relating to these goods.

    The evidence filed by Stella was deemed “inconclusive and confusing” and “raised more questions than it answered”. The five year period, for which Stella was required to provide evidence of use, commenced on 22 February 1996. Although sales figures were given for 1995-96 and 1996-97, it was not clear what portion of those sales occurred after 22 February 1996 and so fell within the relevant period. Apart from one sample of undated packaging, there was no supporting evidence of sales of ice lollies under the Riviera mark. Although some invoices, delivery notes and receipts were supplied from the relevant period, these did not clearly reference the Riviera product. The onus is on the proprietor to show that genuine use has been made of the mark during the period complained of and the Hearing Officer found that the evidence did not show use of Riviera, in relation to ice cream cones or ice lollies, during the specified period.

    Stella also filed evidence to show that they had resumed use of Riviera in relation to ice cream logs in 2000 with some £5,000 worth of sales between 2000 and 2002. Most of these sales were small trial sales (mainly for four boxes or fewer) to a few wholesalers during 2000. This satisfied the Hearing Officer that there were some sales of ice cream logs under the mark Riviera for the relevant period. However, Franco alleged that the use was not genuine because it was prompted by Stella’s awareness of Franco’s use of its mark.

    The ECJ, in Ansul, confirmed that token use, for the sole purpose of preserving trade mark rights, is not genuine use. There was evidence to show that Stella’s use, in relation to ice cream logs, began only after there had been discussion between the parties about the use of Franco’s mark. The Hearing Officer found that the use demonstrated was intended merely to protect Stella’s mark against an attack, and therefore could not be regarded as genuine use.

    This case had a further twist as Stella’s registration was revoked, but from a date not early enough to prevent it remaining as a valid enforceable right at the date Franco had applied to register its mark. Thus Stella’s invalidation action, against Franco’s registration, was also successful, and both parties lost their registrations.

    In the absence of a specific date for effective revocation being pleaded, a successful action will, by default, result in revocation being effective as of the date of application for revocation. In this case that default date of revocation post-dated Franco’s registration by some fourteen months. The parties were both given the opportunity to put forward further arguments on the effect of the revocation decision on the invalidity application. Franco argued that, whilst Stella’s mark was still technically in force at the date of application for Franco’s registration, the Registrar was entitled to take account of matters occurring after that date (ie. the revocation of the mark relied on by Stella). To support this argument, Franco relied on two earlier cases involving the marks Transpay and Sundip. Both of these were opposition cases.

    The Transpay case involved a registration that was in force at the time the later application was filed, but which had expired, due to non-renewal, by the time a decision was taken in the opposition. The Sundip case involved similar circumstances but, before the decision in the case was taken, the earlier registration relied on was voluntarily surrendered by its owner. In both cases the outcome was that the earlier marks no longer blocked registration of the later marks.

    The Hearing Officer in Riviera distinguished this case from these two, earlier decisions by stating that marks which lapse, due to non-renewal or surrender, do so as a consequence of decisions made by the proprietor himself, and this was quite different from the situation of revocation being forced upon the proprietor of the earlier mark.

    Franco also argued that Stella had shown no use of its mark at all since acquiring the registration in 1991. However, such an earlier period of non-use had not been specifically pleaded by Franco, so Stella was not obliged to show evidence for that earlier period. The Hearing Officer pointed out that it is vital to those seeking revocation for purposes of removing the obstacle of an earlier mark to request revocation from a date which precedes their own application date, so that the way ahead may be cleared.

    Police - This case demonstrated that, even in a mass market, a small amount of use may still be considered as genuine, and sufficient to save a registration from total revocation.

    A registration for the trade mark Police had been revoked by the Trade Marks Registry for non-use. The proprietor appealed the decision to the Appointed Person, Mr Richard Arnold Q.C.

    The mark was registered for perfumes in 1995 by a Mrs Mahtani who entered into an exclusive licence arrangement with a company, Linex Ltd. Linex used the mark, on a small scale, for men’s eau de toilette, mainly for export sale. After Linex had gone into liquidation in 1999, the proprietor began seeking another licensee, and, in 2000, she placed some products bearing the mark with five retail pharmacies as a form of market research. In January 2001, De Rigo SPA (owners of the trade mark Police for sunglasses) applied for revocation of Mrs Mahtani’s registration, on grounds of non-use.This revocation action was successful. The Hearing Officer found that, in a mass market such as perfumery, the small and infrequent use which Mrs Mahtani could show, in the form of Linex’s licensed use, and her own market research placements, did not establish genuine use.

