This article, which first appeared in the September 2015 ITMA Review, reviews a case which reiterates that, to prove genuine use, adequate proof of use needs to be submitted.

On 28 September 1994, Associated Newspapers Limited (‘ANL’) applied to register METRO in Class 16 (Registration No. 1586405 of 24 January 1997).

On 3 October 1997, Bauer Radio Limited (‘BRL’) applied to register METRO RADIO for a range of services covering advertising, marketing and promotional services (Class 35); telecommunications and a broad range of broadcasting services (Class 38); and a range of radio entertainment services and other activities including arranging, organising and provision of concerts, live and musical entertainment (Class 41) (Registration No. 2147054B of 23 July 1999).

On 22 May 2000, ANL filed an application for metro.co.uk and metro.com (series mark) under Application No. 2233378 which was published on 8 February 2008 for a wide range of goods and services in Classes 09 (digital music, etc.), 16, 35 (advertising and promotion of business services, etc.), 36, 38 (telecommunication services, etc.) and 41 (publishing services, organisation of exhibitions and shows, etc.).

OPPOSITION AND APPEAL

BRL opposed ANL’s Application on the basis of its earlier Registration in Classes 35, 38 & 41. ANL put BRL to proof of use of its mark in relation to all services relied upon during the relevant period. ANL challenged parts of the witness statement filed by BRL and in particular the relevance of the exhibit in the form of a print-out dated after the end of the relevant use period and submitted that BRL did not evidence genuine use of its mark for advertising services. BRL did not file further evidence in reply.

ANL filed an application to revoke METRO RADIO for non-use for all registered services other than radio broadcasting services.

These actions were consolidated at which point BRL filed further evidence in reply in the form of two witness statements.

The Hearing Officer held that BRL provided satisfactory proof of use in relation to certain parts of the specification and in particular advertising, marketing and promotional services (Class 35), website services (Class 38) and a range of services including arranging and organising concerts, live entertainment and musical performances (Class 41). Further, it was held that there was a reasonable degree of similarity between the marks and that there was a likelihood of confusion in relation to all goods and services which were identical or similar.

ANL filed an appeal (O/249/15) on the basis that BRL’s opposition should have only succeeded in relation to a restricted range of services all connected with radio broadcasting and that BRL’s mark should have been revoked in relation to all other services. In this connection, ANL challenged the Hearing Officer’s findings of use in relation to concerts, live entertainment and musical entertainment, advertising services and website services.

BRL filed a Respondent’s Notice which was several months out of time. Further, BRL produced another witness statement which sought to clarify and supplement a previous witness statement by exhibiting additional documents. ANL objected to BRL’s application to file the Respondent’s Notice out of time as well as the further witness statement.

On appeal, the Appointed Person analysed whether BRL’s use was genuine (established in Ansul and La Mer) in relation to the services that the Hearing Officer found to be satisfactory by looking at whether the use created or maintained a share of the market and how the relevant public viewed the relationship between the mark and the goods/services during the relevant date (Stichting BDO v BDO Unibank [2013] EWHC 418 (Ch) at [51]). In some respects, BRL’s evidence was of low quality, did not specify the particular dates of use nor did it explain the nature of some of the supporting documents and was incomplete.

Although BRL did not provide a proper explanation for the late filing of the Notice or identify any errors in the Hearing Officer’s decision, the Appointed Person considered that ANL was not prejudiced by the defect in the Notice or by its lateness and therefore allowed BRL to rely on the Notice. In connection with BRL’s application to adduce new evidence on ANL’s appeal, BRL had earlier opportunities to file evidence which it failed to do so and did not provide a proper explanation for the delay. Case No. O/147/13, Naturex, which gives a useful reminder of the law and practice on admitting new evidence on appeal, was cited. BRL was not permitted to adduce the new evidence on appeal for many reasons including it would be prejudicial to ANL.

The majority of the broader specification terms under METRO RADIO were revoked for non-use as genuine use was not proved but the mark remained registered for those services in relation to radio services. In connection with the opposition, BRL’s remaining specification was taken into account when globally assessing the likelihood of confusion at the relevant date.

INVALIDATION ATTEMPT

ANL filed an invalidation action against METRO RADIO in respect of advertising services and relied on METRO in relation to ‘newspapers’ on the basis that newspapers are highly similar to advertising services. BRL put ANL to proof of use of which a substantial amount was filed and was proved to be genuine use. A likelihood of confusion was found in respect of advertising services and BRL’s registration should be cancelled in respect of these services.

BRL appealed the decision submitting that newspapers and advertising services were dissimilar. BRL was also prepared to amend its specification to ‘radio advertising services’ should the submission be dismissed. It was held that the respective goods and services were complementary and as such, there was a likelihood of confusion. Further, the fall-back wording was considered to be procedurally unfair due to the time at which this was proposed. METRO RADIO was found to be invalid save for radio advertising and the unchallenged services.

CLOSING THOUGHTS

This case reiterates that in order to prove genuine use, adequate proof of use needs to be submitted. The evidence must be of probative value, clear and precise as to what use there has been and explain why a broader specification is appropriate for any narrow use. Further, there must be a real commercial exploitation of the mark for the requisite purpose at the relevant time whilst taking into account the perceptions of the average consumer.  It is also a useful reminder of the law and practice on admitting new evidence on appeal.

Eleni Mezulanik 9 October 2015
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