A recent decision of the UK IPO in opposition proceedings illustrates the need to be able to supply appropriate and adequate evidence of use if an Opponent relies on an earlier right which has been registered for more than 5 years. It also serves as a reminder that you will not be awarded costs even if you are the winning party, unless you actually ask for them!
Win Win Parenting Pty Lrd (“the Holder”) is the holder of International Registration No WO1398752 WIN WIN PARENTING Logo:
Protection in the UK was requested in respect of goods and services in Classes 9, 16, 41, 44 & 45. The Class 41 services included “Adult education” and “coaching (training)”.
Win-Win Parenting International Limited (“the Opponent”) opposed the UK designation for all of the goods and services on the basis of its earlier UK Registration No 2544718 WIN-WIN PARENTING Logo (below) in Class 41 for: “Parent training courses”.
The earlier mark had been registered for more than 5 years by the time the opposed mark was published, so it was subject to proof of use conditions. The opposition included a statement of use in respect of all the protected services. In its counterstatement, the Holder requested that the Opponent produce evidence of use of the earlier mark. The relevant period for which proof of use was required was determined to be between 18 August 2013 and 17 August 2018.
The Opponent provided a Witness Statement in the name of its CEO, to which 7 exhibits were attached. Some of these exhibits consisted of undated material, some demonstrated use outside the UK and some did not show the earlier mark.
The Hearing Officer reviewed the relevant statutory provisions and case law regarding proof of use and concluded that the Opponent had not shown any use of the mark in the UK during the relevant period for “Parent training courses”. One of the exhibits demonstrated that the training courses had taken place in South Africa, while 3 of the other exhibits appeared to indicate that the Opponent had promoted the “Win-Win Parenting” training course in the UK within the relevant period for the purposes of attracting funding. The Witness Statement included the information that marketing programmes in the UK had not yet procured a donor to support the launch of the parenting programmes in the UK. Only one exhibit related to actually delivering the training course in the UK and that exhibit did not actually show the trade mark.
The Hearing Officer concluded that the evidence provided fell short of the “sufficiency and solidity” needed to meet the standards of proof required. Accordingly, the earlier mark could not be relied on in the opposition proceedings. Since this was the only ground of opposition, the opposition therefore failed.
The Hearing Officer commented that since the Holder was successful in these proceedings it was, in principle, entitled to a contribution towards its costs. At the conclusion of the evidence rounds the Holder had been invited to indicate whether it wished to make a request for an award of costs and, if so, to complete a pro-forma including a breakdown of its actual costs. However, the Holder did not respond to that invitation, so no costs were awarded.
Both of the parties in these proceedings represented themselves. A trade mark Attorney will be able to advise on issues such as the type of evidence that will be needed where proof of use is required – and on the importance of remembering to request an award of costs.
Trade Mark Decision BL Number: O/697/19
Decision date: 15 November 2019
Hearing Officer: Ms J Ralph
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.