Proof of use
15.The Particulars of Claim relied upon toys, games and playthings in the Claimant’s specifications. No distinction was made between those three categories of goods, and the Particulars of Claim did not make it clear whether the Claimant was relying upon all of those goods (the reliance upon toys alone was express). I have mentioned, the Defendant had admitted use of FUN TIME in relation to toys and games aimed at the baby/toddler market in the UK. Nevertheless, the Defendant also expressly put the Claimant to proof of the extent of any use of the Marks, and submitted in its skeleton argument that use had only been proved in respect of “toys and playthings for babies and toddlers.”16.At trial, counsel for the Claimant submitted that the argument about the scope of the fair specification took the Claimant by surprise, as it raised an issue under section 11A of the Act which had not been foreshadowed by the pleadings. He said that the Defendant should not be permitted to run the point at trial, as it would have been necessary for the Claimant to adduce evidence about it. Counsel for the Defendant said that the point was clear from the Defence, whilst the inclusion in the List of Issues approved at the CMC of an issue as to proof of use could only have arisen in relation to section 11A. She also pointed out that the Claimant had responded in paragraph 2 of the Reply to paragraph 2 of the Defence, saying that whilst its goods were primarily aimed at the baby and toddler market, it also produced toys for use by older children.17.The Defendant expressly put the Claimant to proof of use of the kinds of goods sold, and its Reply pleaded relevant facts which it was for the Claimant to prove. The fact that there was an issue on this point was also clear from the CMC Order. I indicated at the opening of the trial that I might not shut out this line of argument, and it is my considered view that I should not do so. By the CMC Order, the statements of case were ordered to stand as evidence in chief, so that the claim in paragraph 2 of the Reply was in evidence, but it was unsupported by the witness statements or disclosure documents. Mr Kenyon accepted in his oral evidence that the catalogues in evidence showed toys for babies or toddlers, but added that perhaps 8% of the Claimant’s goods were for older children. I was shown no documentary proof of this, nor any evidence as to the nature of any such goods. I ruled in the course of the trial that it was too late for the Claimant to apply to produce some documentary evidence of sales of goods aimed at children over 3 years old. Indeed, I note that in similar circumstances, the Claimant was not permitted to adduce additional evidence as to the acquired distinctiveness of the Marks in Luen Fat Metal and Plastic Manufactory Ltd v Jacobs and Turner Limited [2019] EWHC 118 (IPEC), see [10].18.Section 11A provides:11A Non-use as defence in infringement proceedings (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. Article 127(3) EUTMR makes a similar provision for proof of use where no counterclaim for revocation is made.19.The documents before me showed clear use of the UK Mark in the form “Fun Time” upon the packaging of the Claimant’s goods and it was not suggested that there was any real distinction between that form of the Mark and the others in the UK registration. I accept all such use as use of all of the Marks. The packaging of some of the goods sold to particular retailers was in some cases marked with the retailer’s name. It was unclear how many of the goods were sold in this way, but for example goods sold to Wilko were identified on invoices by reference to the Wilko name (e.g. “Wilko Play Spinning Horses”). Invoices and shipping documents did not use the Marks. However, Mr Kenyon said that all of the goods themselves bore the Mark moulded into the plastic. The moulded example in evidence again bore the Mark in the form “Fun Time” as well as (somewhat strangely given the Claimant’s name) the name Funtime Toy Co Ltd under the rubric “Made in China.” There was in my view ample evidence of the importation, advertisement and sale of goods in the UK and Ireland, including invoices to large UK retailers, and the Defendant sensibly accepted that use had been proved in the UK, subject to the question of what was a fair specification.20.I am satisfied that requiring a claimant to prove use of the mark relied upon, even where there is no counterclaim, brings into play principles equivalent to those applicable to a revocation application, in which it is well-established that it is necessary to reach a fair specification of the goods for which use has been proved to the necessary standard. The burden of proof falls on the proprietor, who should provide solid and specific evidence which suffices for the evaluation of the scope of protection to which the proprietor is legitimately entitled.21.It is necessary to identify and define the particular categories of goods realistically exemplified by the goods for which use has been shown. The resulting (notional) specification must accord with the perceptions of the average consumer of the goods concerned. In some cases, it may be possible to identify subcategories of goods or services within a general term which are capable of being viewed independently. So, for example, Ms Jones referred me to BL O/0335/10 Gima, in which it was held that proof of use on salami and sausages (found individually in the specification) did not prove use of the additional wider term, meat. However, protection must not be cut down to those precise goods or services in relation to which the mark has been used if that would strip the proprietor of protection for all goods or services which the average consumer would consider belong to the same group or category (see Maier v Asos [2015] EWCA Civ 220 [2015] F.S.R. 20 at [182]). As a result, the fair specification may be wider than the actual use, if that is how the average consumer would fairly describe the goods in relation to which use has been proved.22.Toys, games and playthings are terms which are part of the class heading for Class 28, and, as Ms Jones pointed out, those terms encompass a huge range of goods, some of which are aimed not at children but at adults, and vice versa, many of which would not be suitable for very young children. In all the circumstances, the Claimant has certainly not proved use across the whole spectrum of its specification, but taking into account the admission in paragraph 2 of the Defence, and the evidence before me, I am satisfied that a fair way to describe the goods upon which use has been shown, taking into account how the average consumer might fairly describe them, is “toys, games and playthings for babies and pre-school children.”