Decisions from the Appointed Persons of the UKIPO have won a special place in our hearts here at KWM. While we can’t always agree on the outcome, the level of analysis and sheer common sense displayed is often a breath of fresh air (unsurprising given the calibre of those that are or have been APs), and these decisions deserve more publicity.
A recent decision in this vein is that of Ms Amanda Michaels in Thomas Plant Birmingham Limited v 151 Products Limited (O-167-14, 21 March 2014).
The decision emphasises the importance of using your mark in the registered form when it comes time to try to enforce your mark in the UK and Europe in the context of opposition proceedings (among other things). Put simply, if an earlier mark relied on was registered for 5 years as at the advertisement date of the opposed mark, the opponent must – effectively – “put up or shut up”. That is, the opponent must prove that it has put the registered mark to genuine use during the relevant period, otherwise the opposition will fall away. It won’t even get to first base.
This threshold question has been the downfall of many an opponent over there. One of the points that plays out again and again is whether the mark that the opponent has used is sufficiently similar to the registered mark such that use of the former constitutes genuine use of the latter. The legal test boils down to whether the mark as used differs only in elements which do not alter the distinctive character of the registered mark.
Facts and background
In the instant case, 151 Products opposed an application by Thomas Plant for a series of two marks, namely HOME MADE and that mark in the stylised script below. 151 Products’ opposition was based on its earlier registration for the word mark HOME MAID.
Thomas Plant put 151 Products to proof of use of its HOME MAID mark, and 151 Products’ evidence of use of its HOME MAID mark was in the following forms:
The Hearing Officer took the view that these versions of the mark altered the distinctive character of the registered mark (the second case more so than the first).
The decision of the AP
On appeal, Ms Michaels acknowledged that the application of the tests was a matter of degree turning on the specific facts. She referred to the decision of Geoffrey Hobbs QC sitting as Appointed Person in Catwalk Trade Mark (O-404/13), in which he had to consider whether a registration for the word mark CATWALK was supported by use of the stylised mark below (long story short, it wasn’t):
In his inimitable fashion, Mr Hobbs QC – quite possibly the author’s favourite ever Appointed Person, or at least in the top two – held that:
“The stylised form of the word CATWALK is indeed a variant of the word CATWALK as registered. The way in which the former individualises the latter may perhaps be analogised to the way in which a signature individualises the name it represents. It appears to me that in terms of its visual impact, there is visual individualisation to a degree which causes the stylised form of the word CATWALK to differ distinctively from the word CATWALK in ordinary letterpress.”
Ms Michaels put it this way, referring to the Catwalk decision: “the differences were not, perhaps, very great, but were material”.
She went on to hold that the Hearing Officer was entitled to hold that the stylised versions of the marks made visual and conceptual changes of distinctive significance as against the word mark HOME MAID.
Thus the opposition failed for lack of proof of use, without any need to consider the substance under section 5(2)(b).
What about Australia and New Zealand?
On the procedural side, opponents in Australia and New Zealand can breathe a sigh of relief, as we do not have “proof of use” provisions in the context of opposition proceedings.
On the substance, there are some key similarities between the UK test and those applied in Australia and New Zealand in respect of determining whether one form of use of a mark supports a mark registered in a different form. The New Zealand test is the same as that in the UK, in principle at least, and the Australian test is whether the mark has been used with additions or alterations that do not substantially affect the identity of the registered mark.
Whether the same decision would be reached in Australia and New Zealand in the HOME MAID scenario is a separate matter. What the leading cases will tell you is that the issue is highly fact-specific, and the application of the relevant principles has not always been consistent (if you have a spare afternoon, perhaps have a go at reconciling Gallo with Colorado). It is important to consider the level of inherent distinctiveness of the verbal element, and whether any oral use can be found.
So, the evidence that is filed will be all important. If you face this type of challenge, you should doggedly track down any and all instances of use – not only in print, but also in radio or television or web-based contexts – to best support your case.
Of course, in Australia, we also have a general discretion not to remove in the context of a non-use action, which has recently been exercised quite broadly in a number of decisions. The use of these alternate forms of the registered mark may count in this regard. The non-use exceptions in New Zealand are not so generous.
The take away? Wherever you trade, if you have a word mark registered, and your main or only market-facing use is in a stylised form, ask yourself whether you are using the word as a mark (and perhaps even keep a folder handy with examples), and also consider whether the logo is worth registering separately.