O/281/19 Revocation (Device Marks) – 23 May 2019
This decision is a good example of how the IPO approaches non-use challenges, and an insight into the economics of gift shops at public parks.
This decision is a good example of how the IPO approaches non-use challenges, and an insight into the economics of gift shops at public parks.
Old John is a Georgian folly and a Leicestershire landmark. Built in 1874, it is located in Bradgate Park, which is run by the Bradgate Park Trust. The Bradgate Park Trust registered various images of Old John as three trade marks. The first registration was to line drawings; the second to “textural designs”, the third to photographs. The marks were series marks. More recently, the Bradgate Park Trust sought to prevent local businesses from using images of Old John without paying a licence fee. Artists were also asked to pay for a licence to sell images of the landmark.
Local furore commenced, and one business applied to revoke the three marks for non-use. The counter statements did not defend the marks in every class, so some classes were revoked at an early stage. The decision considered here reviews the extent to which the marks should be revoked in respect of the remaining classes.
For some goods and services, although use was claimed, no sales figures were provided. So, for example, the failure to evidence sales of antlers or tea room services proved terminal.
For other goods, sales figures were provided for the seven-month period between April and October 2017. Not all such sales met the threshold; during that time, sales of thimbles totalled £2, which did not amount to genuine use. Neither would £16.80 worth of erasers or £17.00 of pencil sharpeners have sufficed. £234 of badges, however, did satisfy the Hearing Officer.
Some images of Old John used were too dissimilar to the registered marks to amount to genuine use, which was fatal to fridge magnets and restaurant services. However, the use in a badge containing other elements was found to be an acceptable variant.
The Hearing Officer quoted Mr Justice Arnold in London Taxi, noting that purely decorative use did not count; genuine use requires a mark be used to denote trade origin. In a passage one can imagine being cited by recipients of future requests for artistic licences, the Hearing Officer stated:
Photographs of landmarks (either in their original form or printed on to secondary goods), when they are clearly just photographs of landmarks, are likely to be viewed by the consumer as just an image being used for decorative purposes. The consumer is unlikely to view a photograph presented on goods commonly sold as souvenirs or mementos as indicative of trade origin.
Ultimately, the first and second registrations were entirely revoked. In relation to the third mark, the Hearing Officer considered what a fair specification would be given the goods and services which had been used. So, sales of venison could not support all of “meat, poultry and game, products made from meat, poultry and/or game” in class 29, and the specification was limited to “venison and products made from venison”.
This article was first published in the July issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please click here.
Contact
Declan Cushley
Partner
declan.cushley@brownejacobson.com
+44 (0)20 796 53991
Related expertise
You may be interested in...
In Person Event
'Autonomous vehicles: what the future holds' event
Legal Update
Utilising prime retail sites to improve the health of our nation
Legal Update
A new era of opportunity for high street regeneration?
Press Release
Browne Jacobson announces completion of employee acquisition of Two Twenty
Opinion
New bill reaches tipping point: bill on allocation of tips at final stages
Press Release
Browne Jacobson advise on merger of leading UK frozen food wholesalers Hopwells and Windsor Foodservice
Press Release
Browne Jacobson’s North-West banking specialists advise ThinCats on £10m facility to arcade bar operator NQ64
Opinion
Practical points from High Court ruling that Tesco has infringed Lidl’s IP rights in its famous yellow circle logo
Press Release
Browne Jacobson act on the sale of UK’s largest tech enabled confectionery distributor and wholesaler IBG
Legal Update
Knowledge exchange and intellectual property
Legal Update
Pitfalls for retailers to avoid when offering access to ‘buy now, pay later’ products
Press Release
Law firm Browne Jacobson appointed to work alongside the Government Legal Department - the Department for Environment, Food & Rural Affairs
Press Release
Browne Jacobson’s Manchester dealmakers advise Spatial Global on its acquisition of Heathrow based freight specialist Hollyport Logistics
Online Event
Register your interest to join our next Home Delivery Academy
Press Release
Browne Jacobson’s intellectual property lawyers ranked experts in World Trademark Review guide 2023
Press Release
Browne Jacobson advise on disposal of Sella Controls to HIMA Group
Press Release
Browne Jacobson’s dealmakers advise leading door hardware supplier and manufacturer UAP on its acquisition of Maher London
Opinion
Supreme court rules on retail tenant's service charge bill
Published Article
Consumer duty part 3 - 'The drill-down' into the 'cross-cutting' rules
Press Release
International leading digital disruption expert joins Browne Jacobson
On-Demand
The UK's green agenda - the outcomes of COP27 and actions since COP26
Press Release
Browne Jacobson’s retail lawyers advise Wilko on its strategic £48m sale and leaseback of Nottinghamshire distribution centre to DHL
National law firm Browne Jacobson has advised long standing retail client, Wilko on the sale and leaseback of its Nottinghamshire distribution centre in Worksop to logistics specialist DHL for £48m.
