The area of revocation of the registration of a third party on the basis of non-use is one which appeared to many to have divergent paths in the UK and in Europe. Many in the UK believed that where a UK trade mark was involved, any use was sufficient to defeat a claim that a mark had not been used and that where the trade mark was a CTM a certain level of use had to be shown. Given that both systems relied upon the same law, this could not be correct.
Anna Carboni, acting as the Appointed Person at the UKIPO, has recently given her decision in a case which reconciles the position and makes it clear that in the UK, it was never a case that any use was good enough to defeat a claim that a registration had not been genuinely used (http://tinyurl.com/ybvnq8o). It also underlines the need to challenge evidence filed by the other party at the correct time and in the correct manner.
The owners of the SANT AMBROEUS mark defended a claim that their UK registration of this mark should be revoked for non-use by submitting evidence of a few instances of use. The Hearing Officer held that all but one of those instances could not be held to be use in the UK, so only one instance remained. This, the Hearing Officer held, was not enough use to maintain a market for the relevant goods, and he ordered that the registration be revoked completely. The owners of the registration appealed to the Appointed Person of the UKIPO, saying that the case law provided that any use in the UK, so long as it was not “sham” use, was enough to be deemed genuine.
Rejecting the argument that one instance of sales would suffice, the Appointed Person said that such use may be enough to maintain a registration, but it may not – following earlier cases it will depend on the surrounding circumstances, including the size of the market and other activities of the trade mark owner to try to maintain the market for the product or service (such as advertising). She could not find that the Hearing Officer was wrong to make the conclusion that the single instance was insufficient.
HOWEVER… the Appointed Person did find that the Hearing Officer had erred in rejecting some of the other evidence. The company that had applied to revoke the registration had convinced the Hearing Officer to effectively disbelieve the trade mark owner (and discount some evidence) without them either providing evidence to counter the trade mark owner’s evidence, seeking clarification of the trade mark owner’s evidence or asking to cross-examine the witness for the trade mark owner.
In those circumstances, it was not open to the Hearing Officer to disbelieve the trade mark owner unless its evidence was incredible (which it was not). As a result the Appointed Person reviewed the proof of use (including these further invoices) and held that the registration had been used, albeit not for all of the goods for which the mark was registered.
