THE ALMIGHTY WINS ON APPEAL; TOO MANY GIs SPOIL THE BROTH?

Almighty bends High Court's ear

Lots of people have a commercial interest in the use of the words "moo juice". Some of their endeavours are depicted in this blog. This Chancery Division decision of Mr Justice Kitchin, given on Friday 18 November and reproduced in full on the excellent (and free) BAILII judgment service, involves just two of them: it's Almighty Marketing Ltd v Milk Link Ltd [2005] EWHC 2584 (Ch).

Back in December 1995 farmer Cooper applied to register the words MOO JUICE as a trade mark in Class 29 for (among other things), milk and milk beverages. In December 2003 Cooper assigned the trade mark to Almighty, of which he was the managing director. In October 2004 Milk Link sought revocation on the basis that there had been no genuine use of the mark since the date of registration (16 August 1996) and that there were no proper reasons for such non-use.

At this point, things started to get a trifle bureaucratic. Milk Link had filed its application for revocation on Form TM26(N), together with its statement of grounds. Almighty responded by filing Form TM8, together with the required documents and subsequently filed two witness statements. Having satisfied itself that the evidence filed was sufficient, the Registry let the proceedings proceed.

At the hearing, the hearing officer decided that, in the light of previous case authority, rule 31(3) of the Rules imposed upon the proprietor (i.e. Almighty) an obligation to file certain specific documentary evidence which had not been filed. Rule 31 states:

"(1) An application to the registrar for revocation of a trade mark under section 46, on the grounds set out in section 46(1)(a) or (b), shall be made on Form TM 26(N) and be accompanied by a statement of the grounds on which the application is made … (3) The proprietor shall, within three months of the date on which he was sent a copy of Form TM26(N) and the statement by the registrar, file a Form TM8, which shall include a counter-statement, and be accompanied by (a) two copies of evidence of use of the mark; or (b) reasons for non-use of the mark, otherwise the registrar may treat him as not opposing the application".

The hearing officer therefore treated Almighty's opposition to the revocation application as having been withdrawn on the basis that the evidence of use filed by the company had been insufficient. Almighty appealed, arguing that Rule 31(3) laid down no more than a procedural requirement which was satisfied by the filing of any evidence at all, there being no basis on which it could be said that the company had failed to comply with Rule 31(3).

Kitchin J, siding with Almighty, allowed the appeal and remitted the revocation application to the Registry for a further hearing. In his view

* the purpose of filing evidence under Rule 31(3) was to see whether a trade mark owner had an arguable or viable defence to the attack mounted upon the registration and thus to provide the applicant for revocation with enough information to enable him to investigate the use of the mark upon which the trade mark owner sought to rely.

* there was no fixed code as to the specific documentary evidence which should be filed in order to satisfy Rule 31(3). Nor was a trade mark proprietor obliged to provide such information, although it might be a good idea if he did. The rule only required that the evidence, when considered as a whole, should establish that the proprietor had an arguable defence to the application for revocation.

The IPKat is very pleased with this decision. The Trade Mark Rules are not an end in themselves and should not be allowed to interfere with the very real business of revoking unused marks, thus clearing the thicket of dead wood that stands between later, active businesses and their quest for registered trade mark protection, while leaving live marks unscathed.

Merpel agrees, adding that in a case such as this the effect of revoking a mark that had being used might result in the applicant for revocation subsequently applying for a trade mark that he couldn't use anyway since he'd be in danger of a passing-off action.

The IPKat and Merpel both wonder, though: MOO JUICE seems, well, somehow more than merely allusive (though it's not precisely descriptive: it could refer to cows' blood, lymph, digestive acids etc) and lots of people out there seem to be using it. If you're looking for a trade mark, why not choose a a mark that's less heavily used by others?

Almighty's MOO JUICE registrations in the UK and EU here
More Moo Juice here, here, here and here


Yet more GIs invade Europe

Official Journal L297 of the European Commission features yet more protected geographical indications (PGIs) and protected designations of origin (PDOs). It announces the enactment of

* Commission Regulation 1854/2005 of 14 November 2005 which sees Miel de Provence ("honey from Provence") become a PGI despite German objections that

(i) registration would conflict with Article 4(2) of Regulation 2081/92 since the defining characteristics of Miel de Provence are organoleptic, relating to its method of production and quality criteria, which are not specific to the region of Provence [the Commission disagrees: registration is based on the reputation of Provence honey as much as on its special quality];

(ii) there was a possible threat to existing traders who use the term but produce honey falling outside the protected specification [not proven, says the Commission];

(iii) use of the name Miel de Provence is permitted under Council Directive 2001/110 relating to honey, in respect of honey from the French region of Provence-Alpes-Côte-d’Azur and made from sunflower, rape or lucerne (alfalfa) [the Commission says, to comply with the specification, traders currently marketing such products under the name Miel de Provence will have to exclude honey of floral origin not provided for in the specification.

* Commission Regulation 1855/2005 of 14 November 2005, which sees Mela Alto Adige or Südtiroler Apfel (PGI), Asperge des Sables des Landes (PGI), Pâtes d’Alsace (PGI), Jamón de Trevélez (PGI), Oliva Ascolana del Piceno (PDO) join their respective lists.

The IPKat is curious to know how many consumers know of these products as PGIs and PDOs. Merpel adds, I'd be curious to know how many of them ever care a damn, to the point of deciding whether to buy a product or not on the basis of whether, for example, it's called "Miel de Provence" or "Oliva Ascolana del Piceno". Is this a sort of overkill, with every sort of descriptive term becoming a protected term?

Right: some Olive Oyl is definitely deserving of legal protection