Use it or lose it – partial revocation of trade marks owned by Omega SA

On 6 November 2023, the UK Intellectual Property Office decided that two trade marks owned by Omega SA, the Swiss luxury watchmaker, should be partially revoked.

Background

The proceedings concerned two trade marks owned by Omega SA (the “Proprietor”) in the United Kingdom (the “Marks”). The first mark is the Omega logo, being the capitalised Omega letter in the Greek alphabet, with “OMEGA” written beneath it (the “First Mark”). The second mark is the Omega logo on its own (the “Second Mark”).

The First Mark is registered for, amongst other things, the following goods:

Class 14: Timepieces and chronometric instruments as well as parts and accessories for the aforesaid goods, watch chains, presentation cases for timepieces, cases for timepieces; smart watches with extended functionality and connected watches as well as parts and accessories for the aforesaid goods.

The Second Mark is registered for the following goods:

Class 14: Precious metals and their alloys and goods made of these materials or coated therewith not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Samsung Electronics Co., Ltd (the “Applicant”) applied partially to revoke the Marks for class 14 goods save for “analogue watches”.

Facts and Law

The Applicant sought to partially revoke the Marks on the basis of sections 46(1)(a) and 46(1)(b) of the Trade Marks Act 1994 (“TMA”).

In relation to partial revocation, the question is how would the average consumer fairly describe the goods and services in relation to which the trade mark has been used. The court must arrive at a fair specification in the circumstance, which may require amendment.

Section 46(1)(a) TMA sets out that the registration of a trade mark may be revoked if it has not been put to genuine use within the United Kingdom in relation to the goods or service for which it is registered within the period of five years following the date of the registration and there are no proper reasons for non-use.

Section 46(1)(b) TMA provides that the registration of a trade mark may be revoked if such use has been suspended for an uninterrupted period of five years and there are no proper reasons for non-use.

As a defence, the Proprietor sought to rely on section 46(3) TMA. This section provides that the registration of a trade mark shall not be revoked under subsection (1)(a) or (b) if use is commenced or resumed after the expiry of the five year period and before the application for revocation is made. This is provided that any such commencement or resumption of use after the expiry of the five year period but within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made. As per section 100 TMA, it was for the Proprietor to show use has been made of the Marks.

Central to this application was the issue of whether the Proprietor had made genuine use of the Marks. The law relating to genuine use was summarised in Walton International Ltd & Anor v Verweij Fashion BV [2018] as follows:

• Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark;

• The use must be more than merely token (i.e. serving solely to preserve the rights conferred by the registration of the mark);

• The use must be consistent with the essential function of a trade mark, which is to act as a badge of trade origin;

• The use must relate to goods or services which are already marketed or about to be marketed and for which preparations to secure customers are underway, particularly in the form of advertising campaigns;

• The use must be by way of real commercial exploitation of the mark; and

• Use of the mark need not always be quantitatively significant for it to be deemed genuine.

In relation to the First Mark, the Proprietor produced substantial evidence of use in relation to certain goods, namely watches and straps and parts for such watches. This evidence included sample invoices and extracts from print publications such as the Economist. In relation to other goods, the evidence produced showed only limited (if any) use of the mark. For example, in relation to smart watches, the evidence produced related only to the Omega Speedmaster X-33 Skywalker watch, which was deemed not to be a smart watch.

In addition to the above, in relation to the Second Mark, the Proprietor produced evidence of use in relation to jewelry. This evidence included sample invoices, as well as print-outs from its website and those of third party retailers seemingly showing the goods covered by the invoices.

Decision

It was decided that the Proprietor had genuinely used the First Mark in relation to watches and straps and parts for such watches. Considering the evidence provided of use in relation to watches, it was deemed that the average consumer would be unlikely to describe the goods as “timepieces and chronometric instructions” and would likely be satisfied by the term “watches”. Resultingly, the First Mark was partially revoked for certain goods and remains registered for goods which have been deemed to reflect a fair specification as follows:

Class 14: Watches; parts and straps for the aforesaid goods.

For similar reasons as above, the Second Mark was partially revoked and remains registered for goods which are deemed to reflect a fair specification as follows:

Class 14: Watches; jewellery.

Comment

This decision highlights the crucial role of evidence, particularly documentary evidence, when seeking to establish genuine use of a trade mark. Whilst it is not strictly necessary to adduce documentary evidence, if such material is likely to exist and little or none is provided, the proprietor of the trade mark is going to struggle to prove genuine use. The decision also displays how the legal fiction of the average consumer is used to assist when a specification is being amended in matters of partial revocation.

If you any queries relating to trade mark subsistence, infringement or revocation, please contact a member of our intellectual property department on 0161 832 3434.