A Master(s) Class in Genuine Use? UK IPO rejects revocation action, finding genuine use of registration for gin

A recent decision by the UK IPO provides some interesting food (drink?) for thought on the endlessly uncertain question of genuine use, this time in connection with gin products.

 

In this case, the UK IPO rejected a revocation action on the ground that the proprietor had put its registration to genuine use [decision here, No. O/109/22]. This was so, despite low sales and use of the mark by the proprietors in forms differing from the logo as registered. Feeling a bit tipsy with this result? If so, read on… 

 

 Pawing over the evidence…

Background

 

On 21^st June 2013, Destileras M.G., S.L and Importaciones y Exportaciones Varma, S.A. sought EU protection for the trade mark shown below (the “Masters Logo”) for “Gin, namely London Dry Gin” in Class 33 under its International Registration.

 

 

 

The statement of grant of protection was issued on 8^th July 2014. Following the UK’s exit of the EU, a clone UK registration was automatically created and recorded on the UK register. 

 

On 18^th March 2021, Inver House Distillers Limited applied to revoke the proprietors’ mark on the grounds of non-use under Sections 46(1)(a) and 46(1)(b) of the UK Trade Marks Act 1994. 

 

Inver claimed two non-use periods, seeking revocation of the UK clone from 9^th July 2019 or, alternatively, 17^th March 2021.

 

The UK IPO’s decision

 

Inver first argued that the UK IPO had to treat the Masters Logo as a figurative trade mark. It submitted that to do otherwise would be to give the clone registration a wider scope of protection than that granted to the parent EU registration.

 

The Hearing Officer accepted these submissions on the basis that the proprietors’ mark was originally registered by WIPO as a figurative mark. Nevertheless, she noted that the assessment of distinctive character for a 2D shape mark is the same as for the 3D shape shown in 2D. As such, she treated the Masters Logo as a figurative 2D mark depicting 3D bottles.

 

The Hearing Officer reviewed the evidence filed by the proprietors, noting that, throughout, they had used the Masters Logo in the following number of ways (paragraph 20):

 

She held that the distinctive character of the Masters Logo lay—

 

 “in the word ‘MASTER’S’, the lion device and the bottles” and that “the sharply cut-off sides of the bottles, the raised ‘fold’ running vertically down the bottles, and the indented side (visible on the left-bottle) have, at least together, some distinctive character in relation to spirits” (paragraph 23). 

 

By contrast, she found the distinctive character of the words “LONDON DRY GIN”, “TRIDISTILLED GIN”, and “SELECTION” to be negligible.

 

Turning to the image in ‘Example 1’ above, the Hearing Officer held that the omission of the second bottle (which displayed the words “TRIDISTILLED GIN” and “SELECTION” in the mark as registered) did not alter the distinctive character of the mark and that the differences in the arrangement of the distinctive elements of the mark constituted an acceptable variant of the Masters Logo. 

 

The assessments for ‘Example 2’ and ‘Example 3’ followed similar reasoning. As such, she held that the changes to the number of bottles (displaying one bottle and three bottles, respectively) did not alter the distinctive character of the Masters Logo, meaning that the images constituted acceptable variants.

 

As for the evidence itself, the Hearing Officer found that it contained a number of deficiencies. For example, there was a lack of evidence in relation to the distribution of advertising and marketing evidence, and the only evidence of turnover submitted was comprised of seventeen invoices. 

 

These invoices totalled sales of €28,563 over the entirety of the relevant periods (collectively 9^th July 2014 to 16^th March 2021). Considering this in the context of the likely size of the UK gin market (as neither party provided any evidence of or submissions on this), the Hearing Officer found the sales to be low and “far from overwhelming” (paragraph 39).

 

Despite this, the Hearing Officer subsequently found that—

 

 “…the proprietors have demonstrated a consistent and repeated pattern of sales to an exclusive retailer throughout the relevant periods” and that they had “attempted to create and maintain a market for their goods under their mark” (paragraph 39). 

 

Consequently, she ruled that the proprietors had demonstrated genuine use of their clone registration.

 

Conclusion

 

This case provides a reminder that use does not have to be quantitively significant to be genuine. Nonetheless, the outcome does appear somewhat surprising in light of (i) the Hearing Officer’s comments about the likely size of the UK gin market; and (ii) the differences between the mark as used and as registered. 

 

The decision emphasises, once again, that it is a fool’s errand to predict how an assessment of genuine use will fall. If possible, then, it is best to avoid being put to the test!  

 

Given this, it will be interesting to see if Inver appeals. This Kat is keeping an eye out.

 

Picture on top middle is by Riana Harvey, who grants permission for its use.

 

Pictures on lower middle are in the public domain.