To set the scene you have received your trade mark registration certificate and have been told that the trade mark registration is valid for ten years and renewable thereafter every ten years.
As the owner of a registered trade mark you have exclusive rights in the trade mark, which are infringed by use of the trade mark in the United Kingdom without your consent.
Now consider the following; you are notified of a later filed application for a mark that is similar or identical to yours for goods and services that are identical or similar to yours. The onus will be on you to file opposition proceedings against this later filed application.
However, before proceeding you need to consider the following: once your trade mark has been registered for five years it becomes vulnerable to a non-use challenge. An application to revoke a trade mark registration on the grounds of non-use can be made by anybody. So, if you file the opposition the applicant may choose to file a non-use cancellation action in return. The burden will be upon you to file evidence of “genuine use” with respect to the goods and services the mark has been registered for.
In the recent case of SuperMac’s (Holdings) Ltd v McDonalds International Property Company Ltd, SuperMac made an application to have MacDonalds’ trade mark registration for BIG MAC cancelled in its entirety on the basis that MacDonalds had not put the mark to genuine use for a continuous period of 5 years for the goods and services it was registered for.
What is genuine use?
Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. It requires actual use on the market of the registered goods and services and does not include token use.
When assessing whether the use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark.
The burden of proof lies with the proprietor which in this case was MacDonalds. On that basis, MacDonalds submitted 3 affidavits, brochures and advertising materials showing the BIG MAC sandwiches, as well as links to websites and print out from Wikipedia.
The cancellation division found the evidence submitted insufficient to establish genuine use of the BIG MAC trade mark. This decision is open to Appeal and time will tell if MacDonalds decide to appeal it?
Comment – we think that a valuable lesson can learned from this case about good housekeeping with respect of having a good archive of evidence of use that is constantly kept updated. This will help going forward should a third party look to cancel your registration or to support opposition proceedings.
If you have any questions relating to trade mark matters, please do not hesitate to get in touch with our new Associate Sarah Dacre, who is a hugely experienced and specialist Chartered Trade Mark Attorney. Email: [email protected]