Winning gins

A recently heard case before the United Kingdom Intellectual Property Office (UKIPO) serves as a timely reminder of the principles surrounding ‘genuine use’ in trade mark proceedings.

Some readers may be aware that a trade mark is very much a ‘use it or lose it’ right and marks can become vulnerable if they are not used in the five year period following registration (at least in the UK – the period is even shorter in other territories such as China).

This is a situation that the Spanish distillery Destileras M.G., S.L and Importaciones y Exportaciones Varma, S.A (the Proprietor) recently found itself in after a competitor tried to cancel its trade mark.

Background

The Proprietor owns a 2D trade mark of a distinctively shaped ‘London Gin’ bottle stamped with various elements such as a lion logo and the words “MASTER’S SELECTION” (the Proprietor’s Mark).

On 18 March 2021, Inver House Distillers Limited applied to revoke this mark on grounds of non-use.

Under section 46(1)(1) of the Trade Marks Act 1994, one party may apply to revoke another’s trade mark on the basis that it has not been genuinely used in the five years following registration.

Inver argued both that the Proprietor’s Mark should be judged as a figurative image mark, rather than a shape trade mark, as this was the specific category in which it had originally been filed. They also argued that the evidence submitted by the Proprietor was insufficient to show genuine use as there were a number of discrepancies between the actual registration and the use evidence submitted.

The UKIPO agreed that there were various discrepancies in the evidence provided, some of which it termed “far from overwhelming”. However, it also cited the helpful summary of the test for genuine use given in Walton International: chiefly that there must be a “global assessment” which takes “all the relevant facts and circumstances” into account.

Adopting this approach, the UKIPO decided that despite the deficiencies in evidence, there was still nonetheless enough to show a “consistent and repeated pattern of sales…throughout the relevant period” and decided to reject Inver’s application accordingly.

Briffa comment

This decision should give some comfort to rights holders facing non-use cancellation proceedings that some discrepancies in their use evidence will not automatically prove fatal. It also shows that such evidence depends on quality rather than quantity. Specialist advice should always be sought: here at Briffa the team benefits from over 25 years’ experience assisting with all aspects of the trade mark filing and prosecution process and can assist with any queries you might have. If you need any further information in this regard, please do feel free to get in touch with us via info@briffa.com.

Written by Tom Synott – Senior Associate