Client Testimonials
"Protecting my name and image is key. Back in 2005 I was looking for a firm that knew their stuff, didn't cost the earth and would not only get things done but also achieve results. Since then, Waterfront... has consistently achieved all of these objectives and are also a real pleasure to deal with. I highly recommend them to anyone needing to take swift action to protect a brand."
Sarah Beeny, TV Broadcaster and Property Developer
BSA Company Ltd v Brand Holdings Ltd / “BSA BY R2” Trade Mark
Overview of Decision and Ruling:
The issue of the calculation of the five year period of non-use of a trade mark for the purposes of revocation, raised its head once again in the decision of BSA Company Ltd v Brand Holdings Ltd / "BSA BY R2" Trade Mark[1].
BSA Company Limited filed an application on October 27, 2005 under s.46[2] of the Trade Marks Act 1994 and r.31 of the Trade Mark Rules 2000 (as amended) for revocation of the "BSA BY R2" mark for non-use. The mark had been registered on July 28, 2000 and the application for revocation (as amended in response to a registry request) sought revocation with effect from July 28, 2005 (alleging 5 years of non-use from registration), alternatively October 24, 2005 (alleging 5 years non-use from 24 October 2000).
The owner of the mark, Brand Holdings Limited filed, a counterstatement denying that there had been non-use supported by a witness statement from Brand Holdings' trade mark agent. That statement claimed that the mark had been used in the form BSA and claimed that the "by R2" element of the mark did not add to the distinctive character of the mark. Exhibited to that statement were photocopies of clothing labels.
The hearing officer formed the preliminary view that the evidence filed did not satisfy the burden placed upon a registered proprietor in non-use proceedings to show use of the relevant trade mark[3]. At a subsequent hearing on August 17, 2006, Brand Holdings, in addition to arguing that the hearing officer's preliminary view was ill-founded, claimed that BSA's application for revocation was fatally defective in that it did not specify a proper 5 year period of alleged non-use. The hearing officer rejected Brand Holdings contentions[4].
On appeal before Geoffrey Hobbs QC as Appointed Person, Mr Hobbs held that the date of July 28, 2005 in the original application was defective since the earliest possible date of revocation was July 29, 2005. The 5 year period was to be calculated in the same way under European and UK law and on a straight forward reading of the legislation he was of the view that this meant excluding the date on which the registration procedure was completed and the date on (or with effect from ) which revocation was requested. This was also said to accord with Article 3 of Regulation (EEC, Euratom) No. 1182/71, Rule 70 of Commission Regulation (EC) No. 2868/95 and the general rule in English law set out in Halsbury's Laws of England[5].
Under English law it was not open to the Registrar to exempt anyone from the obligation to use a form required by the Trade Marks Act and Rules[6]. So far as errors on the relevant form are concerned, Mr Hobbs noted that there was, in comparison with the past, a "curious omission" in the powers conferred upon the registrar by current legislation to permit amendments. Rule 66 allowed any irregularity in procedure to be rectified. That power was "interstitial" and could not be used to thwart the Act or Rules. However, inadequate compliance with the Rules, including rule 31, could be treated as an irregularity capable of rectification where the shortcomings were not so serious as to render the prescribed procedure inoperative.
Relief under Rule 66 was discretionary and might be conditional. It might require the recommencement of the rule 31 procedure. This was what had occurred in LOWDEN Trade Mark[7]. However, that was not the only permissible approach and the rule was broad enough to enable the registrar to decide in appropriate circumstances that the justice of the case could be met by amendment of pleadings without re-commencement of the rule 31 procedure. This was a case where it was apparent on an objective reading of the relevant documents that BSA was trying to claim revocation first, with effect from the earliest possible date and second, by reference to a 5 year period with an end date of October 24, 2005. As the Rule 66 power was conferred on the registrar, the question of amendment of the currently defective proceedings was something for the registrar to consider at an appropriate juncture.
Mr Hobbs also went on to overturn the hearing officers determination that the evidence filled by the proprietor did not show and arguable case of use and that the defence thereby be struck out. Following the reasoning adopted by Kitchen J. in MOO JUICE Trade Mark[8], the evidence filed by the proprietor had to be more than a bare assertion but did not have to be so persuasive that if unanswered it would discharge the burden of proof lying upon the proprietor. In this case the evidential value of the exhibited materials was weakened by that fact that it did not carry dates and there was an absence of sales figures or description of transactions. Nevertheless, it could not be disregarded as having no evidential value. The registrar has subjected the evidence to a sceptical analysis rather than a neutral evaluation. This was wrong and the decision to strike out the Defence was set aside.
Importance of Case:
The decision is to be welcomed in a number of respects. It confirms the trade mark registry's view, recorded in Tribunal Practice Note (TPN 1/2007), as to the manner in which 5 year non-use periods are to be calculated. However, as Mr Hobbs recognised in his judgment, errors as to the identification of the relevant 5 year period are common. Therefore, it is significant that the case confirms the registry's discretion to allow correcting amendments in appropriate cases and that, notwithstanding the approach adopted in LOWDEN, it does not necessarily follow from the exercise of that discretion that the Rule 31 procedure must recommence afresh.
Matthew Harris
Waterfront Solicitors
[1] (May 29, 2007): O-144-07; [2008] R.P.C. 22. Available at http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results/o14407.pdf .
[2] Corresponding to Articles 10 and 12 of the EC Trade Mark Directive (89/104/EEC) and Articles 50(1) and 15(1) to (3) of the Community Trade Mark Regulation (40/94). Article 10(1) of the Directive states:
"If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use."
[3] Under s.100 of the Trade Marks Act and r. 31 of the Trade Mark Rules
[4] BSA Company Ltd v Brand Holdings Ltd / "BSA BY R2" Trade Mark (October 18, 2006), BL O-294-06. Available at http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results/o29406.pdf.
[5] 4th Edn Vol 45(2) (1999 re-issue) at para. 235
[6] Citing his decision in KML Invest AB's Trade Mark Application O-084-04 (January 20, 2004): [2004] R.P.C. 47 p. 972. Available at http://www.ipo.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results/o08404.pdf
[7] (November 17, 2004): [2004] EWHC 2531 (Ch); [2005] R.P.C. 18. Available at http://www.bailii.org/ew/cases/EWHC/Ch/2004/2531.html
[8] (November 18, 2005). [2005] EWHC 2584 (Ch), [2006] R.P.C. 18.