High Court confirms revocation of marks relating to iconic sports car for non-use
In Healey Sports Cars Switzerland Ltd v Jensen Cars Ltd ( EWHC 24 (Pat), January 24 2014), Henry Carr QC sitting as a deputy judge has held that the use by Healey Sports Cars of marks relating to a proposed new version of the iconic Jensen Interceptor sports car on a website and in a press release was not genuine, as such use had been made solely to preserve the rights conferred by the registrations.
Intellectual Property Office hearing officer Allan James handed down two decisions in December 2012. In the first, he found that Healey's UK registrations for the word marks INTERCEPTOR and JENSEN-HEALEY, or (in the case of Healey's international word marks INTERCEPTOR, JENSEN and JENSEN-SUISSE) the protection of Healey's marks in the United Kingdom, should be revoked for non-use pursuant to Section 46(1)(a) of the Trademarks Act 1994. In the second, he allowed Jensen Cars Ltd's opposition to Healey's international registration of JENSEN-HEALEY in part and rejected Healey's attempt to invalidate Jensen's UK trademark JENSEN.
The hearing officer rejected Healey's evidence of genuine use which was based first on use of JENSEN and INTERCEPTOR on its website (announcing "The New JENSEN INTERCEPTOR. Coming soon.") and an accompanying press release relating to the forthcoming launch, along with photographs of the prototype of the new car (referred to as a “platform”).
Healey appealed both decisions, arguing that its use of the marks on the website and in the press release was genuine, and that, by disregarding that evidence, Mr James had failed to take account of relevant circumstances. Healey also argued that Mr James' first decision was internally inconsistent because, having concluded that he was unable to rely on evidence given by Jensen's solicitor about a meeting "shortly before" the press release in which Jensen told Healey that it was at an advanced stage of plans to develop a new Jensen car, Mr James had nevertheless taken account of the evidence about that meeting, in questioning whether the use relied on by Healey really was intended to create a market for the goods amongst potential customers for motor cars. Healey contended that, in the event of use of its international registration for JENSEN being held as genuine, it should succeed on both appeals on the basis that the date of its registration pre-dated Jensen's registration date for its JENSEN mark, since the JENSEN marks protected identical goods and services.
Dismissing the appeals, Henry Carr QC agreed with Mr James that use on the website and in the press release in relation to a car that did not exist at the time, and was at least a year away from being "unveiled", did not appear to qualify as use of the marks in relation to goods "already marketed or about to be marketed". There was insufficient information about the new car's specification to allow potential customers reading the press release or the website to decide whether to register a serious interest in buying one, and there was no evidence of anyone expressing any interest in purchasing the new car as a result of these events or otherwise. The judge considered that Mr James had been correct in his assessment of the evidence and was entitled to find that there was no genuine use.
Henry Carr QC also found that, whilst Mr James had expressly disregarded the evidence of Jensen's solicitor, he had remained doubtful whether the uses relied on, which occurred only a few days before Healey itself applied to invalidate Jensen's registration, were anything more than token use because Healey needed to rely on its own registrations in support of its application to invalidate Jensen's mark, and its registrations were susceptible to revocation for non-use. Given that Healey offered no contrary explanation, Henry Carr QC concluded that Mr James had been entitled to consider that Healey's use of the marks a few days before the revocation applications had been made was solely to preserve the rights conferred by its own registration.
Henry Carr QC found no error of law or principle in the approach of Mr James to the evidence. He added that it was not possible to tell from the photographs whether the platform existed during the five-year period, since they were undated and exhibited to a witness statement dated about a year after the relevant period had expired. Further, the JENSEN mark was not visible on the platform shown in the photographs. Healey's appeals were therefore dismissed.
While there is no de minimis rule as such, it is hard to persuade a court of genuine use where the goods do not have the mark in question permanently affixed to them and have not been put on the market in substantial numbers. This lesson for Healey also provides guidance for others expecting solicitors to give evidence. Henry Carr QC commented that the view that it is more efficient or cost-effective to have legal representatives give evidence of fact was misconceived due to the fact that the person giving it had no knowledge of the relevant facts. There was no reason why such evidence should be given more weight in registry as opposed to court proceedings.
Désirée Fields, McDermott Will & Emery UK LLP, London
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