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IP Cases & Commentary – Details

1 January 2012

To Be, Or Not To Be Used - Proof of Use Unproven for 'Royal Shakespeare'

Jackie Johnson

To Be, Or Not To Be Used - Proof of Use Unproven for 'Royal Shakespeare'

This Trade Marks Registry decision highlights what is required to defend a non use revocation action filed against a trade mark registration. Jackson International had registered ROYAL SHAKESPEARE in connection with ‘beers, including low-alcohol and non-alcoholic beers; fruit drinks; fruit juices and isotonic drinks’ in class 32.

The Royal Shakespeare Company applied to revoke the registration on the grounds of non use. Jackson International claimed use of its mark or, in the alternative, proper reasons for non use but was unsuccessful on both counts.

The Registrar helpfully reconfirmed the relevant principles to be considered when examining evidence that seeks to show genuine use. These include that the use must be actual use that is more than merely ‘token’ use; that the use maintains the essential function of a trade mark and therefore the link between the sign and the origin of the goods and services to which the sign is applied, and that it shows a real commercial exploitation of the mark. Jackson International showed no such use.

Unfortunately, much of the evidence filed by Jackson International was redacted, having been deemed confidential, but Jackson International apparently filed evidence in the form of letters, the purpose of which was to establish the quest for business partners for a product yet to be developed. Jackson International clearly had an idea in mind when they originally filed their application to register ROYAL SHAKESPEARE but this idea remained just that. Indeed, several years after registration had been granted, Jackson International had still not found a business partner to enable them to commence use of the mark on the relevant goods.

The Registrar also confirmed that proper reasons for non use must be independent of the will of the proprietor and totally unconnected with the proprietor. Consequently, Jackson International’s failure to conclude a licence agreement did not represent a proper reason for non use, as it was in their power to enter into such an arrangement. Further, the Registrar noted that Jackson International had actually stopped looking for a business partner a couple of years before the non use revocation action was even filed.

This case further clarifies the circumstances where proper reasons for non use will be favourably considered. However, it also highlights the vulnerability of a trade mark registration if active and committed steps are not made to ensure that a product bearing the mark reaches the market within five years of registration.

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