Sale of 22 jewellery items insufficient to meet genuine use requirements

In House of Fraser (Stores) Limited v BiBa GmbH, the hearing officer has revoked the registration for the trademark BIBA.

On April 1 2011 House of Fraser (Stores) Limited made an application for the revocation of the Irish trademark BIBA in the name of BiBa GmbH on the ground that the mark had not been put to genuine use in the state for an uninterrupted period of five years in relation to any of the goods for which the mark was protected and that there were no proper reasons for such non-use.

The registration of the mark was published in the Trademarks Journal on March 22 2006 in respect of the following goods:

• Class 9: "Spectacles and sunglasses."
• Class 14: "Precious metals and their alloys as well as goods made thereof or coated therewith, as far as included in this class: jewellery, fashion jewellery, precious stones, clocks and watches."

The proprietor of the mark filed a notice of opposition together with evidence supporting its claim of use of the mark. The evidence submitted included one invoice for 22 jewellery items bearing the BIBA tag delivered on January 19 2011 by the proprietor to its trading partner in Ireland. The other invoices enclosed with the proprietor’s evidence post-dated the date of application for revocation. The proprietor referred the hearing officer to an earlier decision of the controller in the LELLIKELLY case (Travel Hurry Projects Limited v Stefcom SPA (March 21 2005)) wherein he stated:

“the amount of use shown is admittedly very small but it is, nevertheless, 'genuine' insofar as it served to identify the proprietor’s goods to third parties with whom the proprietor could reasonably have expected to develop a trading relationship for the purpose of creating a share in the market for its goods. It was not use that could be characterised as internal to the proprietor and nor have I any reason to believe that it was token use, intended merely to preserve the proprietor’s rights under the registration and to stave off an attack on grounds of non-use.”

The hearing officer, acting on behalf of the controller, decided to revoke the mark in respect of all of the goods for which the mark was protected.

The hearing officer noted that the evidence submitted by the proprietor was confined to goods in Class 14. The hearing officer noted that, whilst the proprietor did try and argue that the relevant goods in Class 9 were fashion items and were interchangeable and associated with the goods the proprietor had used the mark on in Class 14, such a proposition was unsustainable and must be rejected.

The hearing officer accepted that “depending on the nature of the goods, a single transaction over a five-year period may be considered genuine use. For example, manufacturers of nuclear submarines or the producers of block-buster movies may output only one product during such a period”. Accordingly, the hearing officer held that “each case must be considered on its merits and that the nature of the goods, the average consumer, the characteristics of the market and the frequency and scale of the use of the mark are significant factors”.

The hearing officer stated that he was “satisfied that the general public purchases tens of thousands of the goods, covered by the registration, in Ireland on an annual basis”. Therefore, he held that evidence of the sale of 22 jewellery items:

“in a single transaction, over a period of five years cannot be deemed sufficient to meet the qualification identified by the CJEU in Ansul [Ansul BV v Ajax Brandbeveiliging BV (Case C- 40/01)] that genuine use of a mark is established when the mark is ‘used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or service'."

The hearing officer held that the use of the mark can “at best” only be described as “token”. He stated that:

“one single transaction between a producer and distributor, for goods which may not have been placed on the market for the benefit of the end consumer, does not demonstrate the creation of an outlet for goods. There was no market created nor was there an existing market to preserve”.

Accordingly, the mark was revoked.

Colette Brady, DFMG Solicitors, Dublin