Extreme - Case 0/217/10 Appeal

The revocation action was based on non-use under Sections 46(1)(a) and (b) of the UK Trade Marks Act. Penn defended the revocation action asserting continuous and ongoing use of the EXTREME trade mark in the UK on the registered goods in the relevant time frames.

The hearing officer reviewed the evidence filed and found that genuine use had been shown within both periods for ‘rods’ and ‘reels’. However, she found that there was no genuine use for ‘fishing tackle’ and ‘lines’. She thought ‘fishing tackle’ to be a broad term and should therefore be deleted.

She also found that ‘rods’ was a broad term within which it was possible to identify subcategories according to the type of fishing for which the rod was designed. On the evidence, she reduced the specification to ‘rods for use with sea fishing and salt water fishing’. There was no indication on the evidence that ‘reels’ could similarly be subcategorised such that she concluded that Penn’s registration should remain for the following goods: ‘rods for use in sea fishing and saltwater fishing; reels’ but that Penn’s registration should be revoked in respect of all other goods.

Penn appealed to the appointed person concerning the hearing officer’s decision to partly revoke the registration. The appeal turned on the hearing officer’s determination of what would be a fair specification for the UK registration in view of the evidence of use.

Penn argued that ‘fishing tackle’ was a narrowly defined category incapable of further subdivision. Penn argued that they had shown use of EXTREME for fishing rods and reels which was sufficient to maintain the registration for the entire category of goods. They further argued that although ‘rods for use in sea fishing and saltwater fishing’ might reflect actual use, it was overly restrictive and did not represent a fair description. ‘Fishing rods’ were regarded as a single category in trade with the same trade channels, target consumers and advertising methods. The subdivision into saltwater/sea fishing rods and fresh water rods was arbitrary and unjustified on the evidence. They argued that the average consumer would fairly describe the goods as ‘fishing rods’.

In her analysis of the appeal, Professor Annand noted that the current law on partial revocation for non-use was summarised by Mr Geoffrey Hobbs QC sitting as deputy judge in the High Court in Daimler AG v Sany Group Co., Limited [2009] EWHC1003 (CH). She further noted that the degree of precision within which goods and services need to be categorised had not yet been defined by the European Court of Justice (ECJ) and that there seemed to be some difference of approach between the UK courts’ position, as defined in the NIRVANA trade mark (0/262/06) and the CFI’s approach in T-256/04 MundiPharma AG v OHIM.

Professor Annand noted that the essence of the domestic approach is to consider how the average consumer would fairly describe the goods in relation to which the trade mark has been used. Likewise, MundiPharma indicates that the matter is to be approached from the consumer’s perspective, but focuses on the purpose and intended use of the goods to find a specification which covers no independent subcategory of goods other than the ones within which the trade mark has been used.

Professor Annand pointed out that the danger of the subcategory approach was that it invites subdivision according to the products concerned and a tribunal may be seduced into equating a fair description with the actual use shown.

Professor Annand reached the view that, following the evidence filed and her interpretation of the case law on the topic, ‘rods for use in sea fishing and saltwater fishing’ was not a fair specification.

Accordingly, she took the view that the specification should be reinstated to ‘fishing rods’. Penn had shown genuine use of the EXTREME trade mark for various types of fishing rods. The specification as reformulated by the hearing officer failed to achieve a just balance. Applying the average consumer test, the average consumer would not have chosen that description for trade mark purposes. Instead, they would just have said ‘fishing rods’.

Turning to hearing officer’s analysis of the term ‘fishing tackle’, Professor Annand noted that the hearing officer’s conclusion was simply that this was a very broad term and that it would be ‘contrary to the ratio legis to allow it to remain’. The hearing officer appeared not to have considered whether the genuine use proven in respect of rods and reels – indisputably fishing tackle – justified the retention of the trade mark EXTREME for that wider term.

The evidence showed that Penn had used the trade mark EXTREME on various types of fishing rods. Penn’s proven genuine use on reels similarly extended to a number of different types of reels. The registered proprietor’s counsel pointed out that the public would refer to fishing rods and reels singularly and collectively as fishing tackle; ‘fishing tackle’ was a sufficiently narrowly defined category of goods.

Allowing Penn to retain its registration for fishing tackle would not offend the objective of the non-use provisions which was to reduce the number of conflicts between trade marks. The purpose of the intended use of fishing tackle was the same: fishing. ‘Fishing tackle’ was targeted at the same consumers and marketed through the same trade channels, as had been demonstrated in the evidence.

Professor Annand was careful to say that she had not found the appeal in this point easy to determine. Nevertheless, she took the view that Penn’s specification for ‘fishing tackle’ should be maintained. She felt that this represented a fair description of the uses that had taken place.

Accordingly, she concluded that registration number 2115051 EXTREME should remain on the register in respect of ‘fishing tackle, fishing rods, reels and lines’, as originally registered.

This case represents a rare example of successfully overturning a hearing officer’s decision on appeal to the appointed person, following the very narrow remit which now exists post Reef. It also provides another helpful example on the question of subcategories of goods and services for non-use provisions. Pending a definitive statement from the ECJ on the topic, it is helpful to have another working example as to the degree of division or subcategorisation appropriate in cases of this type. The English courts’ approach in reaching a fair description, based on the way on which an average consumer might have described the relevant goods or services, seems to be entirely practical and appropriately aligns with the test under Section 10(2) of the UK Trade Marks Act, where the assessment of any likelihood of confusion between competing trade marks would be assessed by reference to the average consumer of those particular goods and services.