The Naked Truth: use of BARELY THERE wasn't even barely there

HBI's Barely There: this bra
is apparently invisible, which
says much for the power
of imagination ...

"Dunnes rebuked for providing 'weak' excuses in revocation action" is the title of a World Trademark Review post by Ciaran O’Neill (DFMG Solicitors, Dublin) on an interesting Irish Patents Office decision, but one that has not yet been uploaded on to the Trade Marks section of the Office's Written Grounds page. The parties to this trade mark revocation action were HBI Branded Apparel Enterprises LLC (part of US giants Hanesbrands -- think Wonderbra, Playtex and, in jurisdictions other than Ireland, Barely There) and seasoned IP litigators ["are they always defendants?", wonders Merpel] Dunnes Stores Ireland Company; the trade mark was Dunnes' word mark for clothing BARELY THERE (Class 25: clothing, footwear and headgear).  In short, HBI said that, up to three months before they applied for revocation, Dunnes had not put the mark to genuine use in Ireland for any of the goods for which it was registered for a continuous period of five years, there being no proper reasons for non-use. Dunnes conceded that they hadn't used the mark for footwear or headgear, but said they had used it for underwear.

Alas for Dunnes, upon whom the burden of proof of use was placed, the evidence of use of BARELY THERE was, er, barely there.  It consisted of a statutory declaration sworn by Dunnes' company secretary, Thomas Sheridan. Dunnes had used the mark for underwear since 1998, he said, but all tangible evidence to prove this use was destroyed when Dunnes moved its head office premises some years ago. In any event, he said, such documentation would not normally be kept within the retail trade where changeover of products occurs on a regular basis.

Sheridan supported this (absence of) evidence by providing aggregate turnover figures which, he said, showed the value of sales of some 75,000 BARELY THERE products under the mark between 2004 and 2008. However, he said, the Patents Office could see the actual turnover figures: they were “confidential business information”, the disclosure of which could harm the company.

Fergal auditions for his dream job,
keeping business records at Dunnes ...

Unsurprisingly to everyone except, presumably, Dunnes, the hearing officer revoked the mark for non-use. Dunnes had not submitted a single invoice, order, delivery note, label, tag, packaging, advertisement, poster, photograph, in-store display, item of clothing or any other material bearing the mark. He stated that this was “an extraordinary lack of evidence”, which was all the more striking given the level of sales which Dunnes claimed.  What's more, the tax authorities would have required Dunnes to retain copies of invoices and other materials to ensure compliance with proper accounting and financial procedures, and it was highly unlikely that a company the size of Dunnes would not have electronic copies of the documentation [this is true, says this Kat, but Dunnes is an Irish company, the trade mark is an Irish trade mark and, in Ireland, the normal is sometimes a little different ...].

As for the statement that Dunnes' turnover figures were “classified business information”, this was just “too weak an excuse” since full documentation of all sales would not have been required to prove use.

Says Merpel, when footballers tumble to the ground, pretending that they have been tripped up or fouled by players on the opposing team, they can get into big trouble.  Trade mark owners who pretend that they have used their trade marks when there is plainly no evidence to support such use deserve no better treatment.

As bare as you dare here
Bare bear here