    In the appeal, Mr Arnold Q.C. reversed the Hearing Officer’s decision. The Hearing Officer, in applying the Opinion of the Advocate General in the Ansul case, had found that the size of an undertaking was not something that should be taken into account when considering whether use was genuine. However, these comments did not form part of the later decision of the ECJ in Ansul, where it was stated that regard must be had to all relevant facts and circumstances. In the Appointed Person’s view, the omission, from the ECJ decision, of those particular comments of the Advocate General was significant. Given the reference, in the ECJ decision, to “all relevant facts and circumstances”, and given that these were not necessarily limited to the non-exhaustive examples provided in that decision, the size of the undertaking could not be excluded from consideration. The licensed use by Linex, although small, was genuine. The full revocation was therefore set aside. However, the registration was revoked in part, the specification being limited to those goods for which use had been shown.

    Omega - In an appeal to the High Court (Mr Justice Jacob) from a decision of the Registrar, it was held that mere reference to Section 46(1)(a), in revocation pleadings, will not automatically bring into play a period earlier than the five years preceding the application for revocation as the period to be considered for non-use.

    Omega Engineering Inc. of the USA applied for partial revocation of a registration in Class 9 for Omega of the Swiss watch manufacturer Omega SA. The Registrar granted partial revocation of the registration and Omega SA appealed this decision to the High Court. Omega Engineering Inc cross appealed on the matter of the effective date of the partial revocation which the Registry Hearing Officer had decided should be the date of the application for revocation. It is the aspect of the effective date of partial revocation of the registration that is of concern in this article.

    Omega Engineering Inc. had based its revocation application on both Section 46(1)(a) and Section 46(1)(b) of the Act. Section 46(1)(a) relates to non-use of a mark for the five years following completion of the registration. Section 46(1)(b) relates to non-use of a mark over any uninterrupted five year period. Omega Engineering’s pleadings merely stated that the Omega SA registration had not been used in relation to certain goods “for at least the last five years” and that it “should be revoked under Section 46(1)(a) or, in the alternative, under Section 46(1)(b) of the Trade Marks Act 1994”.

    Omega SA sought to prove use during the five years immediately preceding the revocation action, but not for any earlier five year period. Omega Engineering argued that, because the onus to prove use was on Omega SA, and Omega SA had not shown use for an earlier five year period, the grounds therefore existed for revocation of the registration from an earlier date. Omega SA argued that the pleading, as it stood, did not properly bring into play in the proceedings a five year period earlier than the five year period immediately predating the application for revocation, and they had no obligation to show use for a period that was not properly at issue in the proceedings.

    The Judge agreed with Omega SA’s view. The pleading had only stated “at least the last five years”. Mere mention of Section 46(1)(a) was not sufficient to bring into play an earlier period. The party seeking revocation must be explicit about the period or periods of non-use claimed, and the actual date from which they seek effective revocation, if they want that date to be earlier than the default date, which is the date of filing the revocation action. Omega Engineering’s appeal was dismissed.

     

    Comment

    All of these cases demonstrate the need for both sides to be careful and precise in addressing the issues in a revocation action.

    For the applicant for revocation it is essential to specify the exact five year period for which the registered proprietor is requested to prove use and the actual date from which effective revocation is sought. If alternative five year periods and effective revocation dates are being pleaded, then these also need to be specified. This is particularly important if revocation is being sought to clear the way for registration of the Applicant’s own mark.

    For the registered proprietor the maintenance of archive materials with dated samples showing actual commercial use in the relevant marketplace of the mark, as registered, for as many as possible of the goods/services of registration is going to provide the best basis for evidence to be used in defence against a revocation action. This is, of course, not always easy to achieve, but it is a good practice measure for at least the major trade marks of a proprietor. Once a mark has been on the Register for more than five years anyone may apply to revoke the registration for non-use and proprietors may find themselves in the unfortunate position of having to defend their registrations against such actions on a number of occasions.