“(1) The registration of a trade mark may be revoked on any of the following grounds— (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) For the purposes of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the United Kingdom includes affixing the trade mark to goods or to the packaging of goods in the United Kingdom solely for export purposes. (3) The registration of a trade mark shall not be revoked on the ground mentioned in subsection (1)(a) or (b) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made. Provided that, any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. (4) An application for revocation may be made by any person, and may be made either to the registrar or to the court, except that—— (a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only. (6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—— (a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.” (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use; (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; (d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (a) if proceedings concerning the trade mark in question are pending in the court, the application must be made to the court; and (b) if in any other case the application is made to the registrar, he may at any stage of the proceedings refer the application to the court. (a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.”
“If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.”
“217. In Stichting BDO v BDO Unibank Inc[2013] EWHC 418 (Ch) ,[2013] FSR 35 I set out at [51] a helpful summary by Anna Carboni sitting as the Appointed Person in SANT AMBROEUS Trade Mark[2010] RPC 28 at [42] of the jurisprudence of the CJEU in Case C40/01 Ansul BV v Ajax Brandbeveiliging BV[2003] ECR I-2439 ,Case C-259/02 La Mer Technology Inc v Laboratories Goemar SA[2004] ECR I-1159 andCase C-495/07 Silberquelle GmbH v MaselliStrickmode GmbH[2009] ECR I-2759 (to which I added references toCase C-416/04 P Sunrider Corp v Office for Harmonisation in the Internal Market (Trade Marks and Designs)[2006] ECR I-4237 ). I also referred at [52] to the judgment of the CJEU inCase C-149/11 Leno Merken BV v Hagelkruis Beheer BV [EU:C:2012:816], [2013] ETMR 16 on the question of the territorial extent of the use. Since then the CJEU has issued a reasoned Order inCase C-141/13 P Reber Holding & Co KG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:C:2014:2089] and that Order has been persuasively analysed by Professor Ruth Annand sitting as the Appointed Person in SdS InvestCorp AG v Memory Opticians Ltd (O/528/15). [218] ... 219. I would now summarise the principles for the assessment of whether there has been genuine use of a trade mark established by the case law of the Court of Justice, which also includesCase C-442/07 Verein Radetsky- Order v Bundervsvereinigung Kamaradschaft 'Feldmarschall Radetsky'[2008] ECR I-9223 andCase C-609/11 Centrotherm Systemtechnik GmbH v Centrotherm Clean Solutions GmbH & Co KG [EU:C:2013:592], [2014] ETMR 7, as follows: (1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37]. (2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at [70]; Verein at [13]; Centrotherm at [71]; Leno at [29]. (3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at [17]; Centrotherm at [71]; Leno at [29]. (4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]-[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]-[23]. (5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]-[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71]. (6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; La Mer at [22]-[23]; Sunrider at [70]-[71], [76]; Centrotherm at [72][76]; Reber at [29], [32]-[34]; Leno at [29]-[30], [56]. (7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La Mer at [21], [24] and [25]; Sunrider at [72]; Leno at [55]. (8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at [32].”
“The burden lies on the registered proprietor to prove use.......... However, it is not strictly necessary to exhibit any particular kind of documentation, but if it is likely that such material would exist and little or none is provided, a tribunal will be justified in rejecting the evidence as insufficiently solid. That is all the more so since the nature and extent of use is likely to be particularly well known to the proprietor itself. A tribunal is entitled to be sceptical of a case of use if, notwithstanding the ease with which it could have been convincingly demonstrated, the material actually provided is inconclusive. By the time the tribunal (which in many cases will be the Hearing Officer in the first instance) comes to take its final decision, the evidence must be sufficiently solid and specific to enable the evaluation of the scope of protection to which the proprietor is legitimately entitled to be properly and fairly undertaken, having regard to the interests of the proprietor, the opponent and, it should be said, the public.”
"(i). Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11 ). The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977 ,CPR 52.11 ). (ii) The approach required depends on the nature of decision in question (REEF). There is spectrum of appropriate respect for the Registrar's determination depending on the nature of the decision. At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions. Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont). (iii) In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re: B and others). (iv) In the case of a multifactorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions. In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation (REEF, BUD, Fine & Country and others). (v) Situations where the Registrar's decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong. It is not necessary for the degree of error to be 'clearly' or 'plainly' wrong to warrant appellate interference but mere doubt about the decision will not suffice. However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re: B). (vi) The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed. Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently. Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account. (REEF, Henderson and others)."
