Dunnes rebuked for providing 'weak' excuses in revocation action

In HBI Branded Apparel Enterprises LLC v Dunnes Stores Ireland Company (November 3 2014), the hearing officer, acting for the controller, has revoked the registration of the trademark BARELY THERE.

On October 17 2012 HBI Branded Apparel Enterprises LLC made an application under Section 51 of the Trademarks Act 1996 for the revocation of the word mark BARELY THERE (Irish trademark No 211018) in the name of Dunnes Stores Ireland Company.

The applicant claimed that, up to three months before the application for revocation was made, the mark had not been put to genuine use in the state in relation to any of the goods for which it was registered for a continuous period of five years and there were no proper reasons for non-use.

Dunnes conceded that no use of the mark had been made in relation to footwear or headgear, but claimed that the mark had been used in relation to underwear. The only evidence it offered in support of this contention was a statutory declaration sworn by Mr Thomas Sheridan, the company secretary for Dunnes. Mr Sheridan claimed that, although Dunnes had used the mark since 1998 in relation to underwear, materials proving such use had been destroyed when the company’s head office had moved premises some years ago. He stated that such documentation would not normally be kept within the retail trade where changeover of products occurs on a regular basis.

Mr Sheridan provided aggregate turnover figures which he confirmed provided a representation of the value of sales of products under the mark between 2004 and 2008, but claimed that actual turnover figures constituted “confidential business information” the disclosure of which could harm the company.

It was also initially claimed by Mr Sheridan that the applicant was prohibited from seeking to revoke the mark by virtue of a letter of understanding (which had apparently been binding on assignees) executed between Dunnes and an entity called Sara Lee Corporation. This company had been the proprietor of a CTM registration for BARELY THERE before assigning it to the applicant. However, no copy of this letter of understanding could be produced and this argument was later abandoned by Dunnes at the hearing of the application.

The hearing officer noted that not a single invoice, order, delivery note, label, tag, packaging, advertisement, poster, photograph, in-store display, item of clothing or any other material bearing the mark at issue was submitted. He stated that this was “an extraordinary lack of evidence” which was all the more striking given the level of sales claimed by Dunnes (approximately 75,000 items during the period in question).

The hearing officer noted that, as the applicant had pointed out, Dunnes would have been required by the Revenue Commissioners to retain copies of invoices and other materials to ensure compliance with proper accounting and financial procedures, and that it was highly unlikely that a company the size of Dunnes would not have electronic copies of the documentation.

He also noted that stating that turnover figures were “classified business information” was “too weak an excuse” as full documentation of all sales would not have been required to prove use.

He held that “the onus is on the proprietor [Dunnes] to prove use during the relevant period and it has clearly failed to do so". He stated that he could not “engage in supposition and make findings based on unsupported statements in the statutory declaration of Thomas Sheridan”.

The registration was therefore declared revoked from October 17 2012.

Ciaran O’Neill, DFMG Solicitors, Dublin