Trade Marks - Alice Ltd v Photogram Ltd and others
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Author John Tenniel Source Alice in Wonderland. Penguin Books Licence Copyright expired |
Intellectual Property Enterprise Court (Her Honor Judge Melissa Clarke Alice Ltd v Photogram Ltd and others [2024] EWHC 3256 (IPEC) (17 Dec 2024)
This was an action for the infringement of UK trade mark UK00003362772 and a counterclaim for the revocation of the mark under s.46 (1) of the Trade Marks Act 1994. The mark was the word ALICE registered for goods in class 9 and services in class 37. Infringement was admitted subject to the validity of the registration. The case turned on whether the mark had been put to genuine use in the first 5 years after registration or at any time since. The action and counterclaim came on before Her Honour Judge Melissa Clarke on 24 Oct 2024. By para [101] of her judgment in Alice Ltd v Photogram Ltd and others [2024] EWHC 3256 (IPEC) which she handed down on 17 Dec 2024, the learned judge dismissed the counterclaim and allowed the claim.
The Parties
The proprietor of the trade mark and the claimant in these proceedings was Alice Ltd. ("Alice"), a private company incorporated in England and Wales with limited liability on 15 Nov 2016 under company number 10479545. According to its website, Alice manufactures audio products for the pro studio and broadcast markets under the ALICE and PYE trade marks. The defendants were Photogram Ltd. ("Photogram") a private company incorporated on 12 June 2019 and Photogram's three co-founders, directors and shareholders. Photogram supplied a still and video camera that can be attached to mobile phones called the "Alice camera".
The Issues
At a case management conference held on 12 June 2024, His Honour Judge Hacon ordered the following issues to be tried:
"Revocation of the Alice Mark
i) For which goods and/or services has the Alice Mark been put to genuine use in the period between 22 March 2019 and 1 May 2024?
ii) If and insofar as the Alice Mark is liable to be revoked for lack of genuine use, from what date should such revocation be effective?
iii) If and insofar as the Alice Mark is liable to be revoked for lack of genuine use, what (if any) is a fair specification having regard to the use (if any) that the Claimant has in fact made of the Alice Mark?
Infringement of the Alice Mark
iv) Is the Alice Camera Sign identical to the sign comprising the Alice Mark?
v) To what extent are the First Defendant's cameras identical or similar to the class 9 goods of the specification of the Alice Mark as identified pursuant to Issue 3 above (if any)?
vi) Has the First Defendant infringed the Alice Mark contrary to section 10 (1) TMA including, if relevant, after the date identified pursuant to Issue 2 above?
vii) Is there a likelihood of confusion such that the First Defendant has infringed the Alice Mark contrary to section 10 (2) TMA including, if relevant, after the date identified pursuant to Issue 2 above?"
Issue 1: For which goods and/or services has the Alice Mark been put to genuine use in the period between 22 March 2019 and 1 May 2024
"Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only."
The reason for those dates is that Alice registered the ALICE mark on 22 March 2018 and 1 May 2024 is the date upon which the mark could be revoked under s.46 (1) (b) of the Trade Marks Act 1994. The defendants relied upon s.46 (1) (a) and (b) which provides:
"The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use
"The registration of a trade mark may be revoked on any of the following grounds—
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use
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They also relied on s.46 (5):
"Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only."
The judge referred to Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] EUECJ C-40/01, EU: C:2003:145, [2005] Ch 97, [2003] EUECJ C-40/1, [2004] 3 WLR 1048, [2003] ECR I-2439, ECLI:EU: C:2003:145, [2003] ETMR 85, where the Court of Justice of the European Union ("CJEU") held that the concept of "genuine use" includes use that is small in quantitative terms, provided that such use is not merely token and real, in the sense of being warranted in the sector concerned to "maintain or create a share in the market for the goods protected by the mark. She added that the Court of Appeal had provided a helpful summary of principles applicable to determining whether there has been genuine use of a trade mark between paras [106] and [107] of Lord Justice Arnold's judgment in easyGroup v Nuclei Ltd and others [2023] EWCA Civ 1247, [2024] FSR 9:
"[106] Ignoring issues which do not arise in the present case, such as use in relation to spare parts or second-hand goods and use in relation to a sub-category of goods or services, the principles may be summarised as follows:
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37].
(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Case C-416/04 P Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-4237, at [70]; Case C-442/07 Verein Radetzky-Order v Bundervsvereinigung Kamaradschaft 'Feldmarschall Radetzky' [2008] ECR I-9223 at [13]; Case C-609/11 Centrotherm Systemtechnik GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:593 ], at [71]; Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV [EU:C:2012:816], at [29]; C–721/18 Ferrari SpA v DU [EU:C:2020:854]: at [32].
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR I-137, at [17]; Centrotherm at [71]; Leno at [29]; Case C-689/15 W.F. Gözze Frottierweberei GmbH v Verein Bremer Baumwollbörse [EU: C:2017:434] at [37], [40]; Ferrari at [32].
(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]–[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]–[23].
(5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]–[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71].
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [2004] ECR I-1159; [2004] FSR 38, at [22]–[23]; Sunrider at [70]–[71], [76]; Centrotherm at [72]–[76]; Case C-141/13 P Reber Holding & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:2089] at [29], [32]–[34]; Leno at [29]–[30], [56]; Ferrari at [33].
(7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La Mer at [21], [24] and [25]; Sunrider at [72]; Leno at [55].
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at [32].