“[98]…Apart from summary principle (i), which restates the terms ofCPR 52.11 , principles (ii) to (vi) of paragraph 52 of TT Education Limited reflect the preponderance of the cases that appellate courts exercise an appropriate restraint. Notwithstanding his dropping of the qualifier “plainly” in sub-paragraph (v), when that sub-paragraph is read in the context of his other principles, and consistently with the case-law he had just examined, the effect of dropping “plainly” may be less significant in practice than Ms Pickard contends for. In other words, in the application of these different formulations there is unlikely to be a real difference in outcome between the two jurisdictions when an appellate court is reviewing the multi-factorial assessment of a hearing officer and in the absence of any identifiable error. Therefore, there is in my view no material divergence in approach as between Scotland or England in relation to the nature of appeals from the decisions of hearing officers or the test to be applied to such appeals. “[98]…Apart from summary principle (i), which restates the terms ofCPR 52.11 , principles (ii) to (vi) of paragraph 52 of TT Education Limited reflect the preponderance of the cases that appellate courts exercise an appropriate restraint. Notwithstanding his dropping of the qualifier “plainly” in sub-paragraph (v), when that sub-paragraph is read in the context of his other principles, and consistently with the case-law he had just examined, the effect of dropping “plainly” may be less significant in practice than Ms Pickard contends for. In other words, in the application of these different formulations there is unlikely to be a real difference in outcome between the two jurisdictions when an appellate court is reviewing the multi-factorial assessment of a hearing officer and in the absence of any identifiable error. Therefore, there is in my view no material divergence in approach as between Scotland or England in relation to the nature of appeals from the decisions of hearing officers or the test to be applied to such appeals. [99] In relation to Ms Pickard’s suggestion that in TT Education 22. Limited Mr Alexander QC had recanted from his observations in Digipos, I do not accept this submission. His observation in Digipos (set out at para [57], above), to the effect that criticisms that a hearing officer attributed too much or too little weight to certain factors are not errors of principle warranting interference, is wholly consistent with his observations in TT Education Limited. Further, this observation in Digipos accords entirely with the nature of the multi-factorial assessment discussed in the case-law. Accordingly, I proceed on the basis that an appeal against a multi-factorial assessment of the likelihood of confusion for the purposes of section 5(2) of the TMA 1994 can only succeed where a distinct error of principle is shown or where the decision is plainly wrong.”
“I therefore believe that the phrases ‘plainly wrong’ or ‘clearly wrong’ are still legitimate phrases to use when considering whether to overturn a decision on an evaluative issue which is as indeterminate and open to debate as the question of likelihood of confusion.”
“33. The present case is concerned with the UK banking sector. This is, self- evidently, a huge market. The proprietor is best placed to show evidence that, in the relevant periods, it was engaged in maintaining or creating a share in that market. However, the evidence which it has provided is patchy. For instance, the 80 card owners in the UK are not matched to the transactions, presumably because they are not, in fact, transactions wholly made by the UK card holders. If they were, the level of spend would be surprisingly large. Therefore, the transaction evidence has little, if any, relevance because it is impossible to know the proportion of it which relates to the UK card holders. The debit and credit card evidence comes down to 80 holders over 6 years. This is a vanishingly small amount of business in the sector concerned and begs the question as to how the proprietor has commercially engaged with those 80, and why there are not more than 80 card holders. 34. The answer to that question lies in the picture which emerges from the rest of the evidence. I have already mentioned the press release which refers to the proprietor as being the best bank in Slovenia (only). The flotation on the London Stock Exchange was to raise funds for the proprietor itself. The final page of the memorandum states that the proprietor derives its information for the memorandum from the Republic of Slovenia, the Slovenian banking market and its competitors. These two pieces of evidence place the proprietor’s business as being in Slovenia, rather than truly international (i.e. having a commercial presence) in other countries. All banks enable their customers to transact internationally, but that does not mean that they have a share in the international banking market. A customer using a debit or credit card abroad does not mean that the ‘home’ bank has a presence on the banking market wherever the card is used.”
