In a decision of the UK Intellectual Property office of 5 November 2013, Gucci's trade mark for it's interlocking GG logo has been revoked in certain classes on the grounds of non-use. The mark (shown below) was registered in 1984 for goods in classes 3 (broadly for cosmetics, perfumes and toiletries), 14 (jewellery), 18 (bags and purses etc.) and 25 (for various items of clothing in addition to scarves, socks, belts and shoes).
The applicant was fashion brand Gerry Weber, who made their application on the basis that there had been no use of the mark during a five year period. The application was made under s.46(1)(b) of the UK Trade Marks Act 1994, which states that a trade mark registration can be revoked if use has been suspended for an uninterrupted period of five years, without proper reason.
Criticisms of Gucci's Evidence
In an application to revoke a trade mark for non-use, the burden of proof lies with the registered trade mark proprietor, who must demonstrate that he has made genuine use of the registered mark during the relevant period identified by the applicant. Gucci's evidence, which was filed by their in-house legal counsel, was criticised by the Hearing Officer for its lack of specificity and ultimately was found not to demonstrate sufficient use to maintain the registration. In examining the evidence, the Hearing Officer noted, for example:
- That statements were made in the proprietor's evidence without an explanation as to their relevance (for example, the evidence stated that Gucci is one of the 50 most valuable brands in the world).
- In some instances, evidence of use (for example, press releases) was undated and not accompanied by an explanation as to where or when it was used or publicised.
- Some images filed were unclear, making it difficult to see if the mark in question was used.
- Sales figures were given in relation to each class of goods, but they did not state whether or not they were UK figures (despite being in sterling), did not differentiate between the various goods falling within each particular class and were not supported with invoices.
- There was no indication of the number of (or type of) goods sold and (save for one example), no packaging or advertisements were produced within the relevant date.
Gerry Weber submitted that this evidence fell far short of showing genuine use and stated that "genuine use cannot be proven by probabilities and suppositions but must be demonstrated by solid and objective evidence". Importantly, the Hearing Officer stated that "[Gucci] makes broad claims without also referring to specifics. [The] evidence about 'Gucci', its reputation, and the company's length of trading are of no assistance. I agree with the applicant's submission that "Evidence of the fame of the proprietor of a mark is no evidence of use of a mark owned by that party"." Well known brand owners should therefore not be lulled into a false sense of security by virtue of their prestige. Despite the Hearing Officer noting that even minimal use may qualify as genuine use and that it is important to "stand back and take a view of the evidence in its entirety", it was ultimately determined that taking all the evidence together did not present a picture of genuine use. The mark was therefore cancelled in relation to goods in classes 14, 18 and 25.
What brand owners can learn from this
This case is a valuable reminder to all brand owners of the importance of keeping accurate and detailed evidence demonstrating use of a registered (or indeed unregistered) trade mark. This can be invaluable in demonstrating use should a registered trade mark be challenged on grounds of non-use, and can also be necessary to demonstrate earlier rights in a registered or unregistered mark.
In practice, it can be helpful to keep files relating to each trade mark, which should include details of its use. For example, for each item making use of the trade mark, the trade mark proprietor should keep a sample together with details of how, when and where it has been used.
Often this sort of evidence can be required at short notice (typically two months is allowed for a party to collate evidence in trade mark proceedings) and the evidence filed will be of better quality if brand owners are always prepared.
Brand owners should therefore keep clear records which show use of any and all of their trade marks. This can include examples of products, packaging, advertising and marketing, which should preferably be dated. Crucially, a record should be kept of where, when and how these are used. In collating and preparing evidence, care should be taken to ensure that all statements and evidence are relevant and useful in demonstrating genuine use during the relevant period.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.