Press Release
Court of Appeal makes plea for legally enforceable arbitration for FRAND disputes
In the ongoing complex litigation between Optis Cellular Technology LLC and Apple Inc., the Court of Appeal ([2022] EWCA Civ 1411) has upheld the High Court’s findings that implementers of standard-essential patents (SEPs) cannot refuse to accept a FRAND license and continue activities in the meantime which constitute infringement: that party must commit to accept a court-determined license if it wishes to avoid an injunction.
Press Release
Suzanne Harlow joins Browne Jacobson as Non-Executive Director
Law firm Browne Jacobson is pleased to announce that Suzanne Harlow has been appointed Non-Executive Director of its Retail, Consumer & Logistics sector.
Legal Update
Is this the end for free returns?
Earlier in the year a number of fashion retailers, boldly announced the introduction of a charging fee for returning any product purchased via their online store. Yet, despite this commercial, and perhaps somewhat controversial decision, at least one major fashion giant that adopted this approach has recorded ‘historic highs’ in its September profits. Browne Jacobson partner, Cat Driscoll who heads up the firm’s commercial team in Manchester and is also head of its Fashion & Beauty sector discusses whether this change has put the average consumer off and whether the days of free returns are long gone.
Published Article
AI generated designs on retail products
Every AI will have its own terms of use. DALL·E 2’s Terms of Use dated 3 November 2022 specify that as between a user and Open AI, a user owns their prompts and uploads. Open AI also assigns to the user all rights in any images generated by DALL·E 2 for that user (subject to the user complying with those Terms of Use, and to a licence to use inputs and output to develop and improve the services).
Published Article
Consumer duty part 2 - 'The drill-down' into the 'cross-cutting' rules
Published Article
Bruce Willis AI and the problem with deepfakes
A deepfake of Bruce Willis is advertising Russian mobile phones. Many great artistic and metaphysical questions are raised by this performance. However, this article is going to look at the intellectual property law implications, from a UK perspective.
Press Release
Browne Jacobson announces former Aston Martin Vice President as Non-Executive Director of its Manufacturing & Industrials sector
Law firm Browne Jacobson has appointed former Vice President and Chief Planning Officer (CPO) of Aston Martin Lagonda, Nikki Rimmington as its first Non-Executive Director (NED) of its Manufacturing & Industrials sector strategy board.
Published Article
Luxury brands and sustainability – The challenges and solutions
Legal Update
The Retained EU Law
Created at the end of the Brexit transition period, Retained EU Law is a category of domestic law that consists of EU-derived legislation retained in our domestic legal framework by the European Union (Withdrawal) Act 2018. This was never intended to be a permanent arrangement as parliament promised to deal with retained EU law through the Retained EU Law (Revocation and Reform) Bill (the “Bill”).
Press Release
Browne Jacobson appoints its first Non-Executive to Chair to support its corporate sector strategy board
Published Article
The problematic transition to electric vehicles - what is the impact on manufacturing
It was reported in May 2022 that the BMW-owned manufacturer had been forced to put a temporary stop on the production of all manual transmission vehicles due to the global semi-conductor shortage and the war in Ukraine. Mini stated that the move was made in order to "ensure production stability".
Press Release - Careers
Browne Jacobson strengthens its UK&I commercial practice with hire of new retail & consumer specialist partner
Browne Jacobson has bolstered its commercial practice in the UK with the appointment of commercial contracts and international trade specialist, Emma Roake, into its City-based London team.
Opinion
Cameras in convenience stores: a potential hornet’s nest..?
Legal Update
Merger and Acquisition trends in the specialist lending market
Opinion
Court of Appeal overturns “fire and re-hire” injunction
The Court of Appeal overturned the “fire and re-hire” injunction, finding that there was nothing in the express contractual provisions preventing Tesco from giving the notice to terminate employment in the usual way.
Opinion
Compliance - small businesses and new regulation
The Federation of Small Businesses (FSB) has released a report setting out the impact of new and changing regulations arising from the pandemic on small businesses across the UK.
Opinion
80% hours for 100% pay? That’ll do nicely
As has been widely reported this week, some 3,000 UK workers are taking part in a six month trial to assess the viability of a four-day working week without any reduction in their normal pay.
Legal Update
The Omnibus Directive is almost here
Amongst the measures being introduced are new rules on online reviews, price reduction promotions, enhanced rights for free digital consumers, GDPR-style fines and information requirements on online markets.