Lack of evidence of use fatal to NUTRIFEED series of marks


In Campina Nederland Holdings BV v Joseph Stewart & Co (Registration 206175), the acting controller has cancelled on the grounds of non-use a registration for a series of NUTRIFEED/NUTRI-FEED marks for various types of animal feeds.

Joseph Stewart & Co was the registered proprietor of the series of marks for NUTRIFEED/NUTRI-FEED in respect of the following goods "agricultural, horticultural and forestry products and grains included in Class 31 [of the Nice Classification]; fresh fruits and vegetables; foodstuffs for animals". Campina Nederland Holdings BV applied for revocation of the trademark on the basis that investigations conducted on its behalf had failed to establish any use of the mark for a continuous period of five years. Joseph Stewart filed a notice of opposition together with evidence of its use of the mark in a form of a statutory declaration. The statutory declaration outlined that Joseph Stewart supplied a comprehensive range of high-performance animal feeds and that it has used and continues to use the trademark in relation to all of the goods covered by the registration. It supported this with photographs of two lorries bearing the name JOSEPH STEWART together with the trademark, which is depicted interwoven with a device above the words 'premium ANIMAL FEEDS'. It also supplied a 10-page product information leaflet bearing the trademark and device.

The acting controller upheld the application for revocation, confirming that the onus of proving that there is use of the mark within the relevant period lies with the owner of the mark. The Irish Trademarks Act 1996 does not define what is meant by genuine use but the acting controller quoted with approval the European Court of Justice (ECJ) decision of Ansul BV v Ajax Brandbeveiliging BV (Case C-40/01). He confirmed that in order to determine in a given case whether any claimed use of a trademark constitutes "genuine use" of it within the meaning of that term as expressed by the ECJ, it is necessary to have information concerning the place, time, extent and nature of that use. Furthermore, the information in question must have sufficient evidential value in order to discharge the onus on the mark owner of proving, on the balance of probabilities, that the claimed use actually took place. Subjective statements or claims on the part of a proprietor may not be taken at face value, even when made as part of a statutory declaration and must, if they are to be accepted, be supported by relevant corroborative materials.

He held that the evidence filed on behalf of Joseph Stewart did not come close to discharging this onus of proof. No evidence was given showing that any goods were sold, offered for sale or advertised under the mark to customers in Ireland during that period. The simple application of the trademark to lorries operated by Joseph Stewart did not, of itself, prove that the mark was used in relation to the goods covered by the registration nor was there any evidence that the product information leaflet was ever published or circulated to customers. Joseph Stewart therefore had failed to meet the onus of proving that the registered trademark was used, and the application for revocation was granted and the registration revoked in its entirety.

Patricia McGovern, DFMG Solicitors, Ireland

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