This article concerns an appeal by the proprietor (“Quasar”) of UK Trade Mark No. 2409353 Q-ZAR in Classes 25, 28 and 41 (“the Mark”) against the decision issued on 11 March 2013, which revoked the marks protection in all goods and services of the registration pursuant to Section 46(1)(a) of the Trade Marks Act 1994 (“the Act”), namely:
Class 25: Clothing, footwear, headgear
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; electronically activated toys; electronically activated chest pack amusement games utilising electronic weapons and target apparatus for simulating combat conditions; toy guns, laser activated toys and video game machines; protective padding
Class 41: Entertainment services; amusement centre services and recreational services
Quasar appealed on two grounds:
- The evidence was not properly evaluated and the Hearing Officer ought to have held sufficient use had been shown; and
- The approach to assessment of use of the mark in a particular form was wrong. Even if the mark is not maintained for all goods and services, there is evidence to establish use for “electronically activated chest pack amusement games utilizing electronic weapons and target apparatus for stimulation combat conditions” in Class 28.
There was no oral hearing at first instance or on appeal.
With regard to evidence of use, Quasar relied on a single Witness Statement, with exhibits consisting of invoices from 2008 to 2009 relating to sales of equipment to various undertakings in Europe (two invoices were to the UK), with descriptions such as “Q-Zar Gun and Body Armour”. Whilst the goods appear to have been supplied to undertakings in Europe, they were either manufactured in, or supplied from, the UK. Images of the use of Q-ZAR on the products were provided:
Section 46(2) of the Act provides exceptions to the rule that use of a mark must take place within the UK to constitute genuine use:
… use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes.
Quasar argued the invoices in respect of the exported goods demonstrated that Q-ZAR had been put to genuine use for purposes of maintaining the registration. The Hearing Officer did not agree and felt there was no evidence showing that the goods were exported with Q-ZAR affixed. Quasar argued that the Hearing Officer failed to have adequate regard to the inference that could be drawn that guns of the kind shown in the image were those referred to in the invoices.
The Appointed Person agreed with Quasar that the invoices demonstrated use of Q-ZAR on laser guns. In this regard, there would be “no reason why an undertaking which is in fact making and supplying laser guns which are in the picture shown clearly marked with the Q-ZAR mark and describing them as Q-ZAR guns in its invoices would not be marking and supplying such Q-ZAR branded guns for export”. In addition, the Appointed Person felt that “even if the word mark Q-ZAR only appeared physically on the guns rather than on the rest of the apparatus, because the guns were not separate items (in at least some of the sales) but were apparently integral to the game system as a whole, it would be right in the specific circumstances of this case to treat the game as a whole as being marked with the Q-ZAR mark for the purpose of Section 46(2) in virtue of the key element of it (the laser gun) bearing that word mark”.
However the Appointed Person considered Quasar’s written arguments and evidence seriously deficient and specifically declined to criticise the Hearing Officer in regard to the invoices: “it is hardly surprising that the hearing officer did not accept it since it is only faintly to be detected even in the arguments on this appeal”.
With regard to the body armour per se, the Hearing Officer felt that the mark shown was not use of the mark as filed. Instead, he held that “the average consumer may well not see the first element as the letter Q but a stylised form of the letter O”. The Appointed Person felt this finding was too narrow. The body armour and laser gun were part of the same kit, such that the average consumer would likely consider the mark on the body armour to be Q-ZAR, particularly given the use of Q-ZAR on the laser gun.
The Hearing Officer also held that the invoices were insufficient to establish or continue a market. Again, the Appointed Person disagreed with this, taking into account the evidence of substantial sales in other territories as proof that Quasar intended to maintain its market. “The hearing officer did not take into account, again because he was not actually invited to do so by the proprietor, the fact that systems of this kind were likely to be infrequent purchases…the proprietor’s evidence was very weak”
However, the Hearing Officer and the Appointed Person were both of the same opinion that Quasar failed to demonstrate use of Q-ZAR in respect of all goods and services.
Quasar also sought to submit evidence after the Hearing Officer’s decision in the form of a letter from the Curator of the Laser Tag Museum Louisville and a letter from Quasar to Laser Arena Nottingham containing a trade mark licence. However, this evidence was inadmissible given that Quasar failed to explain why the materials were not available from the outset. In addition, it had no important influence on the outcome of the case. Furthermore “this material is not even evidence. It is not exhibited to any witness statement and cannot properly be taken account of for that reason alone.”
The appeal was dismissed bar the below Class 28 goods:
“Electronically activated chest pack amusement games utilizing electronic weapons and target apparatus for simulation of combat conditions; protective padded body armour specifically for use in such games; toy laser guns specifically for use in such games”.
The inadequacy of Quasar’s evidence and submissions was also taken into account in the award of costs.
This case highlights the need for careful and thorough preparation of evidence and written arguments, particularly where there is to be no oral hearing.
Charlotte Blakey 23 April 2014
This article first appeared in the May 2014 edition of ITMA Review