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Gin-uine use? The UKIPO concludes yes, despite limited evidence and variances between the trade mark as registered and as used

29 March 2022. Published by Ciara Cullen, Partner and Sarah Mountain, Partner and Courtney Brotherson, Trainee

The UK Intellectual Property Office (UKIPO) has rejected an application by Inver House Distillers for the revocation of a competitor's trade mark.

The mark in question is owned by Destileras M.G., S.L and Importaciones y Exportaciones Varma, S.A (the Proprietors) and consists of a 2D image of a distinctively shaped bottle, featuring the 'Master's logo' and a lion device (the Master's Mark). The decision was reached on the basis that the Proprietors had successfully demonstrated genuine use of their mark, in the UK. 

Background

In July 2014, after filing an international application in 2012 and designating the EU in 2013, the Proprietors obtained an EU trade mark for the Master's Mark, for gin, in class 33. Following the expiry of the Brexit transition period on 31 December 2020, a comparable UK trade mark was automatically created by the UKIPO, adopting the filing date of the original international application (the Contested Mark). In March 2021, Inver sought to revoke the Contested Mark under section 46 of the Trade Marks Act 1994 (TMA) on grounds of non-use. 

Under section 46(1)(a) TMA, marks that have been registered for more than 5 years become vulnerable to revocation if they have not been put to genuine use, in the UK, within the 5 years following their registration or for any other continuous 5-year period. Inver asserted two periods of alleged non-use: July 2014 to July 2019 or alternatively, March 2016 to March 2021. 

Inver's submissions

Inver made various submissions in support of revocation: 

(i) Figurative image mark or shape mark

Firstly, Inver submitted that the Contested Mark should be treated as a figurative image, rather than a shape mark, as to do otherwise would give it a wider scope than its parent EU registration. The UKIPO accepted this, on the basis that the original international application had been for a figurative mark.

(ii) Distinctive character

Secondly, Inver submitted that certain evidence submitted by the Proprietors did not demonstrate genuine use of the Contested Mark, as there were certain variances between the mark as registered and the mark as used. 

Under section 46(2) TMA, the use of a trade mark includes "use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered". In considering the Proprietors' evidence, the UKIPO noted that this indeed showed minor variances. However, it also found that the distinctive character of the Contested Mark, in relation to spirits, lay in the word "Master's", the lion device and the unique shape of the bottle. Minor differences in the arrangement of these distinctive elements on the Proprietor's products were acceptable and the omission of words like "London Dry Gin" and "Tridistilled Gin" were negligible, as they were merely descriptive of the Proprietors' goods. 

The UKIPO's decision

The UKIPO found various deficiencies in the advertising and marketing evidence submitted by the Proprietors. It also found sales evidence (which amounted to just 17 invoices) "far from overwhelming", particularly in the context of the UK's thriving gin market.

Despite this, the UKIPO noted that genuine use requires a global assessment of the evidence and concluded that there was a "consistent and repeated pattern of sales to an exclusive retailer throughout the relevant periods" and that the Proprietors had "attempted to create and maintain a market for their goods under their mark". The UKIPO was therefore satisfied that the Contested Mark had been put to genuine use, in the UK, and Inver's revocation application was rejected.

Takeaways? 

The decision will provide comfort to brand owners, in that it demonstrates that use of a trade mark does not have to be quantitively significant to be genuine. Again, to the relief of brand owners but perhaps more surprising is the finding that minor discrepancies between logos as used vs as registered, even where those discrepancies concern the arrangement of distinctive elements, will not necessarily be fatal and may be taken into account when determining genuine use.  

We will closely monitor any appeal of the decision by Inver. In the meantime, the full decision can be downloaded from the UKIPO's website