NELLIEGATE: PART 2

After it had failed to have Animated’s NELLIE THE ELEPHANT mark revoked (see yesterday’s “Nellliegate: Part 1” blog), Dash applied for the mark to be revoked under s.46(1)(b), arguing that there had been a period of at least five consecutive years in which Animated had not made use of the mark because it had used the mark to describe the content of its cartoons, rather than to denote the trade origin of the Class 41 goods for which it was registered. This was a bit of a second-best for Dash because, when a mark is declared invalid it is as if the mark never existed, whereas where it is revoked it is only deemed not to have existed from the date of the application for revocation.

This time though Dash succeeded and Animated’s mark was revoked as it had not been used for five consecutive years. To avoid revocation, Animated’s use of the NELLIE THE ELEPHANT sign had to be trade mark use, i.e. use in accordance with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services on which it is used. A previous OHIM case (Francis Fitzpatrick v Disney Enterprises No. 951/2001) had held that the use of characters in the title of books did not count as trade mark use. Similarly, a UK House of Lords case (R v Johnstone [2003] UKHL 28) had held that the affixing of a name of a band to a CD was not necessarily trade mark use. In both cases there was no trade mark use because the names were not seen by the public as indicators of origin.

Here the evidence (an invoice and a flyer referring to NELLIE THE ELEPHANT as the name of a cartoon character, a brochure for the production company showing NELLIE THE ELEPHANT as the name of a cartoon) showed only use of NELLIE THE ELEPHANT as a cartoon character to indicate the subject matter of the films. This merely indicated content and did not indicate the trade source of the Class 41 services for which it was registered. Instead, the name of the production company was used to indicate the source of the content and anyone wishing to avail themselves of Animated’s services would have done so by reference to the name of the production character rather than by reference to the name NELLIE THE ELEPHANT.

The IPKat notes that this case brings the concept of trade mark use back from the dead, despite the ECJ’s marked failure to mention it in Arsenal v Reed .

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Elephant food here and here