Citation(2016) 28 SAcLJ 286
Date01 December 2016
Published date01 December 2016
Case Note

Maier v ASOS plc

[2015] EWHC 220

This note explores the UK, Singapore and European Union (“EU”) case law on partial revocation of a registered trade mark for non-use in light of the recent UK decision of Maier v ASOS plc (“Maier”). It shows that the UK and Singapore courts have hitherto, in determining whether a trade mark is subject to partial revocation for non-use, adopted an approach based on the “fair description” of the actual evidence of use, with only secondary emphasis on the actual terms of the specification. Conversely, it shows that the EU courts' approach has been to analyse the precise terms of the specification, albeit from the perspective of the average consumer of the goods/services in question. It argues that, despite achieving similar outcomes, there is a certain tension between these dissimilar approaches that may be of particular concern to intellectual property professionals seeking to frame their clients' cases in the most advantageous way. It submits that the recent case of Maier marks a step forward by unifying the more technical approach of the European courts with the common-sense approach adopted by the UK courts, as well as providing the opportunity for a timely review of the applicable principles.

I. Introduction and background

1 The monopoly over use of a trade mark conferred by the public registration of that mark is necessarily limited in order to safeguard various competing interests.1 Broadly, the extent of monopoly over use of a trade mark conferred and the restrictions placed on it are similar

worldwide.2 Most, if not all, trade mark systems will not allow for registration of a descriptive mark;3 other traders may need to use such a mark. Generally, registration will not be permitted where the mark may be misleading or deceptive;4 misleading trade marks should not be afforded legal protection, and so forth. Perhaps more subtle, however, is the public interest in ensuring that the owner of a trade mark actually use the marks for which registration is sought. Put simply, if the marks are not used, a precious economic resource, which may be put to better use elsewhere, is unfairly trapped.5

2 In many jurisdictions, trade mark laws have been set out in similar ways in order to reflect these concerns. At the most basic level, the rights holders' interest is balanced against competing interests by limiting the sphere of the monopoly granted to the owner of a registered mark, which only extends to use of the mark in relation to certain goods/services. Further, to properly delineate the right which is to be conferred, applicants seeking registration of their mark are required to define the goods/services for which they intend to use (or have used) the mark in terms of certain very precise (if somewhat arbitrary) categories, agreed by an international group of taxonomists, that is, the Nice classification system.6“North Pole” for “bananas” seems to be the standard example for reasons unknown.7 Despite unauthorised use of an identical or similar mark, there will be no case for infringement where competing use of the mark is made in relation to dissimilar goods or services:8 for example, “North Pole” for “aircraft”. Further, unless the mark and goods/services are identical, there must be similarity to such an extent that is likely to confuse the public.9 In other words, traders are

free to use “North Pole” for any other business opportunity sufficiently dissimilar from bananas, thereby alleviating some of the public interest concerns in allowing one individual or entity a monopoly over use of the mark (and marks which are confusingly similar).

3 The requirement that an applicant for registration of a trade mark specify the goods for which the trade mark is sought is, however, open to abuse by selection of an unnecessarily wide description in an attempt to secure the broadest protection.10 As such, trade mark laws generally require the applicant to have already used the mark, or to state that there is a genuine intention to use the mark, for the goods registered.11 However, even if there is genuine intent, the Registrar cannot be certain at the point of registration that use will in fact result. Most trade mark laws allow for a period during which no non-use cancellation proceedings can be brought against the mark.12 After such a period, if there has been no genuine use made of the mark, the law reflects the public interest by making the registration vulnerable to challenge in order to make way for others.

4 For the most part, this is a question of fact, that is, whether the registrant has actually “used” the mark, given the definition of use in the context of the relevant legislation. However, the UK, EU and Singapore courts have significantly developed the concept of “use” of a mark. Generally, the approaches require that the “use” is (inter alia) genuine, non-trivial, consistent with the essential function of a trade mark and for the purposes of commercial exploitation.13 If the owner cannot show that the marks have been used in the manner described, “proper

reasons” must be given in order to maintain the registration.14 The above criteria ensure, inter alia, that the owner of a trade mark cannot claim use of the mark based on a technicality.

5 Provided that the specification is of “sufficient clarity and precision to enable the competent authorities and economic operators … to determine the extent of the protection sought”,15 the UK, Singapore and EU trade mark systems generally allow for the applicant to register their mark in respect of any and all items found in a single Nice class. All three systems also allow for one application to claim such descriptions in multiple Nice classes. In consequence, despite the above- mentioned requirement to state a bona fide intention to use the mark, it is conceivable that some specifications may be very wide indeed. Therefore, where there is genuine use of part only, it is reasonable for the law to provide a mechanism for unduly wide claims to be cut down by affected parties. As such, if one takes a hypothetical registration for “North Pole” and pretends that it covers all goods listed in the class heading of Class 31 (“Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt”), which is ultimately used only on “bananas”, it might be concluded that there is sufficient room for another entity to use the mark for, say, “cut flowers” without raising the possibility of confusion. Nonetheless, the trader of “cut flowers” would be in theory unable to do so because of the earlier registration.

6 The key question in such cases is, of course, where the line ought to be drawn. There is a natural tension in any trade mark regime between two competing interests. Taking an overly restrictive approach to the proper specification of goods/services may unduly limit the registrant's monopoly over the use of the mark and so undermine the purpose of laws provide protection to trade marks. Taking an overly broad approach may allow the applicant to manipulate the trade mark system unfairly, to the detriment of competition.16 This case note investigates the courts' answer to the above question.

7 For practical reasons, this case note will be limited in scope to an investigation of the approaches taken by the UK, EU and Singapore courts as evidenced by the relevant case law and decisions of the respective trade mark authorities where available.

II. The UK approach

8 The first significant case dealing with the issue of partial non-use revocation under the UK Trade Marks Act 199417 (“UK Trade Marks Act”) was Premier Brands UK Ltd v Typhoon Europe Ltd,18 a decision of the Chancery Division of the High Court. In that case, Neuberger J, addressing the consequences of a conclusion that some (but not all) of the items in the specification had not been the subject of genuine use in the UK during the five-year period after registration, considered that the proper method was as follows:19

It appears to me that one simply looks at the list of items on the register and asks oneself, in relation to each such item, whether or not the mark has been used ‘in relation to’ or ‘in connection with’ that item during the past five years. If the answer is in the affirmative, then the mark can remain registered in respect of that item; if the answer is in the negative then, subject to any question of discretion, the registration is revoked in respect of that item. One does not dig deeper and, as it were, narrow a particular category of item to reflect the extent of the goods to which the mark has been used.

This fairly simple approach was later compared to the “blue pencil” which is traditionally used in manuscript editing.20 The “blue pencil” approach would seem only to permit deletion of items from the specification, as there is no scope for amendment. If the item cannot be deleted, for example, because there has been use of a subset of the item, the item should be allowed to stand in totality.

9 Neuberger J's approach was criticised in MINERVA Trade Mark,21 where Jacob J noted that the learned judge had not been referred to the earlier case of Mercury Communications Ltd v Mercury Interactive (UK) Ltd.22 In that case, albeit discussing the law under the old UK Trade Marks Act 1938,23 Laddie J opined that an overly wide specification (“computer programs”) could be partially cancelled.24 However, Laddie J did not go so far as to say that the court had authority to rewrite the

description contained in the specification of goods/services,25 nor did he explain what method should be adopted to decide on the extent of cancellation.

10 Jacob J adopted Laddie J's view that it was, in appropriate circumstances, necessary to “dig deeper” into the meaning of the description when comparing it to the extent of use of...

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