Intellectual Property Enterprise Court

IP-2022-000036 - [2023] EWHC 2005 (IPEC)

Fecha: 07-Ago-2023

Whether the use provisions of s.47 were satisfied

Whether the use provisions of s.47 were satisfied

The law – section 47

44.

Section 47 of the 1994 Act, so far as is relevant to the present facts, provides:

…

(2A) The registration of a trade mark may not be declared invalid on the ground that there is an earlier trade mark unless–

(a)

the registration procedure for the earlier trade mark was completed within the period of five years ending with the date of the application for the declaration,

(b)

the registration procedure for the earlier trade mark was not completed before that date, or

(c)

the use conditions are met.

(2B) The use conditions are met if–

(a)

the earlier trade mark has been put to genuine use in the United Kingdom by the proprietor or with their consent in relation to the goods or services for which it is registered—

(i)

within the period of 5 years ending with the date of application for the declaration, and

(ii)

within the period of 5 years ending with the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application where, at that date, the five year period within which the earlier trade mark should have been put to genuine use as provided in section 46(1)(a) has expired, or

(b)

it has not been so used, but there are proper reasons for non-use.

…

(2G) An application for a declaration of invalidity on the basis of an earlier trade mark must be refused if it would have been refused, for any of the reasons set out in subsection (2H), had the application for the declaration been made on the date of filing of the application for registration of the later trade mark or (where applicable) the date of the priority claimed in respect of that application.

(2H) The reasons referred to in subsection (2G) are—

…

(b)

that the application for a declaration of invalidity is based on section 5(2) and the earlier trade mark had not yet become sufficiently distinctive to support a finding of likelihood of confusion within the meaning of section 5(2);

(c)

that the application for a declaration of invalidity is based on section 5(3)(a) and the earlier trade mark had not yet acquired a reputation within the meaning of section 5(3).

(3)

An application for a declaration of invalidity 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.

…

(6)

Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made.

Provided that this shall not affect transactions past and closed.”

45.

Subsections 47(2A) and (2B) are the most directly relevant. Each deals with an application to revoke a later trade mark in reliance on the registration of an earlier trade mark. I will try to unpack them.

46.

The effect of s.47(2A) is that before the later trade mark may be declared invalid under subsection (2), one of three alternative conditions must be met. They are that either (a) the earlier trade mark was registered no more than 5 years before the application to revoke the later trade mark, or (b) at the date of that application the earlier trade mark was not yet registered, or (c) certain use conditions are met.

47.

Section 47(2B) defines those use conditions. Either of two alternatives will satisfy them. The first is that the earlier mark has been put to genuine use by the proprietor or with their consent, in relation to the goods or services for which it is registered, over two different periods of 5 years.

48.

The general rule under this first alternative is that there must have been genuine use of the earlier mark (i) during the 5 years ending with the date of the application to revoke the later mark and (ii) the 5 years ending with the date of filing of the application for the later mark – or, where applicable, the 5 years ending with the date of priority claimed for the later mark.

49.

There is an exception that arises where, at the relevant date under (ii) above (the date of filing the application for the later mark or its the priority date), the 5 year period within which the earlier trade mark should have been put to genuine use – as required by s.46(1)(a) of the 1994 Act – had not expired. In that event, the second five year period is disregarded and genuine use need only be established for the first.

50.

The second alternative means of satisfying the use conditions of s.47(2B) is that there were proper reasons for non-use of the earlier mark. This second alternative does not arise on the facts of the present case. Argument was concerned with whether there was genuine use of either or both of the Ford Cobra Marks which satisfied the first alternative.