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.
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.
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!