Change of ownership of trademark cannot be proper reason for non-use


In McNeill v Colthurst (November 1 2011), the hearing officer has revoked the registration of the trademark BLARNEY under Section 51(1)(a) of the Trademarks Act 1996.

Sir Charles Colthurst was the registered proprietor of the trademark BLARNEY in respect of the following goods:  “drinks included in Class 32; natural waters, mineral, spring aerated and still waters”. Liam McNeill applied for revocation of the mark on the basis that it had not been used in the state for a period of five years.

Colthurst filed a notice of opposition to the application, together with evidence relating to reasons for the non-use of the mark. No further evidence was filed by either party and both filed written submissions in lieu of attending a hearing in the matter. Both parties also filed submissions in reply to the other party’s written submissions.

Colthurst stated that he had acquired proprietorship of the mark by a deed of assignment dated February 26 2008, and argued that the case should be decided in accordance with the decision of the Court of First Instance (CFI) in Haupl v Lidl Stiftung (Case C-246/05). That judgment held that obstacles having a direct relationship with a trademark, which make its use impossible or unreasonable, and which are independent of the will of the proprietor of that mark, constitute proper reasons for non-use.

The hearing officer decided to grant the application for revocation and revoke the registration of the trademark under Section 51(1)(a) of the act (within the period of five years following the date of publication of the registration, the trademark has not been put to genuine use in the state, by or with the consent of the trademark proprietor, in relation to the goods and services for which it is registered, and there are no proper reasons for non-use). He noted that Colthurst had not adduced any evidence whatsoever of use of the mark in the state and that, in any event, as the application for revocation was made under Section 51(1)(a), proper reasons for non-use could be argued only in respect of the five-year period following the date of publication of registration. The hearing officer noted that the act does not envisage an indefinite period during which proper reasons for non-use can be claimed. Furthermore, he stated that it cannot be the case that a change of ownership of a trademark is a proper reason for its non-use.

The hearing officer noted that the marketplace must be protected by not allowing unused trademarks to remain on the register, and by not allowing trademarks to change hands as a defensive mechanism or justifiable reason for staving off potential attacks. He noted that the reference to “preparations for use” in Section 51(3) of the act only became a factor when genuine use of the trademark had been made within the three-month period prior to the date of application for revocation. The hearing officer noted that there was no use of the trademark prior to the date of the application for revocation; therefore any preparations for use were meaningless. He stated that the act of becoming an owner does not equate to genuine use or preparations for use.

In relation to the ruling of the CFI in Haupl v Lidl Stiftung, the hearing officer stated that no obstacles, independent of Colthurst's will, such that rendered use of the trademark impossible or unreasonable, were put in front of Colthurst between the date he acquired the mark and the date of application for revocation. Therefore, Colthurst had failed to establish proper reasons for non-use. The application for revocation was granted and the registration revoked in its entirety (Section 51(6) of the act).

Ruadhan Kenny, DFMG Solicitors, Dublin

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