Since September 2000, the United Kingdom’s Trade Marks Registry has accepted for protection retail services. Hitherto, retailers could only protect their trade marks by registering in respect of the goods. Indeed many continue to register their trade marks for goods as well as services. There are some whose only protection is for goods.
It has been questioned whether registration for goods could be invalid, especially where the retailer has no own-label or own-branded products. The Trade Marks Registry will rarely go behind a claim, so if someone has a long list of goods covering many classes it will be accepted. If a mark is wrongly filed it is the responsibility of the proprietor. However, enforcing such rights may be rather difficult and in a case involving trading on the internet, Euromarket Designs Inc. –v- Peter (known as the Crate & Barrel case), Jacob Justice said:-
“56. That is not all on the question of non-use. If one looks at the advertisements they are essentially for shops. True it is that some of the goods mentioned in the advertisements fall within the specification, but I doubt whether the reader would regard the use of a shop name as really being “in relation” to the goods. I think this is an issue worthy of trial in itself. The argument is that there is an insufficient nexus between “Crate & Barrel” and the goods; that only a trade mark obsessed lawyer would content that the use of “Crate & Barrel” was in relation to the goods shown in the advertisement.
57. In this connection it should be borne in mind that the Directive does not include an all-bracing definition of “use”, still less of “use in relation to goods”. There is a list of what may inter alia be specified as infringement (Art. 5(3), corresponding to s.10(4) and a different list of what may, inter alia, constitute use of a trade mark for the purpose of defeating a non-use attack (Art. 10(2), equivalent to Section 46(2). It may well be that the concept of “use in relation to goods” is different for different purposes. Much may turn on the public conception of the use. For instance, if you buy Kodak film at Boots and it is put into a bag labelled “Boots”, only a trade mark lawyer might say that Boots is being used as a trade mark for film. Mere physical proximity between sign and goods may not make the use of the sign “in relation to” the goods. Perception matters too. That is yet another reason why, in this case, the fact that some goods were sent from the Crate & Barrel US shops to the UK in Crate & Barrel packaging is at least arguably not use of the mark in relation to the goods inside the packaging. And all the more so if, as I expect, the actual goods bear their own trade mark. The perception as to the effect of use in this sort of ambiguous case may well call for evidence.”
The comments above were not directly relevant to the question of the validity of any registration but in a recent case (28 th April 2004) before the Registrar the point was considered. The trade mark BIG BLUE was registered by Big Blue Products Inc. for computers and computer terminals and computer software. Big Blue Products Inc. sold such goods but the goods carried other companies’ brands – DELL, APPLE etc. The Hearing Officer decided that Big Blue Products Inc. was not using the mark BIG BLUE in respect of computers and issued a decision revoking the registration on the grounds of non-use. The Hearing Officer stated that the use was in respect of retail services and the mark should have been registered in respect of services. The logic of this decision will go to the heart of whether the marks are validly filed.
Therefore retailers should take warning and review their protection for trade marks, when they are only registered in respect of goods and do not sell own-label products then they should be seeking protection in respect of retail services in class 35.
Many companies may be spending thousands of pounds maintaining registrations for goods which are unenforceable rights, but with inadequate protection for their retail business. In fact retailers, merchants who are suppliers of goods, should be thinking about the value of maintaining registration for goods.
We recommend that retailers take this opportunity of reviewing their protection. Please contact us if you require further information.
