Case No. IP-2020-000074

(1) The proprietor of a trade mark is entitled to prohibit the use of a sign only to the extent that the registration of the trade mark is not liable to be revoked pursuant to section 46(1)(a) or (b) (revocation on basis of non-use) at the date the action for infringement is brought. (2) Subsection (3) applies in relation to an action for infringement of a registered trade mark where the registration procedure for the trade mark was completed before the start of the period of five years ending with the date the action is brought. (3) If the defendant so requests, the proprietor of the trade mark must furnish proof— (a) that during the five-year period preceding the date the action for infringement is brought, the trade mark has been put to genuine use in the United Kingdom by or with the consent of the proprietor in relation to the goods and services for which it is registered and which are cited as justification for the action, or (b) that there are proper reasons for non-use. (4) Nothing in subsections (2) and (3) overrides any provision of section 46, as applied by subsection (1) (including the words from “Provided that” to the end of subsection (3)).”13.The claimants did not resist an amendment to the specification of the Trade Mark to delete “self-service restaurants” and did not argue that the Trade Mark had been put to genuine use in relation to cafe or cafeteria services. They relied, however, on the approach to a fair trade mark specification discussed by Pumfrey J in Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] RPC 17:“[23] In my judgment, the task is best performed by asking what would be a fair specification of goods having regard to the use that the proprietor has in fact made of the mark and assuming further that he will continue that use. Mr Campbell submitted that the specification of goods should in effect be drafted from scratch to encompass only the use which the registered proprietor has made of the mark. I accept that the starting point should be a limitation to the actual field of use. The difficulty lies in deciding on the width of the surviving specification, the correct formulation of which must depend largely upon questions of fact and degree. Let me take an example to which Neuberger J. refers in Typhoon [Premier Brands UK Ltd v Typhoon Europe Ltd [2000] FSR 767]. There, the registration was (inter alia ) for ‘domestic containers’. Suppose the proprietor uses the mark only on red tea caddies. How does one limit the registration? Obviously the use of the colour red is irrelevant, since it does not define a species of goods. But should the registration be limited to tea caddies? Neuberger J. thought not, since, as he put it, one should take the registration as one finds it, and it is not possible to distinguish between containers for food, containers for tea, and tea caddies. He added that he considered that to permit this kind of detailed approach to a registration leads to uncertainty and invites litigation. So he considered that the registration should remain in respect of domestic containers. I would agree wholeheartedly with this statement of the problem, but the answer must, I believe, depend upon the facts of the case.”14.The claimants’ submission was simply that a fair specification in the present case would include services provided by cafes and cafeterias.15.The defendants drew attention to the judgment of Arnold J in Stichtung BDO v BDO Unibank Inc [2013] EWHC 418 (Ch):“[55] In NIRVANA Trade Mark (BL O/262/06), when sitting as the Appointed Person, I reviewed the decisions of the English courts in MINERVA Trade Mark [2000] F.S.R. 734; Decon Laboratories Ltd v Fred Baker Scientific Ltd [2001] R.P.C. 17; Daimler Chrysler AG v Alavi (t/a Merc) [2001] R.P.C. 42; Thomson Holidays Ltd v Norwegian Cruise Line Ltd [2002] EWCA Civ 1828; [2003] R.P.C. 32; West v Fuller Smith & Turner Plc [2003] EWCA Civ 48; [2003] F.S.R. 44; Associated Newspapers Ltd v Express Newspapers [2003] EWHC 1322; [2003] F.S.R. 51 and H Young (Operations) Ltd v Medici Ltd (ANIMAL Trade Mark) [2003] EWHC 1589; [2004] F.S.R. 19. I concluded at [57] that these were broadly consistent with ALADIN [Reckitt Benckiser (España) SL v OHIM (T-126/03) [2005] ECR II-2861], but that to the extent there was a difference I was bounded by the English authorities. I went on:‘[58] I derive the following propositions from the case law reviewed above:(1) The tribunal’s first task is to find as a fact what goods or services there has been genuine use of the trade mark in relation to during the relevant period: Decon v Fred Baker at [24]; Thomson v Norwegian at [30].(2) Next the tribunal must arrive at a fair specification having regard to the use made: Decon v Fred Baker at [23]; Thomson v Norwegian at [31].(3) In arriving at a fair specification, the tribunal is not constrained by the existing wording of the specification of goods or services, and in particular is not constrained to adopt a blue-pencil approach to that wording: MINERVA at 738; Decon v Fred Baker at [21]; Thomson v Norwegian at [29].(4) In arriving at a fair specification, the tribunal should strike a balance between the respective interests of the proprietor, other traders and the public having regard to the protection afforded by a registered trade mark: Decon v Fred Baker at [24]; Thomson v Norwegian at [29]; ANIMAL at [20].(5) In order to decide what is a fair specification, the tribunal should inform itself about the relevant trade and then decide how the average consumer would fairly describe the goods or services in relation to which the trade mark has been used: Thomson v Norwegian at [31]; West v Fuller at [53].(6) In deciding what is a fair description, the average consumer must be taken to know the purpose of the description: ANIMAL at [20].(7) What is a fair description will depend on the nature of the goods, the circumstances of the trade and the breadth of use proved: West v Fuller at [58]; ANIMAL at [20].(8) The exercise of framing a fair specification is a value judgment: ANIMAL at [20].[59] I would add a point which in my judgment is implicit in most of the decisions, although not explicit, which is that it is for the tribunal to frame a fair specification and not the parties. This is not to say, however, that the tribunal is either obliged or entitled to ignore considerations of procedural justice and efficiency: see the observations of Advocate General Sharpston in BVBA Management, Training en Consultancy v Benelux-Merkenbureau (C-239/05) [2006] E.C.R. I-1458 at [62]-[68]. …’”16.The online Cambridge dictionary defines “cafe” as “a restaurant where simple and usually quite cheap meals are served” and “cafeteria” as “a restaurant (often in a factory, a college, or an office building) where people collect food and drink from a serving area and take it to a table themselves after paying for it”. Neither definition is determinative of anything but both coincide with my own perception of what “cafe” and “cafeteria” are taken to mean by an average consumer. They confirm my impression that the average consumer would consider both a cafe and a cafeteria to be a type of restaurant.17.It follows that deleting either term from the specification of the Trade Mark would by implication limit the scope of “restaurant services” in the specification. That would not be apparent to the public from the proposed amended specification and would be liable to mislead. More to the point, in my view “restaurant services” is not a broad term such that it would be fair to slice and dice it into subsets. Nor was that proposed by the defendants. “Restaurant services” should be given its full meaning, which includes restaurant services provided by cafes and cafeterias.18.The counterclaim to limit the specification of the Trade Mark beyond the deletion agreed is therefore dismissed. I will not interfere with the agreed deletion of “self-service restaurants” even though I do not think it makes any practical difference.