Use of a trade mark: when ownership isn't enough

Posted by Ben Evans on
The Appointed Person has recently upheld the Hearing Officer's decision in the joined opposition and revocation case O/420/15 VAUX.

Actions at the UK IPO are heard by a Hearing Officer but if a party feels that the Hearing Officer has made an error (in law or fact) in his or her decision then they can appeal the decision, either to the High Court or, more frequently, to the Appointed Person. As with any appeal the Appointed Person won't re-hear the case but will, instead, consider the parties' submissions on the points that have been appealed. The case of O/420/15, VAUX involved the trade mark VAUX registered, in the UK, back in 2006 in class 32 for "Beer, ale, stout and porter, all included in class 32" and owned by Vaux Beers Limited ("Beers"). In 2012 VSES Projects Limited ("VSES") applied to revoke the mark for non-use and, the following day, applied to register the identical VAUX mark, in class 32. Beers responded by filing an opposition against the VSES application based on its own VAUX registration. The opposition and revocation cases were consolidated with proof of use being requested as part of the opposition proceedings and, also, being required in defence of the revocation proceedings.

The Hearing Officer found that Beers had not made genuine use of its mark, in the relevant period, and accordingly the mark was revoked for non-use. Beers appealed this decision to the Appointed Person, Emma Himsworth QC. The appeal was on three grounds, all of which were, ultimately, rejected by the Appointed Person:

Beers claimed that the Hearing Officer had erred in finding:

  1. that there had not been genuine use of its mark. The Appointed Person made reference to the leading CJEU decision in Case C/40/01 Ansul BV v Ajax Brandbeviliging BV [2003] ECR I-2439. Beers' claim was that it had purchased, and owned, various domain names including the word 'VAUX' and that this showed use of the mark. However, the Appointed Person deided that mere ownership of a domain name is not genuine use of a mark, as it does not maintain or create a market share for the goods.
  2. that it had not resumed use in line with Section 46(3) of the Trade Marks Act 1994 ("the Act"). Section 46(3) allows for the resumption of use following the expiry of the usual 5 year use period and that such resumption of use can be considered as genuine use. However, in this instance the Appointed Person agreed with the Hearing Officer in finding that Beers could not rely on this provision because the use it sought to rely on was not prior to the filing of the application for revocation i.e. there had been no resumption of use prior to the application for revocation.
  3. that it had no "proper reasons for non-use". Beers claimed that a number of issues had prevented it from using the mark and that this constituted proper reasons for non-use. Specifically Beers referred to the death of an uncle of the director of Beers back in 2008, a delay in obtaining recipes for the original beer and adverse publicity surrounding the closure of the original VAUX brewery as all constituting proper reasons for non-use. However, the Appointed Person disagreed finding that "loss of protection by reason of non-use is properly to be regarded as the rule and not the exception". The death of the director's uncle did not justify relaxation of the five year period nor did it properly explain the lack of use of the mark in that fiver year period. The other claims regarding the delay in obtaining the original recipe and the adverse publicity were similarly discounted.

The Appointed Person's decision is certainly not surprising but is nonetheless a useful example of the Ansul principles in practice and a reminder to all brand owners of the importance of using their trade marks.

 

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Ben is a dual-qualified Solicitor and chartered trade mark attorney and advises clients on both contentious and non-contentious intellectual property matters.

Ben Evans
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