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Case law: Ruling gives guidance on when trade mark can be revoked for lack of ‘genuine use’

Trade mark owners should ensure they are making ‘genuine use’ of their trademarks given the nature of their products and business - particularly if it could be argued that they are only using their trademarked goods to promote another business – otherwise they risk their trademarks being revoked.

This update was published in Legal Alert - February 2019

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Failure to make genuine use of a mark for at least five years can mean it is liable to be revoked. The burden is on the trade mark owner to prove genuine use.

A trade mark was registered in relation to clothing, sweat bands, caps (Class 25 in the classes used to categorise goods and services for the purposes of trade mark registrations) and in relation to boot camp fitness classes (Class 41). The registration in relation to the clothing sweat bands and caps was challenged on grounds the owner of the mark had not made genuine use of it for those goods. The challenger argued that the relevant goods had only been used to promote the boot camp classes and were not sold commercially in their own right; and the use of the trade mark was therefore merely ‘token’ and there had been no genuine use or commercial exploitation of it.

The UK Intellectual Property Office agreed with the challenger and revoked the trade mark for non-use in relation to clothing, sweat bands and caps.

It said it was possible for there to be genuine use of a trade mark in circumstances where its use has been minimal. But in this case sales of the relevant goods were so insignificant, both in term of the amount sold and how often sales were made, in a very large clothing market, that they did not amount to genuine use or commercial exploitation of the mark.

Operative date

  • Now

Recommendation

  • Trade mark owners should ensure they are making ‘genuine use’ of their trademarks given the nature of their products and business - particularly if it could be argued that they are only using their trademarked goods to promote another business - or risk their trademarks being revoked.

Case ref: 0/740/18 Poppy Coleman

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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