The trade mark case review below was prepared by Charlotte Blakey (Keltie LLP) and highlights the importance of demonstrating “genuine use”/”proper reasons for non-use”.

This review relates to an appeal brought under Section 76 of the Trade Marks Act 1994 (“the Act”) by the registered proprietor (“Jackson”) of International Registration No. 787794 ROYAL SHAKESPEARE (“the Mark”) against the decision issued at BL O-369-11, dated 26 October 2011. This decision stated that the Mark’s protection in the UK should be revoked on the grounds of non-use under section 46(1)(a) and/or 46(1)(b) of the Act. The Hearing Officer held that there had been no genuine use of the Mark during the relevant periods, nor had there been proper reasons for such non-use.

The Mark covered “beers, including low-alcohol and non-alcoholic beers; fruit drinks, fruit juices and isotonic drinks” in Class 32. However, this was later reduced to “beer” on appeal hearing.

Grounds of Appeal

The grounds of appeal were as follows:

(1)   in finding non-use, the Hearing Officer wrongly held that certain letters exhibited in Jackson’s evidence did not constitute “advertisements” and/or did not highlight the availability of the relevant product to the trade (Exhibits 2, 3 and 4 of the Witness Statement); and

(2)   if the Hearing Officer was correct in his finding of non-use, he had wrongly failed to give proper consideration to the unique nature of the industry concerned and to the logistical difficulties experienced by Jackson when seeking a business partner or licensee, which together were sufficient to amount to proper reasons for non-use.

Ground 1 – Use

Exhibits 2, 3 and 4 are the subject of an order for confidentiality and their specific description has been redacted from the public versions of both the first instance decision and the appeal decision. However, the summary from the Witness Statement is not subject to confidentiality and is reproduced below:

6. The Company has been actively engaged in the attempt to use and keep available for use its ROYAL SHAKESPEARE mark in the UK since at least as early as 1997, as evidenced at least by the Coexistence Agreement between the Company and Forte Limited and Forte (UK) Limited, which is attached as Exhibit 1.

7. Exhibit 2 consists of a letter to Mr Clarke of The Hook Norton Brewery Co Ltd, requesting assistance with the brewing and distribution of the ROYAL SHAKESPEARE product under licence in the UK. This letter constitutes an example of genuine use of the mark in the context of use on a business paper, which is trade mark use by extension of section 10(4)(d) of the Trade marks Act 1994.

8. Exhibit 3 consists of letters to Mr Riddiford of Brewer Design Consultants and Mr Shah of Exposure requesting assistance with the design of the intended label for the ROYAL SHAKESPEARE product, an example of which is attached to the letters. It can be seen from the further letter to Mr Riddiford that a response was received.

9. Exhibit 4 consists of correspondence with Mr Fraser of Fraser Management Ltd following an approach from the Company very similar to the letter to Mr Clarke of The Hook Norton Brewery Co Ltd (Exhibit 2). From this subsequent correspondence it can be perceived that:

a. The Company already has a complete conceptualisation of the ROYAL SHAKESPEARE product and all that is required is a UK brewer and distributor; and

b. The difficulty in obtaining a brewing and distribution contact under licence is the small number of available brewers which can carry out the specialised work over and above their own commitments. Indeed, the third party specialist in the industry, Fraser Management, was only able to suggest one contact which turned out to be unsuitable for the Company.

10. Due to the nature and set up of the Company, it is based in Austria and has a broad spectrum of business areas, the only effective method of conducting a successful business in the UK market for the ROYAL SHAKESPEARE product is by a third party brewing and distribution licence agreement. This is considered commonplace in the brewing industry, particularly for companies based overseas.

The Hearing Officer found that the evidence provided did not demonstrate sale of any product under the Mark, nor had there been any published advertisements, in the “traditional sense”, for any goods to be sold under the mark.

Whilst advertising may constitute genuine use [1], and the end-user, in this case the beer consuming public, does not necessarily need to have encountered the mark in the marketplace, the Hearing Officer did not consider the letters provided to be advertisements in the “traditional sense”. Instead, they were considered to be letters merely highlighting the availability of a trade mark that may be licensed, rather than the availability of any actual product. An idea or concept is not enough to constitute genuine use [2].

Further, it was argued by RSC that simply because a form of use may not be sham or token, this does not mean that it qualifies as genuine use.

At the Appeal, Jackson argued that the Hearing Officer had taken a too narrow view of what constitutes “advertising”, arguing that it should include the promotion and marketing of the availability or potential availability of a product.

However, the Appointed Person agreed with the Hearing Officer and found that the letters were in fact “pre-preparatory” steps exploring the possibility of creating a beer to which the Mark could be applied.

Ground 2 – proper reasons for non-use

The Hearing Officer set out various authorities relevant to the interpretation of “proper reasons for non-use”, such as the judgment of the CJEU in Haupl v Lidl, Stiftung & Co KG Case C­246/05 at [54]:

It follows that only obstacles having a sufficient direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as “proper reasons for non-use” that mark.

and that in Il Ponte Finanziaria SpA v OHIM Case C-243/06P [2008] ETMR 13 at [102]:

the concept of “proper reasons”… refers essentially to circumstances unconnected with the proprietor of the trade mark which prevent him from using the mark…

The key element here being that the circumstances relating to non-use were entirely out of the control of the proprietor of the trade mark.

In this case, whilst not finding an appropriate brewing partner may be a reason for the Mark not having been used, this did not constitute a proper reason for non-use. It was Jackson’s choice to seek protection for the Mark in the UK, even though it had no capacity to produce beer itself as the company is based in Austria. Therefore, it was through no fault but their own that they decided to apply for trade mark protection without a licensing arrangement to produce beer in place.

Jackson argued that there had been difficulty in finding a licensee as there was only one possible brewer available to them in the UK as they wanted to ensure that the beer had an ‘English’ quality to it. However, this brewer was not deemed appropriate, although the reasons as to why were not provided. Also, the requirement of this “English” quality is an example of another decision made by Jackson and not one out of its control. Therefore, Jackson’s offer to limit the specification to “English beer” or “beer brewed within the United Kingdom” was of no benefit.

The Hearing Officer’s finding that there were no proper reasons for non-use was upheld by the Appointed Person.

Appeal Decision

The Appointed person found that there was no genuine use of the Mark during either of the two five year periods relied on by RSC and that there were no proper reasons for non-use. Protection of the Mark in the UK was revoked with effect from 15 September 2008. Jackson was also ordered to pay a contribution to RSC’s first instance costs, as well as the costs of the appeal.

Comment

This appeal highlights the importance of demonstrating “genuine use” or “proper reasons for non-use”. Genuine use cannot be said to be the seeking of a business partner or licensee. Instead, it must be actual use of the mark for the goods/services covered and if advertisements are relied upon they must relate to an available product. Further, proper reasons for non-use must clearly be out of the control of the proprietor. The fact that a proprietor seeks to use a mark in a difficult business area is the choice of the proprietor and not an extenuating circumstance.

Charlotte Blakey   23 May 2013

[This article was first published in Issue 401 (May 2013) of the ITMA Review]