[107] The trade mark proprietor bears the burden of proving genuine use of its trade mark: see section 100 of the 1994 Act and Ferrari at [73]–[83]. The General Court of the European Union has repeatedly held that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned: see e.g. Case T-78/19 Lidl Stiftung & Co KG v European Union Intellectual Property Office [EU: T:2020:166] at [25]. It has also repeatedly held that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the proprietor to produce additional evidence to dispel any doubts as to the genuineness of its use: see e.g. Lidl at [33]. In Awareness Ltd v Plymouth CC BL O/236/13 (5 June 2013) [2013] RPC 24 Daniel Alexander QC sitting as the Appointed Person said:
'[19]. For the tribunal to determine in relation to what goods or services there. has been genuine use of the mark during the relevant period, it should be provided with clear, precise, detailed and well-supported evidence as to the nature of that use during the period in question from a person properly qualified to know. …
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[22]. … it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public.'"
The parties agreed that a helpful summary of the approach that the Court should take when dealing with allegations of non-use including in cases of partial revocation was provided by Mr Justice Henry Carr in para [47] of his judgment in Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) and others [2017] RPC 12:
[22]. … it is not strictly necessary to exhibit any particular kind of documentation but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal … comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaking, having regard to the interests of the proprietor, the opponent and, it should be said, the public.'"
The parties agreed that a helpful summary of the approach that the Court should take when dealing with allegations of non-use including in cases of partial revocation was provided by Mr Justice Henry Carr in para [47] of his judgment in Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) and others [2017] RPC 12:
"I summarise the relevant principles to be applied, as follows:
(i) The principles to be applied when considering whether there has been genuine use were summarised by Arnold J. in Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] E.T.M.R. 31; [2013] FSR 35 at [51]. This was set out by the hearing officer at [34] of the UKIPO Decision.
(ii) Genuine use of a trade mark can occur when that mark is used alongside other trade marks or signs; T-29/04 Castellblanch SA v Office for Harmonisation in the Internal Market [2005] ECR II-5309; [2006] E.T.M.R. 61; Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24; [2012] FSR 19 ("Specsavers").
(iii) Where the trade mark proprietor has made genuine use of the mark in respect of some goods or services covered by the general wording of the specification, and not others, it is necessary for the court to arrive at a fair specification in the circumstance, which may require amendment; Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch); [2014] ETMR 57; [2014] FSR 40 ("Thomas Pink") at [52].
(iv) In cases of partial revocation, pursuant to s.46 (5) of the Trade Marks Act 1994, the question is how would the average consumer fairly describe the services in relation to which the trade mark has been used; Thomas Pink at [53].
(v) It is not the task of the court to describe the use made by the trade mark proprietor in the narrowest possible terms unless that is what the average consumer would do. For example, in Pan World Brands v Tripp Ltd (EXTREME Trade Mark) [2008] R.P.C. 2 it was held that use in relation to holdalls justified a registration for luggage generally; Thomas Pink at [53].
(vi) A trade mark proprietor should not be allowed to monopolise the use of a trade mark in relation to a general category of goods or services simply because he has used it in relation to a few. Conversely, a proprietor cannot reasonably be expected to use a mark in relation to all possible variations of the particular goods or services covered by the registration. Maier v ASOS Plc ("ASOS") [2015] EWCA Civ 220; [2015] FSR 20 at [56] and [60].
(vii) In some cases, it may be possible to identify subcategories of goods or services within a general term which are capable of being viewed independently. In such cases, use in relation to only one subcategory will not constitute use in relation to all other subcategories. On the other hand, protection must not be cut down to those precise goods or services in relation to which the mark has been used. This would be to strip the proprietor of protection for all goods or services which the average consumer would consider to belong to the same group or category as those for which the mark has been used and which are not in substance different from them; T-256/04 Mundipharma AG v OHIM [2007] ECR II-449; EU: T:2007:46."
Evidence of use was provided by the claimant's managing director. He satisfied the judge on the balance of probabilities that the claimant had put the ALICE mark to genuine use in relation to all the specified goods and services in the relevant period either by itself or authorized third-party distributors. The witness was able to support his oral evidence with copies of the company's invoices. The defendants relied largely on Mr Alexander's dicta at para [22] of his judgment in Awareness of the weight to be given to the claimant's evidence. The judge did not accept that submission and concluded that there had been genuine use throughout the relevant 5-year period.
Issues 2 and 3
In view of her findings on Issue 1, Her Honour did not have to consider Issues 2 and 3.
As the claimant had conceded in submissions that the defendants' sign "Alice camera" was not identical to the registered mark ALICE the judge had to accept that the answer to this question was "no",
The judge noted that the defendants had admitted that they had used the Alice camera sign in relation to cameras, which are identical to "apparatus for recording transmission or reproduction of… images" in class 9 for which ALICE was registered.
In view of the claimant's concession mentioned above that the sign "Alice camera" was not identical to the registered mark ALICE, Photogranm had not infringed the mark under s.10 (1).
The defendants had admitted infringement under s.10 (2) which implied that they accepted a likelihood of confusion.
Comment
The most useful parts of Judge Melissa Clarke's judgment are the reproductions of paras [106] and [107] of Lord Justice Arnold's judgment in easyGroup v Nuclei Ltd and others para [47] of Mr Justice Henry Carr's in Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel Liverpool) and others. Those passages set out clearly the principles for determining whether there has been genuine use of a mark. Anyone wishing to discuss this case may call me on 020 7404 5252 during office hours or send me a message through my contact page.
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