Token use of a fashion trade mark: a risky strategy

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Did you know that rights in a UK-registered mark or Community trade mark can be revoked if there is no genuine use (with no good reason) of the mark over a continuous five-year period? J & J Crombie Ltd found out the hard way in the recent case of J and J Crombie Ltd v Nutter (Holdings) Ltd, when Crombie lost its TOMMY NUTTER trade mark which, over a five-year period, it had used minimally in relation to suits and waistcoats.

Once an application is filed for revocation of a trade mark on grounds of non-use, it is up to the registered owner of the trade mark to prove that either there is evidence of genuine use, or alternatively, that there is a proper reason for non-use, otherwise the registered owner will lose the registered trade mark. The Hearing Officer on behalf of the Registrar of Trade Marks or the courts (upon appeal) will determine whether there has been genuine use on a case by case basis. As a guideline, it is important to make sure that the use of the mark is:

More than merely ‘token’

The use must not serve solely to preserve the rights provided by registration. In Crombie’s case, Crombie’s evidence of use was in relation to the sale of 46 waistcoats, the sale of 21 suits, publicity surrounding the possible sale of the brand, and use of the mark verbally in the sale process and at some events. However, there was no evidence of use of the mark on swing tags or on the waistcoats themselves during the relevant period. This use was therefore considered ‘token’ by both the Hearing Officer and the court.

By way of real commercial exploitation

The use concerned must aim to create or maintain a share in the market. Minimal use will nonetheless not of itself disqualify the use from being ‘genuine’. For example, limited use of a mark may be warranted in a particularly exclusive market.

Consistent with the ‘essential function’ of a trade mark

The use must be consistent with the purpose of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. In Crombie’s case, it was decided that the verbal reference to the mark in the context of a historical connection between Crombie and Tommy Nutter and Tommy Nutter designs was descriptive, rather than beingan indicator of the origin of the garments.

The Crombie case serves as a reminder that it is important to ensure that evidence submitted to both the Hearing Officer and any court will stand up to scrutiny. If you would like advice about trade marks, or any other IP related issues, please contact the IP and Media Team at Pannone.

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