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A second scoop of Mr Whippy


16th Jul 2020

In November 2019, I reported on a decision of the UK IPO in relation to a partially-successful opposition by Unilever PLC to UK Application No 3298871. The applicant’s appeal against this decision has now been dismissed, despite an acknowledgement from the Appointed Person that “valid criticisms” had been made about Unilever’s evidence of use as part of their opposition.

This case confirms the well-established principle that it is not essential to file specific types of evidence in order to prove use of a mark, but that the evidence as a whole must demonstrate genuine use.  It also suggests that genuine use of a mark may be found even if the evidence filed relates to a precursor of the protected goods, rather than the protected goods themselves: in this case, the relevant protected goods were “ice cream”, while the evidence primarily related to sales of ice cream mix.

The opposed application was in the joint names of Michael Corrado Jackson and Sajid Javed (the Applicants) and was for the “Mr Whippy ice cream” Logo shown below:

The application was for a broad range of Class 30 goods including ice cream and for services in Class 43 including ice cream parlour services.

Unilever based its opposition on registrations of WHIPPY and MR. WHIPPY, both of which were old enough for the Applicant to be able to require proof of use. The Hearing Officer held that:

a) Unilever failed to show any genuine use of the WHIPPY mark;

b) although there were deficiencies in the evidence of use submitted for the MR. WHIPPY mark, Unilever had proved genuine use in relation to “Ice Cream”; and

c) there was a likelihood of confusion between the MR. WHIPPY mark and the mark applied for in respect of some of the goods and services, but not all.

The opposition was therefore partially successful, but the application was allowed to proceed for a restricted specification.

An Appeal against part of this decision was filed by the Applicants (now the Appellants), who claimed that the Hearing Officer had erred in finding that genuine use of MR. WHIPPY had been demonstrated, even in relation to ice cream.  On this basis, the Appellants argued that the opposition should have failed entirely.  The sole issue on the appeal was whether the Hearing Officer had correctly applied the test for genuine use of a mark to the evidence.

Daniel Alexander QC, sitting as an Appointed Person, rejected the Appellants’ submission that the Hearing Officer had incorrectly summarised the key factors to be taken into account in determining a finding of genuine use.

He also rejected the Appellants’ further submission that the Hearing Officer had wrongly interpreted the facts in concluding that the evidence showed that stockists must sell ice cream under the MR. WHIPPY mark and that the exhibited photographs illustrated use of this mark with consent.  The Appointed Person stated that the Hearing Officer was entitled to conclude that, on the balance of probabilities, Unilever had sufficiently proved sufficient use of the MR. WHIPPY mark during the relevant period and to base that finding largely on the evidence filed by Unilever showing sales of ice cream mix.  The evidence also included sample agreements with several undertakings operating ice cream vans, relating to the sale of MR. WHIPPY ice cream, as well as a photograph of such a van with a prominent sign advertising “MR. WHIPPY 99” for sale alongside other brands of ice cream.  Although the photograph was not dated within the relevant period, it could still be taken into account in forming an overall picture of use of the mark.

The Appointed Person reviewed the relevant principles of law applicable to an appeal.  A decision may only be overturned if it is wrong, not simply because the Appointed Person might have reached a different decision or expressed themselves differently.  A decision may be based on an evaluation of the facts, in which a number of different factors are weighed against each other.  There may be legitimate differences of opinion about how factors should be evaluated.  A decision should only be overturned if it is found to be outside the bounds within which reasonable disagreement is possible.

Although the Appointed Person noted that there were deficiencies in the evidence of use supplied by Unilever, he found that the Hearing Officer had applied reasonable standards of evaluation and reached a fair conclusion.  On this basis, he upheld the earlier decision and awarded some costs to Unilever.

Trade mark decision: O/302/20

Decision Date: 1 June 2020

Appointed Person: Daniel Alexander QC

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.

Author
Catherine Nursaw
Senior Associate
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Would you like to know more? You can talk to Catherine Nursaw who will be able to help. Call +44 (0)20 7242 0901

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