CA-2024-00277 - [2025] EWCA Civ 1000

Section 10(2) of the 1994 Act implemented successive European Union Directives culminating in Article 10(2)(b) of European Parliament and Council Directive 2015/2436/EU of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast). Parallel provisions are contained in Article 9(2)(b) of European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 on the European Union trade mark (codification).

These provisions provide that the proprietor of a registered trade mark is entitled to prevent third parties from using a sign in the course of trade without the proprietor’s consent if the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered and there exists a likelihood of confusion on the part of the public. Save for likelihood of confusion and save for one point concerning the easy.com mark, it is common ground that all of the requirements for infringement under section 10(2) are satisfied in this case.

The Defendants’ counterclaims for revocation for non-use are made under section 46(1)(b) of the 1994 Act. Section 46 implemented what are now Articles 16 and 19 of Directive 2016/2436. Parallel provisions are contained in what are now Articles 18 and 58 of Regulation 2017/1001.

Section 46 provides, so far as relevant:

“(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;

…

(2)

For the purposes of subsection (1) use of a trade mark includes use in a form  (the ‘variant form’) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered  (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor), 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.

…

(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.

…”