“9. Evidence has been filed by Barbka Krumberger, who is the proprietor’s Legal Advisor. Ms Krumberger exhibits2 correspondence with UK-based entities regarding advanced payment guarantees, dated13 May 2010 ,28 December 2010 ,20 May 2011 ,29 June 2011 and8 November 2011 . An example is shown here: and later she described it in these terms: “35. A good illustration of this point is the evidence and submissions relating to the advanced payment guarantees. These are sent by the proprietor in Slovenia to an entity in the UK, reporting that the UK entity has concluded a trade agreement with a party in Slovenia, “the Principal”
“At the request of the Principal, we, ABANKA VIPA d.d., Slovenska cesta 58, SL-1517 Ljubljana, Slovenija .... Hereby irrevocably undertake to pay to you, upon your first demand...”
“26….. In joined Cases C-585/08 and C-144/09, Pammer v Reederei Karl Schlüter GmbH & Co. KG and Hotel Alpenhof GesmbH v Heller, the CJEU interpreted the national court as asking, in essence, “on the basis of what criteria a trader whose activity is presented on its website or on that of an intermediary can be considered to be ‘directing’ its activity to the Member State of the consumer's domicile ..., and second, whether the fact that those sites can be consulted on the internet is sufficient for that activity to be regarded as such”
“The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader's activity is directed to the Member State of the consumer's domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader's site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.” “The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader's activity is directed to the Member State of the consumer's domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader's site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.”
“27. The proprietor’s evidence shows that it has an English-language version of its website, which includes links to e.g. its personal and corporate banking services. Dr Curley submitted that the evidence shows that the English-language version of the website had been accessed by UK-resident clients of the proprietor using its online banking services. He said that there is no requirement that the users of the website, in the UK, must be UK nationals: it makes no difference whether they are Slovenian, or whether the bank accounts were opened in Slovenia. Mr Alkin agreed that the website is accessible from the UK, but maintained that this is not enough to show genuine use. He submitted that English is the international language of the West and so the mere fact that a section of it is available in English is not evidence that the website is targeted at UK customers. Further, Mr Alkin submitted that the customer opens the account in Slovenia, but then when in the UK remotely accesses the bank’s services via the website. Therefore, there is no transaction in the UK: the commercial relationship began in Slovenia.”
“Debt collection services (Class 36). The Claimants rely upon evidence that they have used the Trade Mark in relation to insolvency work, and that such work includes collecting debts. The Defendants do not dispute those facts, but dispute that they establish use in relation to "debt collection services" as that expression would be understood by the average consumer. In support of this, the Defendants rely upon the fact that the Claimants are not even members of the Credit Service Association, the body that regulates debt collection. In addition, Mr MacGregor accepted that debt collection was a different industry with which the Claimants did not compete. I agree with the Defendants on this issue, and accordingly this category must be revoked.”
“28. The credit and debit cards, which bear the trade marks, are used by the proprietor’s customers who are resident in the UK. Mr Alkin submitted that the point is the same as for the website; there is no evidence that the customers opened the account from the UK. Dr Curley submitted that the fact that the cards were sent to customers who are resident in the UK is evidence of genuine use in the UK. As with the cheques, they guarantee the origin of the service because the cards bear the trade marks. 29. In relation to the evidence showing use of the cards in the UK, Mr Alkin’s position was that the figures given in the evidence about transactions (1,899,968 to the value of 56,800,000 Euros) are not tied to the 80 cards which were issued. There is no evidence showing that the 80 card holders were responsible for all, or any, of these transactions. He interpreted the evidence as showing that the transactions were undertaken by Slovenian customers (i.e. resident in Slovenia) who had travelled to the UK and used the cards whilst in the UK. As support for this contention, Mr Alkin pointed out that 56,800,000 Euros would, otherwise, be a large (and, therefore, unlikely) amount for 80 cardholders to spend.”
“A customer using a debit or credit card abroad does not mean that the ‘home’ bank has a presence on the banking market wherever the card is used.”
