In November 2019, Reddie & Grose 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.
Insights: Trade Marks
Reddie & Grose’s Brighton-based trade mark attorneys report on the most recent football team trade mark application to catch the headlines. Brighton and Hove Albion FC (‘BHAFC’) have caused a bit of a stir in the press and among some of their fans by applying to register ALBION and THE ALBION as UK trade marks. The concern is that BHAFC have unjustly laid claim to an ancient name for the British Isles and that this move will cause problems for the many local businesses that also use the word ALBION. We love seeing the mainstream press pay attention to trade mark applications, but in this case fans need not worry about BHAFC overstepping the mark with their trade mark protection.
Because of the disruption caused by the Covid 19 pandemic, since 24 March 2020 the UK IPO has treated every day as an “interrupted day” as far as deadlines are concerned. This applies to UK applications and registrations for: patents, supplementary protection certificates, trade marks, designs. It also applies to deadlines in proceedings relating to these rights, such as oppositions and invalidity actions.
New UK trade mark applications for BLACK LIVES MATTER and I CAN’T BREATHE spark outrage – and they have now been withdrawn
Following the killing of US citizen George Floyd by the police, thousands have joined protesters all over the world to march with the Black Lives Matter organised movement, which protests against racial injustice and police brutality against the black community.In the wake of these events, a Manchester businessman by the name of George Demetriou filed an UK trade mark application for the mark “Black Lives Matter” (in various fonts as a series of four marks in one application). This application covers Class 25 for a variety of clothing goods. Full details of this application can be seen on the Intellectual Property Office website. Mr Demetriou also filed a UK trade mark application for the mark “I can’t breathe”, (again in a variety of fonts as a series of three marks in one application). These are the words that were spoken by George Floyd before he was killed, and is an expression that has been used by multiple black victims of police brutality. This application covers, amongst other goods, Class 14 for charity bracelets, Class 25 for a variety of clothing, and Class 36 for fundraising services.
The owner of an earlier mark which had been recognised as famous in China was unsuccessful in an opposition to an EUTM application based on prior registrations of variants on that mark. However, they subsequently succeeded in a cancellation action, in which they alleged that the Registrant (originally from China) must have been aware of their mark and had acted in bad faith in registering it.
26 April 2020 is World Intellectual Property Day. World Intellectual Property Day is an event established by the World Intellectual Property Office (WIPO) to inspire the public to “learn about the role that intellectual property rights play in encouraging innovation and creativity”. Each annual event has a theme and this year’s theme, focussing on climate change, is “Innovate for a Green Future”.
On 3 March 2020, a company called Cobblestone Lane LLC filed an application in the USA for the mark ARCHEWELL. The application was in respect of a wide range of goods and services, including charitable fundraising and emotional support and counselling services. Taking advantage of the 6 month “priority” period that follows the first filing of a trade mark, further applications were filed in the UK, EU and elsewhere for the same mark and goods/services, claiming the benefit of the original US filing date. So far, so fairly usual. Then on 6 April 2020, the Telegraph newspaper in the UK revealed that the applications had been filed on behalf of the Duke and Duchess of Sussex, who planned to launch a new non-profit organisation under the name ARCHEWELL.
For some time now, it has been known that the Chinese government provides financial incentives to Chinese nationals and Chinese companies that file domestic and foreign patent, utility model, registered design, and trade mark applications. The Chinese government, for example, subsidises official fees and attorney fees, offers tax breaks, provides financial support, and issues rewards for patent and utility model utilisation. The idea of this generous arrangement is to increase the awareness of IP in China and to encourage Chinese innovators to learn how to protect their IP.