Trade marks: revocation for non-use

By Audrey Horton

03-2019

The High Court has upheld the Intellectual Property Office's (IPO) decision revoking two "easyoffice" trade marks for non-use.

Background

A trade mark owner's rights will be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the UK in connection with the goods or services in respect of which it is registered (section 46, Trade Marks Act 1994) (TMA) (section 46).

The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. Article 2(1) of the Nice Agreement provides that signatory countries can opt to use the system as a principal or subsidiary system.

In Altecnic Ltd's Trade Mark Application, the Court of Appeal held that a specification should be interpreted narrowly, by reference to the Nice Classification class of goods list ([2001] EWCA Civ 1928).

In FIL Ltd and another v Fidelis Underwriting Ltd the court considered that the Altecnic approach applied during the application and prosecution of a trade mark; however the court did not decide whether this applied in the context of infringement or revocation ([2018] EWHC 1097).

The European Court of Justice (ECJ) has held that, where the words chosen in a specification are vague, Nice Classification class numbers can be used as an aid to interpret what the words mean, with the overall objective of legal certainty of the specification goods and services (CIPA v Registrar of Trade Marks, C-307/10) (known as IP Translator).

Facts

P was the registered proprietor of two "easyoffice" trade marks. The marks had been registered for "provision of office facilities" and "rental of office equipment" in class 35.

E applied for revocation of the trade marks for non-use under section 46.

The IPO revoked the trade marks, following Altecnic.

P appealed, arguing that the adoption by the IPO of the narrower Altecnic interpretation approach was wrong in the light of FIL. P also applied to adduce the prosecution files for the trade mark applications as fresh evidence in the appeal.

Decision

The High Court dismissed the appeal and revoked the two marks for non-use.

The IPO had not needed to have regard to the Nice Classification class number in interpreting the specification, since it was sufficiently clear and precise for the ordinary and natural meaning to have been ascertained. However, the IPO was correct to conclude that genuine use had not been shown. Relevant factors included that an advertising leaflet referring to photocopying facilities available at rented offices pre-dated the relevant period and that, while occupation agreements for furnished rented offices with facilities were relied on, there was no evidence to quantify any use of the trade marks in respect of those facilities.

A key issue was whether the class number of a trade mark under the Nice Classification could be used as an aid to interpret the specification for the purposes of determining revocation claims. It was not necessary or appropriate to reach a concluded view on the question to resolve the appeal, but the court's provisional view was that it was appropriate to use class number as an aid to interpretation of the specification where the words used in the specification lacked clarity and precision. This applied to granted registrations as well as to applications, and therefore applied in the context of infringement actions and revocation claims.

It could be of considerable importance, in the context of revocation applications based on no genuine use, where a specification otherwise lacked clarity and precision, to be able to refer to the class in which the goods or services were registered.

Article 2(1) of the Nice Agreement did not mean that the Nice Classification was irrelevant to scope of protection, but that the country in question could give the Classification whatever effect it chose.

EU IPO and UK IPO practice guidance suggested that both took the Nice Classification class numbers into account. While this was far from determinative, in the light of the need to avoid diverging approaches to scope of protection, as emphasised by the ECJ in IP Translator, conformity of practice between the UKIPO and EUIPO (which took account of IP Translator) was relevant and important.

Altecnic was not confined to its facts. It was a case concerning construction of the scope of the specification, which could only have one meaning, irrespective of whether it was being considered at the application stage, in relation to an infringement claim, or in a revocation application. The Court of Appeal had applied general principles of construction to the specification in the case, having regard to the context in which the words were used. In many cases it would be unnecessary to use the class number to aid interpretation of a specification, as the words chosen in the specification, as here, would be sufficiently clear and precise.

The court also rejected P's application to adduce the prosecution files. The relevant evidence could have been filed earlier and case law suggested that the relevance of prosecution history to determine the scope of a trade mark specification was confined to limitation cases under section 13 of the TMA.

Comment

This decision is of interest to practitioners for its consideration of the extent to which Nice Classification class numbers can be used as an aid to interpret a trade mark specification in relation to infringement actions and revocation claims. However, the court's remarks on this important point are obiter, so the question remains open.

Case: Pathway IP SARL v Easygroup Ltd [2018] EWHC 3608 (Ch).

First published in the March 2019 issue of PLC Magazine and reproduced with the kind permission of the publishers.  Subscription enquiries 020 7202 1200.