LPGA device mark revoked on the grounds of non-use
A hearing officer at the Irish Patent Office has ordered the cancellation of the trademark LPGA for goods in Class 28 of the Nice Classification on the grounds that there was no evidence that the mark had been used.
Ladies Professional Golf Association (Ladies Professional) was the registered proprietor of the device mark LPGA in Class 28 in respect of golf clubs, golf bags and golf balls. The Professional Golfers' Association (Professional Golfers) applied for revocation of the mark on the grounds of non-use. Ladies Professional denied the allegation and submitted various statutory declarations to substantiate its alleged use.
At the hearing, the hearing officer held that the essential question was whether there was genuine use of the mark in Ireland between the date of publication of the registration (November 30 1994) and the date of the application for revocation (November 28 2003).
Ladies Professional gave evidence that it had licensed the use of the trademark on golf equipment to Women's Golf Unlimited Inc, which in turn had sub-licensed the use of the mark to Voco AG, the subsidiary of which, Voco (UK) Limited, supplied during the relevant period two sets of golf clubs to a retail outlet in Ireland, which sold them on to customers. The only evidence of sales in Ireland was a single invoice for I£264.
The fact of Ladies Professional having licensed the use of the mark to Women's Golf Club Unlimited and the fact of the latter having sub-licensed the use of the mark in the United Kingdom and Ireland to Voco did not of themselves constitute evidence of use of the mark within Ireland. Licensing and distribution arrangements of this nature are a normal part of the exploitation of brand names but their existence alone does not mean that goods bearing a particular mark have actually been put on the market. Nor does the existence of a website which displays the mark constitute evidence of use of the mark in relation to goods for which it is registered. There was no evidence that the material in question ever came to the notice of any consumer within Ireland during the relevant period.
The main part of Ladies Professional's evidence was that two sets of golf clubs bearing the mark were sold at a retail outlet in Ireland. The hearing officer said that that could not be regarded as "real" commercial exploitation of the mark in the sense that it could not have had the effect of creating for Ladies Professional a share in the market for the goods for which the mark was protected. To create and maintain such a share in the very substantial market that exists for golf clubs and related goods, Ladies Professional or its agent would have had to supply a sufficient quantity of marked goods such that there was a real possibility that the average consumer of those goods might be exposed to them and might have an opportunity to acquire them. Having regard to the size of the relevant market, the actual number of customers that might have been exposed to goods bearing the mark represented such a limited number of people that there was never any real possibility of goods bearing the mark securing or maintaining a share of the market. For that reason, the use shown by Ladies Professional was not real commercial use and was not therefore 'genuine use' within the meaning of the Trademarks Act 1996. Therefore, the hearing officer allowed the application for revocation of the trademark.
The hearing officer also took the opportunity to discuss the principles behind partial revocation. He indicated that there is no requirement on an applicant for revocation to request revocation in respect of each and every one of the goods/services for which the mark stands registered or risk seeing the application fail if the owner proves that the mark was used in relation to one only of those goods or services. By making an application for revocation, an applicant puts the onus on the mark owner to prove that it has used the mark in relation to the goods/services for which it is registered and, if the latter fails to do so in respect of any of the relevant goods/services, then the registration must be revoked to the extent that it covers such goods or services. An application for revocation may, at the option of the applicant, be specifically limited to certain of the goods/services covered by a registration, but if it is not so limited then it must be understood as relating to all of the relevant goods/services and the possibility of either full or partial revocation is immediately opened up. Therefore, the hearing officer held that even if he had accepted Ladies Professional's evidence as showing genuine use of the trademark in relation to golf clubs he would have revoked the registration to the extent that it covered golf bags and golf balls in respect of which no evidence of use was given.
For a discussion of other proceedings between the same parties, see Lady golfers win second round in LPGA logo dispute.
Patricia McGovern, P McGovern & Co Solicitors, Dublin
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