Use it - and make sure you prove it – or lose it!

Under section 46 of the Trade Marks Act 1994, a registered trade mark can be removed from the register if there has been no genuine use of that mark for five years or more. This is the crux of the "use it or lose it" argument. But how much evidence is needed to prove genuine use? This was the question put to the UKIPO during this revocation application.

The mark in question, shown above, was registered in the UK in respect of class 25 (clothing, sweat bands, caps) and class 41 (fitness boot camp classes).

The Applicant was seeking revocation of the trade mark registration in respect of all the Opponent's goods in class 25 on the grounds of non-use, sections 46(1)(a) and (b) of the Trade Marks Act 1994. They applied on the basis that:-

• the usage for class 25 was only "token," The Trade Mark Owner was merely placing the mark on promotional goods to encourage participation in the class 41 classes;
• there was no genuine usage or commercial exploitation of the mark; and
• the Trade Mark Owner's use of the class 25 goods does not warrant the monopolisation of the entire term "clothing".

The Trade Mark Owner filed a counterstatement denying that there had been any suspension of use within class 25. It argued that the "Fit Bitch" brand was, and continued to be, unique in the fitness and fitness merchandise market within the UK.

Plenty of evidence was filed in support of the registered trade mark. However, most of it was deemed to be inadmissible or irrelevant on the basis that it only proved use under class 41, the class that was not being challenged. The UKIPO agreed it appeared that the sale of clothing was more of a promotional addition for the advancement of the primary function of the business, namely the provision of the fitness classes.

The revocation was therefore successful.

The UKIPO held that, whilst there is no qualitative threshold for providing evidence, and that sometimes minimal use can be sufficient to be deemed to show genuine use, the evidence of sales in this case was so limited that it could not be used to demonstrate a share in the market for clothing, a market that is very large. The sales figures provided did not show commercial exploitation, nor were they of sufficient scale and frequency to establish genuine use.

It is important to remember that the main function of the trade mark is to distinguish the goods and services from one undertaking to another. If this is no longer used, its function becomes redundant. In this case therefore, it would not be in the public interest to allow the trade mark to act as an obstacle for later traders.

As a takeaway point, it must be remembered that the onus is on the trade mark owner to provide sufficiently solid evidence to counter the revocation application. It is important that a party puts its best case forward straight away or risk losing the registration altogether.

Case ref: 0/740/18