Use it AND Lose It: Trade Mark lessons from Cambridge University

A very respectable number of SOLO practitioners forgathered on Saturday in Cambridge for the CIPIL Annual Spring Conference which addressed the question "Use it  or Lose It" across the range of intellectual property rights from trade marks, through patents, to copyright and related rights. The event was expertly chaired by Mr Justice Richard Arnold who provided his own incisive commentary on the presentations.

You might think that it was obvious that governments grant monopolies to be used, but intellectual property law has become so convoluted that even this simple tenet can no longer be assumed and there was much to discuss.

This note only addresses the trade marks presentations and more specifically some issues that arose in the presentation by Appointed Person: Emma Himsworth QC . She addressed the issue of whether, when word marks are registered, use in a variant form is genuine use. Did the figurative fig leaf ( a term created by Mr Justice Arnold in his Starbucks decision of 2012 (it was noted that there is an appeal to the Supreme Court on that case to be heard on 25 March 2015 but it considers other aspects and the fig leaf remains firmly in its place in the firmament of IP case law) alter the distinctive character of the plain word.

In a straw poll of the audience we were prepared to accept that use of Catwalk (right) would be use of the word. But it was not. Geoffrey Hobbs' September 2013 decision is here. It was admitted that "the evidence was disastrous" was a major factor with no evidence of oral use or on invoices in any of the cases. Our chairman also felt that none of them had much distinctive character in their own right.


 The audience was in agreement that the sideways rabbit mark would not so easily be recognised as the word mark CB. That decision was made by Iain Purvis in June 2013.

Following down the catwalk was Amanda Michael's decision where HOME MAID was considered not used when represented in either of the forms shown.

As a result we were left with the conclusion that it was a case of Prove you are using it or lose it. Its simply not enough to use your mark, you must be able to show probative evidence of use preferably as registered with sufficient indications of the place, time and extent of use. Its got to be clear, precise and detailed and if the use is limited, you must dispel any doubt as to its genuineness with additional evidence. In a final gleeful addition, Ms Himsworth pointed out that brand owners opposing UK registrations must do all this concisely in accordance with the new practice note TPN 1/2015 which limits you to 300 pages without leave. 

When questioned on the practicality of this for well used marks which were being put to proof of use in face of obvious use, I was informed that such brand owners normally had more recent registrations on which to rely in their oppositions. So it appears that the Appointed People are at one with the registry in condoning the abusive use of refiled registrations to avoid proof of use challenges, and it is only the miserable SME who relies on registration and renewal that is to be mocked by this enforcement burden.

Dissipating Goodwill

There was also a master class by Hazel Carty of Manchester University on the concept of goodwill and whether it could be abandoned or dissipated more slowly. Hopefully once we have the views of the Supreme Court on Starbucks which our chair indicated was likely to review in some depth the Star Industrial case from 1976 (which discussed abandonment (by assignment)), it may be clearer whether it is ever safe to resurrect a zombie mark. Certainly the band cases and the Masylyukov v Diageo case concerning the registration by the appellant of the names of some closed whisky distilleries decided in 2010 by our chair suggest that its a risky option. However the point made Mr Justice Arnold made was that the goodwill was not dissipating in the Masylyukov case but was still being created (even if the whisky was no longer being distilled) as there was stock and it was being sold.

We were also treated to some perspectives from Australia by Robert Burrell who showed that there, an unused mark with dissipating goodwill could remain on the register.