“52. As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough, as the cases cited in paras 21-26 and 32-36 above establish. The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. Thus, where the claimant's business is carried on abroad, it is not enough for a claimant to show that there are people in this jurisdiction who happen to be its customers when they are abroad. However, it could be enough if the claimant could show that there were people in this jurisdiction who, by booking with, or purchasing from, an entity in this country, obtained the right to receive the claimant's service abroad. And, in such a case, the entity need not be a part or branch of the claimant: it can be someone acting for or on behalf of the claimant. That is why, as explained in Athlete's Foot, the decision in Panhard et Levassor and the observations in Pete Waterman are compatible with the decision in Alain Bernardin. 53. As to Lord Diplock's statement in Star Industrial that, for the purpose of determining whether a claimant in a passing off action can establish the first of Lord Oliver's three elements, an English court has to consider whether the claimant can establish goodwill in England, I consider that it was correct. In other words, when considering whether to give protection to a claimant seeking relief for passing off, the court must be satisfied that the claimant's business has goodwill within its jurisdiction.”
“57. Indirect support for this approach is also to be found in decisions of the Court of Justice of the European Union, which has emphasised in a number of decisions the need for "genuine use" of a mark, namely "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 services", and that this means "real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark" – to quote from Leno Merken BV v Hagelkruis Beheer BV (Case C-149/11 ) EU:C:2012:816, para 29. Further, it is relevant to note that the CJEU has also held that "the mere fact that a website [advertising or selling the product or service concerned] is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory" – L'Oreal SA v eBay International AG (Case C-324/09 ) EU:C:2011:474[2011] ECR I-6011 , para 64.”
“61. It is also necessary to bear in mind the balancing exercise underlying the law of passing off, which Somers J described in Dominion Rent A Car at p 116 as "a compromise between two conflicting objectives, on the one hand the public interest in free competition, on the other the protection of a trader against unfair competition by others". More broadly, there is always a temptation to conclude that, whenever a defendant has copied the claimant's mark or get-up, and therefore will have benefitted from the claimant's inventiveness, expenditure or hard work, the claimant ought to have a cause of action against the defendant. Apart from the rather narrower point that passing off must involve detriment to the claimant, it is not enough for a claimant to establish copying to succeed. All developments, whether in the commercial, artistic, professional or scientific fields, are made on the back of other people's ideas: copying may often be an essential step to progress. Hence, there has to be some balance achieved between the public interest in not unduly hindering competition and encouraging development, on the one hand, and on the other, the public interest in encouraging, by rewarding through a monopoly, originality, effort and expenditure – the argument which is reflected in Turner LJ's observation at p 312 in Maxwell v Hogg to the effect that a plaintiff who has merely advertised, but not marketed, his product, has given no consideration to the public in return for his claimed monopoly. In the instant case, the assessment of the appropriate balance between competition and protection, which arises in relation to any intellectual property right, must be made by the court, given that passing off is a common law concept. 62. If it was enough for a claimant merely to establish reputation within the jurisdiction to maintain a passing off action, it appears to me that it would tip the balance too much in favour of protection. It would mean that, without having any business or any consumers for its product or service in this jurisdiction, a claimant could prevent another person using a mark, such as an ordinary English word, "now", for a potentially indefinite period in relation to a similar product or service. In my view, a claimant who has simply obtained a reputation for its mark in this jurisdiction in respect of his products or services outside this jurisdiction has not done enough to justify granting him an effective monopoly in respect of that mark within the jurisdiction. 63. I am unpersuaded that PCCM's case is strengthened by the fact that we are now in the age of easy worldwide travel and global electronic communication. While I accept that there is force in the point that the internet can be said to render the notion of a single international goodwill more attractive, it does not answer the points made in paras 51-59 above. Further, given that it may now be so easy to penetrate into the minds of people almost anywhere in the world so as to be able to lay claim to some reputation within virtually every jurisdiction, it seems to me that the imbalance between protection and competition which PCCM's case already involves (as described in paras 60-62 above) would be exacerbated. The same point can be made in relation to increased travel: it renders it much more likely that consumers of a claimant's product or service abroad will happen to be within this jurisdiction and thus to recognise a mark as the claimant's. If PCCM's case were correct, it would mean that a claimant could shut off the use of a mark in this jurisdiction even though it had no customers or business here, and had not spent any time or money in developing a market here - and did not even intend to do so.”