Two recent high profile trademark cases serve as reminders to trademark owners to make use of their marks across all related goods and services or risk them being revoked.
The figurative European trademark for the film “The Godfather”, which is registered in four classes relating to food, drink and restaurant services, and is owned by Paramount Pictures, has been cancelled by the EU Intellectual Property Office. The opposition was made by Indian distillery company, DeVANS Modern Breweries, which has a beer called “Godfather”, on the basis that there was no evidence of genuine use of the mark relating to the goods and services covered.
In the UK, EasyGroup’s “easyServices” trademarks (word and figurative) were also revoked for non-use. In this case, marketing company, The Support Group had sought cancelation of the marks which related to various services across 5 classes, including insurance, education, construction and internet services. EasyGroup failed to demonstrate use of the marks in relation to the services the mark is registered for, so the UK Intellectual Property Office held the marks should be cancelled.
The easyServices case provides some helpful guidance on what will (and will not) constitute genuine use:
- Evidence of turnover or sales figures relating to the services in question;
- Evidence of a website actively offering the relevant services for sale (rather than just the “family” of brands);
- Evidence of marketing or promotion of the mark in relation to the particular services;
- Evidence of a website “under construction” or “coming soon” will not be sufficient;
- Evidence of promotion generally and not the services covered by the mark specifically will not be good enough.
We would recommend right owners check their use of their trademarks across the breadth of the goods and services covered and take steps to make use of the marks in the course of trade. Similarly, trademark applicants must take care not to employ a “scattergun” approach when choosing which goods and services to include in an application and instead narrow the specification down to those goods and services that they will actually be using.
Madeleine Rhodes email:mrhodes@redfernlegal.com
