The UKIPO has rejected an application by Inver House Distillers for the revocation of a competitor's trade mark. The decision was reached on the basis that genuine use of the mark in question, in the UK, had been successfully demonstrated.
In July 2014, the contested mark, which incorporates the 'Master's logo', a lion device and the sharp shape of the product's bottle, was registered for gin (specifically, London Dry Gin) in class 33, in the EU. Following the expiry of the Brexit transition period on 31 December 2020, a comparable UK trade mark was automatically created by the UKIPO. Inver sought to revoke the UK mark under section 46 of the Trade Marks Act 1994 on the grounds of non-use between July 2014 to 2019 and March 2016 to March 2021 (the Relevant Period).
The UKIPO considered there was a lack of evidence from the trade mark owner, who submitted only 17 invoices and a handful of social media posts and press coverage in support of its case. In particular, the UKIPO noted that the provision of 17 invoices over the course of the Relevant Period was "far from overwhelming," especially when examined through the lens of the UK's thriving gin market. Even so, it concluded that genuine use of the registration had been shown. This was because there was a "consistent and repeated pattern of sales to an exclusive retailer throughout the relevant periods" and because the owner had "attempted to create and maintain a market for their goods under their mark".
The decision will provide comfort to brand owners, in that it demonstrates that use of a trade mark does not have to be substantial to be genuine. Read more