• COURT DIARY

    Part-Cancellation of a Registration

    In a recent appeal (Reed Consumer Books v Pomaco), the English High Court (Mr Jacob) has considered whether it is appropriate to part-cancel a trade mark registration on the ground of non-use and also whether it is possible to generate enough goodwill in a mark in a very short space of time to substantiate a passing off action. The facts were as follows.

    In January 1989, Reed launched a new book publisher’s title called Minerva. The launch took place on a significant scale and was well publicised in the trade press. Preparations for the launch had been made during much of the previous year. Three weeks later, in February 1989, Pomaco, a small company primarily involved in producing printed stationery, such as works order sheets and telephone message pads, filed a UK trade mark application for Minerva covering a wide range of Class 16 goods including "printed matter and stationery". Pomaco claimed to have been using the trade mark Minerva in relation to printed stationery and related goods since 1986.

    The two marks appear to have coexisted amicably until Reed finally decided to file their own UK trade mark application for Minerva covering inter alia "books" in July 1995. By this time Reed’s annual sales under the Minerva title had risen to about £3 million. Pomaco opposed Reed’s application on the basis of their earlier UK trade mark registration, as well as evidence purporting to show that their Minerva stationery products had been sold in book form for about 9 years.

    In response to this opposition, Reed eventually (in March 1998) applied to the UK Trade Mark Office to cancel Pomaco’s trade mark registration under Sections 46 and 47 of the Trade Marks Act 1994 on the following grounds:

    • Non-use of the trade mark Minerva during the five year period prior to March 1998 (Section 46(1)(b)), and

    • Their (Reed’s) ownership of an earlier unregistered trade mark which could have prevented, at the date of Pomaco’s trade mark application (February 1989), the use of the trade mark Minerva by Pomaco under the UK law of passing off (Section 5(4)(a) and 47(2)(b)).

    The Hearing Officer found that Pomaco had used its trade mark in relation to books and therefore "printed matter", given the evidence showing the sale of books of order forms and similar during the relevant period. He also found that, although Reed had established sufficient reputation in the trade mark Minerva in the short period prior to Pomaco’s trade mark filing date, they had not established that Pomaco’s use of the trade mark Minerva in February 1989 was likely to be a misrepresentation or that such use was likely to damage Reed. On this basis, Reed’s application to cancel Pomaco’s registration was dismissed. Reed appealed to the High Court. The Court allowed the appeal in part, requiring Pomaco’s specification of goods to be limited to "printed matter all being stationery". Mr Jacob found as follows:

    • On the evidence, Pomaco had used Minerva as a trade mark in relation to certain printed stationery products during the relevant five year period. However, they had not used the mark in relation to printed literary matter during the same period. There was a clear difference between printed stationery products and printed matter of a literary character, such as a book.

    • Use of a trade mark on printed labels or packaging for, say, soap or bananas, did not constitute use of the trade mark in relation to printed matter.

    • In the case of Premier Brands v Typhoo-Europe (2000 EIPR 335), the High Court (Mr Neuberger) found that a specification of goods could only be part-cancelled by deletion of an item specified in that specification of goods. By contrast, in an earlier case, Mercury Communications v Mercury Interactive (1995 FSR 850), the High Court (Mr Laddie) had taken the view that a wide term, such as "computer programs" could be limited to "computer programs of a particular type". In the present case, the Judge agreed with Mr Laddie. He thought that, if a trade mark had been used only in relation to a "food container", this should not save a wider claim to "domestic containers". It should be possible, under these circumstances, to limit the specification to "food containers". Thus, if non-use was found in respect of a significant subset of a wide general description of goods, the Court should be at liberty to eliminate that subset from the registration. Given that the printed stationery produced by Pomaco was quite different from Reed’s literary publications, Pomaco’s specification could and should be cut down (to printed matter all being stationery).

    • Reed had established a goodwill in the trade mark Minerva in relation to literary publications at the filing date of Pomaco’s application.

    • It is not always necessary to have specific evidence of misrepresentation to succeed in a passing off action. If you have proof of reputation of an unusual name and proposed use of the same name for the same goods by the defendant, you will normally infer that deception and confusion will occur. It followed that, in relation to "printed matter of a literary character", Reed’s objection under Section 5(4)(a) of the Act succeeded.

    • The Hearing Officer must consider the specification of the registration under attack. If the specification does not cover "books", then the question of whether "printed stationery books" are "books" is of no relevance. The question that should be addressed is whether "printed stationery books" are "printed matter".

    • Any use of Minerva by Pomaco in relation to "printed matter of a literary character" after Reed’s trade mark had become widely known for such goods would be very likely to deceive the public and therefore would not be genuine use of the mark, since it would amount to passing off.

    • The registration should be partially cancelled as from its date of application.

    Comment

    This is an important decision. Broad specifications of goods and services have now become the norm. The only realistic way of cutting the breadth of such specifications is by non-use attacks brought after the expiry of the five year grace period. In the writer’s view, it would be absurd if a company who showed use of a mark on computer software in the automobile manufacturing industry could, in the face of a non-use attack, sustain a claim to "computer software" at large and thereby prevent the registration and use of, for example, a similar trade mark for "computer games software". Mr Jacob’s decision, which is in line with earlier comments made by another English judge, Mr Laddie, is therefore to be welcomed. It is to be hoped that both the UK Office and OHIM will now follow a practice in relation to revocation actions based on non-use that is in line with the principles set out in the above decision. If this is not done, it will eventually make the clearance of new trade marks extremely difficult and will therefore add unnecessarily to the cost of developing and launching a new product.