EasyGuide Does Not Provide an Easy Guide On Trade Mark Revocation Proceedings

In the UK, trade marks can be revoked for “non-use” where, you guessed it, they have not been put to use for the goods or services registered under it. If a trade mark has not been used for the registered goods or services for a continuous period of five years (starting from the date of registration) a party can apply to have it removed from the register.

Non-use proceedings are often issued as part of a defensive trade mark opposition strategy, for example if a trade mark applicant can revoke the opposer’s trade mark then the grounds of opposition may fall away. Equally, non-use proceedings are used in trade mark litigation matters where a potential infringer is seeking to curtail the scope of a trade mark they are alleged to have infringed.

Generally speaking, a non-use revocation application works by way of the cancellation applicant identifying one or more five year date ranges on which non-use is alleged along with the relevant goods and services. The owner of the trade mark will then be provided with a set period of time (usually a maximum of four months) in which to provide evidence that trade mark has in fact been used in relation to the goods and services.

In the case of EasyGroup Ltd v Nuclei Ltd & Ors [2023] EWCA Civ 1247, in which Nuclei was successful in revoking the trade marks EasyGroup relied on for non-use, the Court set out a number of helpful principles that formed the law on what amounts to genuine use (i.e. what a trade mark owner needs to prove to successfully defend a non-use revocation application). Amongst others, these principles include the owner of the trade mark or an authorised third party actually using it, that use being “more than merely token” and that the use must relate to goods or services which are already marketed or which are about to be marketed and for which preparations are already underway.

More recently, in decision number BL O/0126/25 Christopher Clark issued a non-use application against EasyGroup’s UK trade mark for EASYGUIDE. The EASYGUIDE trade mark was entered into the register on 30 August 2005, so it was vulnerable for non-use, and I imagine that EasyGroup had alleged that Mr Clark was infringing it.

In these proceedings, EasyGroup to filed evidence to support its position that it had been making genuine use of the EASYGUIDE trade mark. After considering the evidence, at paragraph 34 of the Hearing Officer’s decision, it was found that “It is clear from the evidence that “easyGuide” has been used on a web-based booking platform between 2019 to at least April 2022 by an authorised third party and that through the website, the user may book tickets for a variety of activities, such as excursions and seats for shows. However, I do not consider this to encompass any of the disputed services in class 39”. At paragraph 35, the Hearing Office went onto conclude that the evidence filed by EasyGroup did not allow her to find that EasyGroup had used the EASYGUIDE trade mark in relation to any of the contested goods or services; the evidence showed that the mark was being used for a booking platform but, as the Hearing Officer pointed out, EasyGroup did not register the trade mark for either “downloadable mobile applications” in class 9 or for the “booking of tickets or seats for travel” in class 39 or for “ticket reservation and booking services” (in relation to, inter alia, the likes of entertainment, cultural or sporting events) in class 41.

The outcome of the mater was, as a result of EasyGroup not being able to demonstrate that the EASYGUIDE trade mark had been put to genuine use for the relevant goods or services, that the trade mark was revoked for non-use and is now removed from the register (with an award of costs made in Mr Clark’s favour).

The case is a good reminder of the principle cited by the Hearing Officer in Guccio Gucci SPA v Gerry Weber International AG, Case BL O/424/14 “The rule is not just “use it or lose it” but (the less catchy, if more reliable) “use it – and file the best evidence first time round – or lose it”. In any non-use revocation proceedings, the trade mark owner should be ensuring that they do put their best foot (and evidence) forward to allow the Hearing Officer to easily identify that the relevant mark has been put to genuine use.